OPPOSITION No B 2 491 705

Societe Cooperative Groupements d'achats des Centres Leclerc, SC Galec, 26 quai Marcel Boyer, 94200 Ivry sur Seine, France (opponent), represented by Inlex IP Expertise, 5, rue Feydeau, 75002 Paris, France (professional representative)

a g a i n s t

Naturally Organic Ltd., 59-60 Thames St, West Berkshire, Windsor Windsor and Maidenhead SL4 1TX, United Kingdom (applicant), represented by Lerroux & Fernandez-Pacheco, Claudio Coello 124 4º, 28006 Madrid, Spain (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 491 705 is partially upheld, namely for the following contested goods:

Class 5: Alimentary fibres, alimentary fibres extracted from the agave and the blue agave as a live microorganism probiotic foodstuff to supplement foodstuffs for human consumption, dietetic substances for diets, powders as substitutes for foodstuffs, preparations for use as additives for foodstuffs for human consumption (medicines), food supplements for improving the intestinal flora.

Class 29: Yoghurt; Milkshakes and milk products, all the aforesaid goods containing fibre based on agave extract.

        

Class 30: Coffee, tea, cocoa, chocolate and artificial coffee; Ices and ice creams; All the aforesaid goods containing fibre based on agave extract.

Class 32: Non-alcoholic beverages, flavoured waters; fruit milkshakes, juices, all the aforesaid goods containing fibre based on agave extract.

2.        European Union trade mark application No 13 575 154 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 575 154. The opposition is based on French trade mark registrations No 83 547 935, No 4 329 4926, No 43 287 762, No 23 164 582 and No 3 024 486. The opponent invoked Article 8(1)(b) EUTMR.

DECISION ON REVOCATION – ARTICLE 80 EUTMR

According to Article 80(1) EUTMR, where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 03/02/2017, the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 14/12/2016 taken in the opposition proceedings number B 2 491 705.

The reason was that there was an error attributable to the Office, namely that at the time when the opposition decision was taken, the English translation of the list of goods in Class 32 of the contested EUTM application which was taken into account in examination of the opposition did not contain the term 'aguas con sabores', that is, 'flavoured waters' included in the original Spanish version.

In accordance with Article 80 EUTMR, the Office gave the parties one month to submit observations. The parties did not submit any observations.

Therefore, the decision taken by the Opposition Division on 14/12/2016 in the opposition No B 2 491 705 is herewith revoked and is replaced by the present decision.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the French trade mark registrations No 3 547 935, 3 294 926, 3 287 762, 3 164 582, 3 024 486 on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 14/01/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in France from 14/01/2010 to 13/01/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

French trade mark registration No 3 547 935 for the figurative mark

Class 29:        Milk products, milk desserts, yoghurts, drinking yoghurts, milk beverages (milk or milk products predominating), milk beverages (milk predominating), milk beverages with fruits.

French trade mark registration No 3 294 926 for the figurative mark

Class 32:        Water, spring water, sparkling water or flat mineral water, flavoured or not.

French trade mark registration No 3 287 762 for the figurative mark

Class 29:        Milk products namely yoghurts, milk desserts, milk desserts with fruits, milk drinks; dessert creams, milk desserts from cereals.

French trade mark registration No 3 164 582 for the figurative mark 

Class 29: Milk products.

French trade mark registration No 3 024 486 for the word mark 'DELI' UP'

Class 29: Yoghurts.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 17/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/01/2016 to submit evidence of use of the earlier trade marks. This time limit was extended and expired on 17/03/2015. On 16/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Exhibit 1: certificates proving the validity of the French trade mark registrations on which the opposition is based.

• Exhibit 2: a copy of E. Leclerc organigram.

• Exhibit 3:

• invoices dated between 19/01/2010 and 17/02/2014, issued by the company Scamark to different entities in France. The invoices show the sale of goods fruit yoghurts under a trade mark Deli' Light.
• E. Leclerc leaflets in French, showing the products fruit yoghurts and fresh cheese under a trade mark  (Delisse Deli Light). Some of the catalogues are of August/September 2013 and January/February 2014.

• Exhibit 4:

• E. Leclerc leaflets in French, showing the products ‘Déli Dél'o’ flavoured water drinks. Some of the catalogues are of May, June and July 2010 and July 2014.
• invoices dated between 18/03/2010 and 27/06/2014 issued by the company Scamark to different entities in France. The invoices show the sale of goods eau arȏmatisée (flavoured water drinks) under a trade mark  (Déli Dél'o).

