OPPOSITION No B 2 644 329

Eckes-Granini Deutschland GmbH, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (opponent), represented by Heinrich Prinz Reuss, Eckes-Granini Group GmbH, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (employee representative)

a g a i n s t

Avi Trade SIA, Rüpniecibas iela 4-14, Riga 1010, Latvia (holder), represented by Petersona Patents, 2 Ausekla Street, Suite 2, Riga, 1010 Latvia (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 644 329 is upheld for all the contested goods.

2.        International registration No 1 243 344 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 243 344. The opposition is based on German trade mark registration No 30 2012 010 301. 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.

1. The goods

The goods on which the opposition is based, according to the opposition notice filed on 25/01/2016, are the following:

Class 29:        Frozen, preserved, dried and cooked vegetables.

Class 32:        Mineral waters and aerated waters.

The contested goods are the following:

Class 29:        Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes.

Class 32:        Fruit beverages and fruit juices; syrups and other preparations for making beverages.

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

Preserved, frozen, dried and cooked vegetables are identically contained in both lists of goods.

The contested preserved, frozen, dried and cooked fruits are similar to a low degree to the opponent’s preserved vegetables, as they can have the same producers, end users and distribution channels.

The contested jellies, jams compotes are similar to a low degree to the opponent’s preserved vegetables, as they can have the same producers, end users and distribution channels.

Contested goods in Class 32

The contested fruit beverages and fruit juices are similar to the opponent’s mineral waters and aerated waters because they have the same nature (both are non-alcoholic drinks), purpose and method of use, they are in competition and they can have the same distribution channels and relevant consumers.

The contested syrups and other preparations for making beverages are similar to the opponent’s mineral waters and aerated waters because they have the same purpose and they can have the same producers, distribution channels and relevant consumers. Moreover, they may be complementary to each other.

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 will be average.

3. The signs

MAGIC ORANGE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 is a word mark composed of two verbal elements, ‘MAGIC ORANGE’.

The first verbal element, ‘MAGIC’, is an English adjective meaning ‘supernatural’, but also ‘wonderful, exciting’ and ‘excellent’. It will be understood by the relevant German public, firstly because of its proximity to the German equivalent ‘magisch’ and secondly because this word is commonly used and has been even assimilated to a certain extent into German (see ‘magic’ in Duden German Dictionary http://www.duden.de/). In the present case, the relevant goods are vegetable-based foodstuffs and drinking water, in relation to which the use of the adjective ‘magic’ is unusual; therefore, despite its slightly laudatory connotation, this element is distinctive, albeit to a slightly lower than average degree.

The second verbal element, ‘ORANGE’, has the same meaning in German as in English, indicating a citrus fruit and a colour. Bearing in mind that the relevant goods are processed vegetables and drinking water, this element is non-distinctive for some of these goods, namely for mineral waters and aerated waters, as it may indicate their flavour.

Therefore, for the vegetable-based goods in Class 29, the element ‘MAGIC’ is slightly less distinctive than ‘ORANGE’, whereas, for the goods in Class 32, ‘MAGIC’ is clearly the only distinctive element of the earlier mark.

Since the earlier trade mark is a word mark, it has no elements that could be considered more dominant than the others. Moreover, the use of upper or lower case is immaterial.

The contested sign is a figurative mark composed of two verbal elements, ‘Magic berry’, written in stylised and coloured characters. A curved ornamental line, starting from the letter ‘M’, surrounds the first verbal element, ‘Magic’.

The verbal element ‘Magic’ will be understood by the relevant German public as explained above. The distinctiveness of this element is slightly lower than average in relation to the relevant goods, which are fruit- and vegetable-based foodstuffs in Class 29 and fruit juices and preparations for making beverages in Class 32, because, despite its laudatory connotation, the use of the adjective ‘Magic’ in relation to these goods is quite unusual in German.

The second verbal element of the contested sign, namely ‘berry’, is an English noun describing a ‘small, round fruit that grows on a bush or a tree’. However, the word will also be understood by the vast majority of the relevant German public, especially those with a good knowledge of English, because it is quite commonly used in the market as an indication of flavour for foods and cosmetics. As the relevant goods are foodstuffs and beverages, this element is non-distinctive for some of these goods, namely for preserved, frozen, dried and cooked fruits; jellies, jams, compotes; fruit beverages and fruit juices; syrups and other preparations for making beverages, as it may indicate their flavour.

