OPPOSITION No B 2 803 818

Expoconser – Exportadora de Conservas, S.A., Parque Industrial dos Laúndos, Lote 46, 4570-311 Laundos, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 – 6°. Dt°., 4000-432 Porto, Portugal (professional representative)

a g a i n s t

Cellmore (S) PTE. Ltd., 220 Tagore Lane, #03-04, Singapore  787600, Republic of Singapore (holder), represented by Hiddleston Trade Marks, Polhill Business Centre, London Road, Polhill, Halstead, Sevenoaks, Kent TN14 7AA, United Kingdom (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 803 818 is partially upheld, namely for the following contested goods and services:

Class 29:         Farmed fish; fish (not live); fish products; food products derived from fish; fresh fish (not live); prepared foods consisting principally of fish; processed fish; ready cooked meals consisting wholly or substantially of fish; seafood (not live).

Class 35:         Retail or wholesale services connected with farmed fish, fish (not live), fish products, food products derived from fish, prepared foods consisting principally of fish, processed fish, fish.

2.        International registration No 1 302 153 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 302 153, ‘’, namely against all the goods in Class 29 and some of the services in Class 35. The opposition is based on, inter alia, Portuguese trade mark registration No 441 213 ‘BELA’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 441 213.

1. The goods and services

The goods on which the opposition is based are the following:

Class 29: Preserved fish.

The contested goods and services are the following:

Class 29: Farmed fish; fish (not live); fish products; food products derived from fish; fresh fish (not live); prepared foods consisting principally of fish; processed fish; ready cooked meals consisting wholly or substantially of fish; seafood (not live).

Class 35: Retail or wholesale services connected with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise web site in the global communications network in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail or wholesale outlet in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; distribution services, namely, the bringing together, for the benefit of others, of a variety of goods (excluding transport thereof), enabling customers to conveniently view and purchase those goods from a distributor outlet in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish.

An interpretation of the wording of the holder’s list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘excluding’, used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested farmed fish; fish (not live); fish products; food products derived from fish; fresh fish (not live); prepared foods consisting principally of fish; processed fish; ready cooked meals consisting wholly or substantially of fish; seafood (not live) either are broad categories of shellfish and sea fish (seafood) including fish, live and not live fish itself, or fish products and meals, and therefore, these contested goods must be considered at least similar or identical to the opponent’s preserved fish as they share the same nature (consisting of the meat of fish), purpose (to feed oneself), coincide in pertinent distribution channels and origin, and they are in competition with each other.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same can be said about the online and mail order services.

The goods covered by the retail/wholesale services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Therefore, the contested retail or wholesale services connected with farmed fish, fish (not live), fish products, food products derived from fish, prepared foods consisting principally of fish, processed fish, fish are similar to a low degree to the opponent’s preserved fish in Class  29.

However, the contested fresh fish (not live), ready cooked meals consisting wholly or substantially of fish, seafood (not live) are not considered to be exactly the same goods or the goods that fall under the natural and usual meaning of the category of the opponent’s preserved fish, and thus the contested services related to them are dissimilar to the opponent’s goods in Class 29.

As regards the remaining contested services the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a general merchandise web site in the global communications network in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from a retail or wholesale outlet in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish; distribution services, namely, the bringing together, for the benefit of others, of a variety of goods (excluding transport thereof), enabling customers to conveniently view and purchase those goods from a distributor outlet in connection with farmed fish, fish (not live), fish products, food products derived from fish, fresh fish (not live), prepared foods consisting principally of fish, processed fish, ready cooked meals consisting wholly or substantially of fish, seafood (not live), fish are somehow related to the aforesaid sale services. However, the principles set out above applying to the sale services can be applied to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35). Even though, these remaining services are quite closely related to the sale of goods, they are much broader then the latter (they are rendered for benefit of others), and thus encompass (even when excluding transport of the goods) variety of auxiliary services supporting the end purpose of sale of the goods in question. Consequently, it is concluded that to these remaining services the principles regarding sale of the goods cannot be applied, and consequently, they are all considered dissimilar to the opponent’s goods in Class 29.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to a various degrees are directed at the public at large. The degree of attention is deemed to be average.

3. The signs

BELA
Earlier trade mark	Contested IR

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier word mark includes the word ‘BELA’, which is a Portuguese word with a meaning ‘beautiful’ (adjective, feminine). The contested sign contains the word ‘BELLA’ an Italian word (adjective, feminine) with the same meaning. Therefore, it must be considered that due to closeness of the word ‘BELLA’ to its Portuguese equivalent, the Portuguese-speaking public will associate this word with the said meaning. This element is of normal distinctiveness in relation to the goods and services in question.