• Exhibit 5:

• Three E. Leclerc leaflets in French, showing the products under the mark  (déli' MAX) yoghurt drinks. Some of the catalogues are of June and July 2010 and August 2011 and September 2013.

• Exhibit 6:

• invoices dated between 14/01/2010 and 03/12/2014 issued by the company Scamark to different entities in France. The invoices show the sale of goods lait fermenté à boire (fermented milk beverage) under a trade mark DELI' UP.
• E. Leclerc leaflets in French, showing the products fruit fermented milk beverages  (déli up). Some of the catalogues are dated in April 2013 and August 2014.

• Exhibit 7:

• invoices dated between 23/02/2010 and 10/01/2015 issued by the company Scamark to different entities in France. The invoices show the sale of goods spéecialité laitière vanille (vanilla diary specialty), spéecialité laitière nature, spéecialité laitière peche and spéecialité laitière straccitela  under a trade mark ‘DELI' BREAK’.

• Exhibit 8: a statutory auditor's report of 24/02/2016 signed by Mr. Grant Thornton. The document shows the sale of products under trade marks Délisse Déli' Light, Déli' Max, Déli'Délo, Déli'Break and Déli'Up for the period from 14/01/2010 until 14/01/2015. According to this document the turnover in France of the products bearing trade mark on which the opposition is based is the following:

• Déli' Light: 64,249, 691 sales units
• Déli' Max: 1, 417, 602 sales units
• Déli'Délo: 11,588,297 sales units
• Déli'Break: 7,190,747 sales units
• Déli'Up: 5,917,189 sales units

These figures are presented in an affidavit of 15/02/2016 signed by Mr. Benoit Hosdain, a Chief Finance Officer.

1. Examination of the evidence in relation to the earlier French trade mark registration No 3 547 935  

The evidence in relation to the earlier French trade mark registration No 3 547 935 only consists of the auditor's report (Exhibit 8) and three E. Leclerc leaflets in French, showing that the products yoghurt drinks under a trade mark 'déli' MAX' were on offer in June and July 2010, August 2011 and September 2013.

As far as the written statement is concerned (Exhibit 8), Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up.

As far as the probative value of this kind of evidence is concerned, statements drawn up by third parties constitute valid independent evidence with probative value. However, even in such cases, this does not mean that such statements, by themselves, may prove to be sufficient to show use. The final outcome depends on the overall assessment of the evidence and what these statements/affidavits contain in the particular case. Therefore, in general, further evidence is necessary to establish genuine use.

In the present case, as already mentioned above, the only evidence submitted next to the written statement are the leaflets. The opponent did not file any additional document or evidence, originating from an independent source, to corroborate the claims made in the Exhibit 8.

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark. The promotional leaflets demonstrate some use of the trade mark 'déli' MAX' in relation to yoghurt drinks; however, they are not sufficient to prove that the trade mark at issue has been genuinely used on the market. The evidence, taken as a whole, does not provide sufficient indications to allow the Opposition Division to ascertain whether there were any actual sales of the goods in question on the market or to what extent the goods have been distributed. A mention of the earlier mark in the statutory report and a promotional catalogue on its own cannot prove the extent of distribution or the amount of sales of the relevant goods. In the present case, there is no further information about the frequency of use, the distributors of the goods or the clients which could give the Opposition Division information about the use of the earlier mark in question.

Therefore, the Opposition Division concludes that the opponent has not provided sufficient indications concerning the extent of the use of the earlier trade mark 'déli' MAX'.

As mentioned above, according to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based. As these factors are cumulative, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier French earlier mark No 2 547 935 was genuinely used in the relevant territory during the relevant period of time.

Therefore, as regards the earlier French trade mark registration No 3 547 935, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

2. Examination of the evidence in relation to the remaining earlier rights

The opposition Division observes, that all the invoices submitted originate from company Scamark based in France. In relation to this it has to be noted that according to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225). Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the invoices can be taken into account in the present case. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by the company Scamark was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The evidence consists of leaflets and several invoices. These documents show that the place of use is France. This can also be inferred from the language of the documents (French), the currency mentioned (EURO) and the addresses of the customers in France. Therefore, the evidence relates to the relevant territory.

The evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices and the leaflets provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier marks. Both the physical volumes and the commercial value of the sales concerning the , , DELI'UP and products are rather moderate, but not negligible. The information presented in the invoices indicates that the physical volumes of sales, whilst not high, were not merely token, but sufficient for establishing a commercial scale of transactions related to the goods at issue. In that regard, it is recalled that use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the invoices submitted by the opponent are only samples and do not represent the total sales (which can be inferred from the non-consecutive numbering of the invoices).

The territorial scope is sufficiently indicated by the fact that, as shown in the invoices, the relevant goods were sold to customers in France. The sufficient degree of the duration of use is clearly indicated by the fact that the opponent submitted several invoices for each year of the relevant period. With regard to the frequency of use, the invoices leave no doubt that the sale transactions under the earlier trade marks were carried out regularly throughout the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence shows that the opponent used the signs in a trade mark sense, publicly and outwardly. The trade marks were directly affixed on the packaging of the goods as shown on the promotional leaflets.

The evidence shows that the actual manner of use of the earlier marks sometimes features certain alterations to the composite sign’s registered form together with the element 'Delisse', for example as  . However, it is considered that this addition will be perceived as an independent mark. In this case, the registered mark is not used in a different form but the two independent marks are used validly at the same time. Several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C-12/12, SM JEANS/LEVI’S, EU:C:2013:253, § 36).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier French trade marks No 3 294 926, 3 287 762, 3 164 582, 3 024 486.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence in relation to the earlier French trade mark registration No 3 164 582 proves use only for Yoghurts. These goods can be considered to form an objective subcategory of Milk products in Class 29. Therefore, the Opposition Division considers that the evidence in relation to the earlier French trade mark registration No 3 164 582 shows genuine use of the trade mark only for Yoghurts.

In relation to the remaining earlier rights, the evidence shows genuine use of the trade marks for the following goods:

French trade mark registration No 3 294 926

Class 32:        Sparkling water or flat mineral water, flavoured.

French trade mark registration No 3 287 762

Class 29:        Yoghurts, milk desserts, milk desserts with fruits.

French trade mark registration No 3 024 486

Class 29: Yoghurts.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 French trade mark registration No 3 287 762 and  No 3 294 926. 

1. The goods

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

French trade mark registration No 3 287 762

Class 29:        Yoghurts, milk desserts, milk desserts with fruits.

French trade mark registration No 3 294 926

Class 32:        Sparkling water or flat mineral water, flavoured.

The contested goods are the following:

Class 5: Alimentary fibres, alimentary fibres extracted from the agave and the blue agave as a live microorganism probiotic foodstuff to supplement foodstuffs for human consumption, dietetic substances for diets, powders as substitutes for foodstuffs, preparations for use as additives for foodstuffs for human consumption (medicines), food supplements for improving the intestinal flora.

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Yoghurt; Milkshakes and milk products, all the aforesaid goods containing fibre based on agave extract.

Class 30: Coffee, tea, cocoa, chocolate and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices and ice creams; Sugar, honey, treacle; Yeast, baking-powder; Mustard; Sauces (condiments); Spices; Cereal bars; All the aforesaid goods containing fibre based on agave extract.

Class 32: Non-alcoholic beverages, flavoured waters; fruit milkshakes, juices, all the aforesaid goods containing fibre based on agave extract.

Contested goods in Class 5

The contested alimentary fibres, alimentary fibres extracted from the agave and the blue agave as a live microorganism probiotic foodstuff to supplement foodstuffs for human consumption, dietetic substances for diets, powders as substitutes for foodstuffs, preparations for use as additives for foodstuffs for human consumption (medicines), food supplements for improving the intestinal flora are similar to the opponent's yoghurts. The goods at hand may coincide in their purpose (to improve intestinal flora), in their producers, they might be offered through the same distribution channels and target the same end users.

Contested goods in Class 29

The contested yoghurt, containing fibre based on agave extract is included in the broad category yoghurts. The goods are identical.

The contested milk products, all the aforesaid goods containing fibre based on agave extract include, as a broader category the opponent’s yoghurts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested milkshakes, all the aforesaid goods containing fibre based on agave extract are similar to a high degree to the opponent's yoghurts as the goods have the same purpose and nature. Furthermore, they can coincide in producer, public and distribution channels. The goods are also in competition.