Therefore, for the vegetable-based goods in Class 29, the element ‘Magic’ is slightly less distinctive than ‘berry’, whereas, for the fruit-based goods in Class 29 and for all the goods in Class 32, ‘Magic’ is clearly the only distinctive element of the sign.

The figurative elements of the contested sign are purely decorative and therefore have very limited distinctive character, if any.

The contested sign has no elements that could be considered clearly more dominant than other elements.

It has to be taken into account 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).

Therefore, the differences in the figurative elements of the contested sign are of limited relevance, particularly taking into account the fact that they have a very low degree of distinctiveness for the relevant goods.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the initial part of the sign the one that first catches the attention of the reader.

Visually and aurally, the first elements of the conflicting signs are identical. The signs differ in their second elements: ‘ORANGE’ in the earlier mark versus ‘berry’ in the contested sign. Visually, they also differ in the stylisation of the contested sign, which is nevertheless of very limited impact, as explained above.

The coinciding verbal element ‘Magic’ is the first element of the signs. As regards the relevant goods in Class 32, ‘MAGIC’ is the only distinctive element of the signs. It is also the distinctive element of the contested trade mark in relation to all fruit-based goods in Class 29. Therefore, for these goods, the signs are visually and aurally similar to a high degree.

However, the coinciding element ‘MAGIC’ is slightly less distinctive than the other verbal elements in both signs in relation to vegetable-based goods in Class 29. This factor is, nevertheless, counteracted by its position at the front of the signs. Therefore, for these goods, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the obvious difference between an orange and a berry, and taking into account that the marks referring to different fruits does not necessarily entail conceptual similarity, in the present case both signs will be perceived as referring to ‘a magic fruit’, and therefore the signs are conceptually similar to an average degree for the goods for which both verbal elements of the signs are distinctive (vegetable-based goods in Class 29).

For the remaining contested goods in Class 29 (fruit-based goods), ‘Magic’ is the only distinctive element of the contested sign. It is also the only distinctive element in both marks in respect of the goods in Class 32. Therefore, for those goods, the signs are conceptually similar to a high degree.

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 relation to the goods in Class 32, given that it is formed of a slightly laudatory element, ‘MAGIC’, and a descriptive element, ‘ORANGE’, the degree of distinctiveness of the earlier trade mark, ‘MAGIC ORANGE’, is slightly lower than average.

The distinctive character of the earlier mark is average in relation to vegetable-based goods in Class 29, despite the presence of the slightly laudatory element ‘MAGIC’.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar (to various degrees). The degree of attention of the relevant public is average. The earlier mark’s distinctiveness is average or slightly lower than average.

For the identical goods (preserved, frozen, dried and cooked vegetables), the signs are aurally, visually and conceptually similar to an average degree.

For the contested goods that are similar to a low or an average degree (preserved, frozen, dried and cooked fruits; jellies, jams, compotes in Class 29, fruit beverages and fruit juices; syrups and other preparations for making beverages in Class 32), there is a high degree of visual, aural and conceptual similarity between the signs, resulting from the lack of distinctive character of the differing elements.

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). This principle is of the utmost relevance in relation to the contested fruit-based goods in Class 29, which are similar to a low degree, but in relation to which the signs are highly similar on all levels of comparison.

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Both signs convey the concept of ‘a magic fruit’ and have the same structure of an adjective, ‘magic’, plus a fruit. It is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the holder argues that the verbal element ‘Magic’ does not have a high degree of distinctive character, given that there are many trade marks that include it. In support of its argument, the holder refers to several trade mark registrations in the EUIPO database.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘Magic’. Under these circumstances, the holder’s claims must be set aside. In any case, the conclusion about the likelihood of confusion in the present case was reached taking into account the slightly lower than average degree of distinctiveness of the element ‘Magic’, which is the result of the semantic content conveyed by this element in the perception of the German public.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2012 010 301. It follows that the contested trade mark must be rejected for all the contested 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.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Catherine MEDINA

Anna ZIÓŁKOWSKA

Begoña URIARTE VALIENTE

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.