OPPOSITION No B 2 627 803

Cargill, Incorporated, 15407 McGinty Road West, Wayzata, Minnesota 55391-5624, the United States of America (opponent), represented by Cargill Europe Bvba, Alexandre Farman, Bedrijvenlaan 9, 2800 Mechelen, Belgium (professional representative)

a g a i n s t

Musti ja Mirri Oy, Lempääläntie 21, 33820 Tampere, Finland (holder), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 627 803 is upheld for all the contested goods.

2.        International registration No 1 246 779 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 246 779. The opposition is based on, inter alia, European Union trade mark registration No 4 075 628. 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 European Union trade mark registration No 4 075 628.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

The contested goods are the following:

Class 31: Foodstuffs for animals.

Foodstuffs for animals are identically contained in both lists of goods.

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 are directed at the public at large. The degree of attention is considered to be average.  

3. The signs

NUTRENA	NUTRIMA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union.  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks are word marks.

The first four letters of the signs at issue (‘NUTR’) may evoke ‘nutrition’ in certain parts of the relevant territory. However, in non-Latin languages such as Bulgarian, Czech, Lithuanian, Polish and Slovenian the word ‘nutrition’ ‘would not be recognised’ by the public (see decision of the Board of Appeal, 05/04/2016, R 0972/2015-2 GOLDNUTRITION § 32). Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Czech-, Lithuanian-, Polish- and Slovenian-speaking parts of the public for which ‘nutrition’ has no meaning and where the signs’ initial letters ‘NUTR’, consequently, will not evoke any meaning.

It therefore follows that ‘NUTRENA’ and ‘NUTRIMA’ are of normal distinctiveness for the relevant goods.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘NUTR**A’ and differ in their fifth and sixth letters, that is, the letters ‘EN’ (the earlier mark) and ‘IM’ (the contested sign). However, since they share the same amount of letters, and their beginnings and endings are the same, they are visually highly similar.  

Aurally, the signs coincide in ‘NUTR**A’ and differ in ‘IM’ and ‘EN’. Moreover, the marks are composed of the same number of syllables (three) and have, therefore, the same rhythm. This makes the signs aurally highly 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 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 any of 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 likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

The holder argues that ‘no operator can claim to have an exclusive right to the common verbal element “NUTR”, since ‘[T]he common prefix “NUTR” or “NUTRI” will be associated by the relevant consumers with the concept of “nutrition”. In this regard, the holder refers to ‘a large number of EU trademarks in class 31 which share the prefix “NUTR-“ only differing by the suffix’. Therefore, ‘[T]he suffixes “IMA” and “ENA” should be considered as the dominant parts of the marks’.

As stated in section c) of this decision, the public under analysis will not associate ‘NUTR-’ with ‘nutrition’ in either sign. Therefore, the holder’s arguments must be set aside.

In the present case, the goods are identical. Moreover, the signs are visually and aurally highly similar and the earlier mark is distinctive to a normal degree. The degree of attention of the relevant public is deemed to be average. 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, there is a likelihood of confusion on the part of the Bulgarian-, Czech-, Lithuanian-, Polish- and Slovenian-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 075 628. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martina GALLE

Christian RUUD

Boyana NAYDENOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.