The contested preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes, all the aforesaid goods containing fibre based on agave extract are dissimilar to the opponent's goods included in the earlier marks. Although the goods can broadly be referred to as foodstuffs, this is not sufficient to find them similar. The goods are sold in different sections in supermarkets and normally they do not share the same commercial origin. Furthermore, they are neither in competition nor are they complementary.

Contested goods in Class 30

The contested ices and ice creams; all the aforesaid goods containing fibre based on agave extract are similar to a high degree to the opponent's yoghurts as the goods have the same purpose and nature. Furthermore, they can coincide in producer, public and distribution channels. The goods are also in competition.

The contested coffee, tea, cocoa, chocolate and artificial coffee; all the aforesaid goods containing fibre based on agave extract are similar to the opponent's sparkling water or flat mineral water, flavoured as these are non-alcoholic beverages. The goods may coincide in the same producer, end user and distribution channels. Moreover, they are in competition.  

The remaining contested rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; sugar, honey, treacle; yeast, baking-powder; mustard; sauces (condiments); spices; cereal bars; all the aforesaid goods containing fibre based on agave extract have no relevant points in common with the opponent goods included in the earlier marks. Although the goods can broadly be referred to as foodstuffs, this is not sufficient to find them similar. The goods are sold in different sections in supermarkets and normally they do not share the same commercial origin. Furthermore, they are neither in competition nor are they complementary. Therefore, these goods are dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages, containing fibre based on agave extract overlap with the opponent's sparkling water or flat mineral water, flavoured. The goods are identical.

The contested flavoured waters includes as a broad term the opponent’s flat mineral water, flavoured. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical. 

The contested fruit milkshakes, all the aforesaid goods containing fibre based on agave extract are similar to a high degree to the opponent's yoghurts as the goods have the same purpose and nature. Furthermore, they can coincide in producer, public and distribution channels. The goods are also in competition.

The contested fruit milkshakes, juices, all the aforesaid goods containing fibre based on agave extract are similar to the opponent's sparkling water or flat mineral water, flavoured as they have the same purpose. They can coincide in the end user and distribution channels. Moreover, they are in competition.

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 found to be identical or similar to various degrees are directed at the public at large. The degree of attention may vary from average to low, as some of the goods, for example yoghurts, rice; flour and preparations made from cereals, sugar, etc. are inexpensive goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

3. The signs

1. FR No 3 287 762

FR No 3 294 926
Earlier trade marks	Contested sign

The relevant territory is France.

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 mark 1 consists of the stylised wording ‘Déli’light’ where the letters appear in blue colour and are underlined with a wavy line in blue. The letters ‘Déli’ are separated from the remaining letters 'light’ with a red apostrophe and are placed against a white oval which is depicted on a light blue and violet square background.

The earlier mark 2 is a figurative mark consisting of the stylised words ‘Déli’ and 'Dél’o'. The words are depicted in blue colour and are placed one above another. In the second verbal element, the letters 'Del' are separated from the letter 'o' with an apostrophe shaded in a light blue, yellow and green colour.

The contested sign is a figurative mark composed of the words 'Deli' and 'Fiber' in black. The words are depicted one above another in a diagonal position. The contested mark also contains a figurative element in a shape of a heart. 

The element ‘DELI’ contained in all marks may evoke the meaning of ‘delicieux’ (in English delicious) and may be understood as such by part of the relevant public, however only when confronted with the foodstuff (07/09/2016, R 2426/2015-5, DELI’MAX/ DELIPLUS, § 39). For the other part of the French speaking public, the element ‘DELI’ will have no meaning.

The word 'light' included in the earlier mark 1 is a basic English term which is commonly used in the relevant territory in relation to foodstuff as it refers to something that is 'not heavy' or is easily digested. Since the relevant goods are foodstuffs, this element is considered to be non-distinctive.

The word 'Dél’o' has no meaning in the relevant territory and is  considered to be distinctive in relation to the goods at hand.

The word 'Fiber' is an English term which means ‘dietary fibre’ – an indigestible portion of plant food necessary in a certain amount for the health of the gastrointestinal tract of a man. As it is very similar to the equivalent French word 'Fibre' it is reasonable to assume, that it will be understood throughout the relevant territory. Bearing in mind that the relevant goods are foodstuffs, it is considered that this element is weak for these goods.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘Deli’ placed at the beginning of the marks which is the part on which the consumers generally tend to focus more when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The marks differ in the word ‘Light’ of the earlier mark 1 which is considered to be non-distinctive in relation to the relevant goods at hand, in the word 'Dél’o' of the earlier mark 2 and in the non-distinctive word 'Fiber' of the contested mark. Furthermore, the marks also differ in the figurative arrangements of the marks as explained above. However, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Since the element ‘Light’ of the earlier mark 1 is considered to be non-distinctive, the marks are similar at least to an average degree. The earlier mark 2 and the contested mark are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛Deli’, present at the beginning of the signs to which the consumer pays more attention.