The other word element in the contested sign ‘OCEAN’ (with a meaning in English: ‘A very large expanse of sea’) although it is an English (and e.g. also a Polish) word, due to its closeness to the Portuguese word ‘oceano’ it brings to the minds of the relevant public the same exact meaning, and it will be generally understood. This word element can be considered as allusive if not otherwise weak for the relevant goods and services covered by the contested sign as the word ‘ocean’ in a direct way brings the association that they (fish and fish products) come from the ocean/sea or the services concern those kinds of goods. Consequently, the distinguishing power of this word element of the contested sign must be seen as lower than normal.

The contested sign, apart from the word elements ‘OCEAN’ and ‘BELLA’ placed one under another and written in a black bold upper case letters with a spray-effect shading contains a bold line separated with the fish device; they all are placed between the word elements. The letters of the words ‘OCEAN’ and ‘BELLA’ are placed alongside a vertical line in a slightly distorted way which is emphasized by different sizes of single letters constituting them.

The fish device in the contested sign will be associated with a fish itself. Bearing in mind that the relevant goods and services are fish and fish products and concerning their sale services, in Classes 29 and 35, this element is non-distinctive for all the goods and services in question.

In this regard, it must be concluded that the word ‘BELLA’ in the contested sign as it is not descriptive, allusive or otherwise weak for the relevant goods and services, oppositely to the remaining weak or non-distinctive elements, is the distinctive element in the contested sign.

The stylisation, position and size of the word elements ‘OCEAN BELLA’ in the contested sign render them clearly more dominant than the other elements, that is a bold black line or the fish device.

Furthermore, as regards the figurative element of the contested sign, it should be mentioned that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘BEL(*)A’. However, they can be differentiated by the doubled letter ‘L’ in the contested sign’s word ‘BELLA’ and the word ‘OCEAN’ preceding this word element which is also considered to be of low distinctiveness. Moreover, the contested sign includes further differentiating elements such as embellishing bold black line, the fish device which is considered as a non-distinctive element, and the stylisation of the word elements.    

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BEL/(*)A’, present identically in both signs. The pronunciation differs in the sound of the letters constituting the additional word ‛OCE/AN’ in the contested mark, which has no counterpart in the earlier mark.

Therefore, and considering the fact that the additional word ‘OCEAN’ of the contested sign is weak, the signs are consequently considered aurally similar to a degree above average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the concept of the word ‘bela’, a feminine adjective meaning in Portuguese beautiful, the signs are conceptually identical to this extent. However, the presence of the word ‘OCEAN’ preceding the abovementioned element in the contested sign adds this meaning (due to its closeness to the word ‘oceano’), and thus with a further differentiating concept of a fish noticeable due to the fish device, the contested sign acquires further semantic content, which allows to differentiate the signs perceived as a wholes. Thus, the signs are considered conceptually similar to a high degree as these additional concepts are pertained to secondary elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark has a normal degree of distinctiveness. The level of attention of the general public is deemed to be average. As regards the general consumers they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). It should be pointed out that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, §  54).

In the present case consumers encountering the marks will certainly make links on each of the three relevant levels: visual, aural and conceptual, due to the presence of the coinciding element ‘BEL(L)A’. The signs are visually similar to an average degree and aurally similar to a degree above the average as the whole earlier trade mark ‘BELA’ is fully included in the contested sign. What is more, the ‘BELLA’ element is the distinctive element in this sign; it is preceded by, considering the goods and services in question, the weak element ‘OCEAN’, as well as, the non-distinctive fish device that will not have a bigger impact on the relevant public. Even though this sign contains the mentioned additional elements, these elements are not able to prevail over the existing aural and conceptual identity pertained to the coinciding element ‘BEL(*)A’ as they are considered weak, non-distinctive and merely decorative. Therefore, it is concluded that the overall impression created on the consumers by the signs, clearly leads to the association between the signs in the typical circumstances where, inter alia, general principle of imperfect recollection applies.

Moreover, it must be concluded that, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the goods or services.

Therefore, there is a likelihood of confusion on the relevant public, because as mentioned above, the differences between the signs are confined to weak (‘OCEAN’ word element) or non-distinctive and secondary elements (the fish device) and other aspects (stylisation of the figurative elements that functions merely as an embellishment).

Consequently, the opposition is partly well-founded on the basis of the opponent’s Portuguese trade mark registration No 441 213, and the contested sign must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier right:

• European Union trade mark registration No 7 469 398 for the figurative mark,

, for goods in Class 29 (preserved fish).

This earlier right has the same scope of protection of the earlier trade mark which has already been compared above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected. Moreover, the other earlier right invoked by the opponent is clearly less similar to the contested sign. This is because it contains further figurative elements, especially a quite different stylisation of the word element (constituting a fish device with some waves against an oval background). In these circumstances no likelihood of confusion exists with respect to those remaining services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gailé SAKALAITE

Birgit FILTENBORG

María Clara IBÁÑEZ FIORILLO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.