In relation to the earlier mark 1), the pronunciation of the marks differs in the sound of the word ‛Light’ of the earlier sign and 'Fiber' of the contested mark which are both considered to be non-distinctive. Therefore, the marks are aurally similar to a high degree for the part of the public that perceives the word ‘DELI’ as a distinctive element. For the remaining part of the public, the signs are aurally similar to an average degree.

On the other hand, in relation to the earlier mark 2, the marks differ in the sound of the letters ‛Del'o’ of the earlier sign and a non-distinctive element 'Fiber' of the contested mark. The signs are aurally similar to a high degree for a part of the public (for which the word ‘DELI’ is not understood and is considered distinctive) and aurally similar to an average degree for the remaining part of the public.

Conceptually, the element ‘Deli’ included in all the signs may be understood as referring to ‘delicieux’ (delicious) by a part of the relevant public.

The word 'light' of the earlier mark 1 refers to something that is 'not heavy' and the word 'Fiber' of the contested mark refers to an indigestible portion of plant. The public will also perceive the concept of a heart in the contested mark. For this part of the public, the signs are conceptually similar to a low degree.

For the remaining part of the public that will only understand the word 'Light' and 'Fiber' and will see the depiction of a heart in the contested mark, the signs are conceptually dissimilar.

The word 'Dél’o' of the earlier mark 2 has no meaning in French. Consequently, for the part of the public that will understand the word ‘DELI’ of the earlier mark 2 and the contested mark, there is a conceptual link between the signs on the account of the word ‘DELI’. However, bearing in mind that this elements is weak, the signs are conceptually similar to a low degree. For the remaining part of the public, the signs are conceptually not similar.

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 marks are particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se.

In the present case, the earlier trade mark 1 as a whole may evoke the idea of ‘delicious, light’ for a part of the public. For this part of the public the distinctiveness of the earlier mark 1 must be seen as low at least in relation to a part of the goods (foodstuff). The mark has a normal degree of distinctiveness for the remaining part of the relevant public (e.g. the part of the French-speaking public that perceives the element ‘DELI’ as meaningless), despite the presence of a weak element in the mark as stated above in section c).

The earlier mark 2 as a whole has meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark 2 must be seen as normal, despite the presence of, for a part of the public, weak element ‘DELI’ as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods under comparison are partially identical, partially similar to various degrees and partially dissimilar.

The earlier mark 1 and the contested mark are visually similar to an average degree and aurally similar to a high or average degree depending whether the word ‘DELI’ is understood or not. The marks differ in the non-distinctive words 'Light' of the earlier mark 1 and 'Fiber' of the contested mark.

Since at least for a part of the public the differences between the marks are confined to the non-distinctive elements of the marks ´LIGHT´and ´FIBER´and to the figurative elements of the marks, it is considered that they are insufficient to enable the average consumer to safely distinguish between the signs especially as the similarities between the signs arise from the element placed at the beginning of both signs.

The earlier mark 2 and the contested mark coincide in the letters 'Deli' and differ in the element 'Del'o' of the earlier mark and 'Fiber' of the contested mark. However, the difference confined to the last letters/sounds of the second word 'Del'o' may go unnoticed and may be seen as a repetition of the first element 'Deli' of the earlier mark. Furthermore, the word 'Fiber' is considered to be non-distinctive in relation to the relevant goods.

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarities resulting from their coinciding elements, and that, in relation to identical and similar goods, consumers may perceive the contested sign as a modification of the earlier marks and believe that the goods originate from the same undertaking or at least from economically linked undertakings.

Account is also taken of the fact that average consumers 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s French trade mark registrations No 3 287 762 and  No 3 294 926.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

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

• French trade mark registration No 3 164 582 for the figurative mark   used for Class 29: Yoghurts.

• French trade mark registration No 3 024 486 for the word mark 'DELI' UP' used for Class 29: Yoghurts.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Lars HELBERT

Janja FELC

Francesca CANGERI SERRANO

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.