OPPOSITION No B 2 645 508

Confiserie Roodthooft, naamloze vennootschap, Lange Leemstraat 374-376, 2018 Antwerpen, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Fpuh Mokate Spółka z ograniczoną odpowiedzialnością, Katowicka 265, 43450 Ustroń, Poland (applicant), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 645 508 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 459 747, namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 412 197 and on Benelux trade mark registration No 64 985. 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 412 197.

1. The goods

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

Class 30: Confectionery.

The contested goods are the following:

Class 30: Confectionery.

Confectionery is 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 average.

3. The signs

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 earlier mark is a figurative mark in white, black, brown, red, orange, yellow and grey, depicting a bust of a Bedouin (a nomadic Arab man). The mark also contains two verbal elements. The first word, ‘CARAMELLA’, is written in red on the part of the man’s attire that covers his head. The second word, ‘MOKATINE’, is written in black and is placed on the chest of the Bedouin.

The figurative element of the earlier mark overshadows the verbal elements by virtue of its central position and size, and, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is considered dominant and distinctive.

The word ‘CARAMELLA’ is an Italian word meaning ‘candy’, ‘toffee’ or ‘caramel’. This word has similar equivalents in several languages, for example ‘caramelo’ in Portuguese and Spanish, ‘karamel’ in Czech, Danish, Dutch, Slovak, and Slovenian, ‘karamela’ in Croatian and ‘karamella’ in Hungarian. Therefore, for those consumers who associate this word with the concept of ‘caramel’, the word is weak.

Although the word ‘MOKATINE’ does not have a meaning as such, it alludes to mocha, ‘a fine-quality coffee’ (information extracted from Oxford Dictionaries on 20/04/2017 at https://en.oxforddictionaries.com/definition/us/mocha). As there are similar equivalent words in other languages, for example ‘moka’ in Czech and Spanish and ‘mokka’ in German and Hungarian, for those consumers who will perceive the word with the abovementioned meaning, the word is considered weak.

The contested sign is a figurative sign with a figurative element resembling a label, containing the words ‘Caffetteria’ in a light brown colour and ‘MOKATE’ in a dark brown colour, at the top of the sign. Underneath this label are the words ‘sweet’ and ‘cookies’, written in stylised letters, the first of which is depicted in pink and the second of which is depicted in black. Moreover, the dot of the letter ‘i’, which appears in the word ‘cookies’, is replaced with a figurative element of a pink heart.

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

The first word, ‘Caffetteria’, is an Italian word which has equivalent words in several languages, for example ‘cafeteria’ in Danish, Dutch, English, German and Portuguese and ‘cafetería’ in Spanish. It will be associated with ‘a restaurant or a dining room in a school or a business in which customers serve themselves from a counter and pay before eating’ (information extracted from Oxford Dictionaries on 20/04/2017 at https://en.oxforddictionaries.com/definition/us/cafeteria). Since this word refers to a place in which the goods in question are sold and served, it is considered non-distinctive.

The second word, ‘MOKATE’, will, similarly to the word ‘MOKATINE’ in the earlier mark, allude to the concept of mocha. For those consumers who will associate it with this meaning, the word is weak in relation to the goods in question.

The expression ‘sweet cookies’, which refers to ‘a small cake, typically round, flat, and crisp having a pleasant taste (as of sugar)’ contains words from the English language. Therefore, the English-speaking part of the relevant public will understand this expression as such. The Court has also confirmed that the general public in the Scandinavian countries, the Netherlands and Finland has at least a basic understanding of the English language (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). Therefore, for those consumers who will perceive this expression with the abovementioned meaning, the expression is considered weak.

Since a part of the public may not associate the elements ‘MOKATE’ and ‘MOKATINE’ with mocha coffee, the analysis below will be undertaken considering this part of the public, as it seems more prone to confusion in this case. This is the best-case scenario for the opponent.

Conceptually, as described above, the words ‘MOKATINE’ in the earlier mark and ‘MOKATE’ in the contested sign do not have meanings. The differentiating elements of the marks convey different concepts.

Therefore, as the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

Visually, the signs coincide in the letters ‘mokat**e’, which appear in the verbal elements placed in the second positions in both marks. They differ in the stylised typeface and colours of these letters, in the additional letters ‘-in’ of the earlier mark’s verbal element ‘MOKATINE’ and in all the additional verbal and figurative elements of the marks, some of which are considered weak and non-distinctive.

It has to be borne in mind that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details. The mere coincidence in a string of letters in the verbal elements ‘MOKATINE’ of the earlier mark and ‘MOKATE’ of the contested sign will not catch the consumer’s attention, since these elements do not dominate the overall visual impression created by the marks. The marks under comparison also consist of additional verbal and figurative elements that, even though some have reduced impact due to their limited distinctiveness, further visually differentiate the marks from each other.

Although in principle when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on consumers than the figurative component, this cannot be automatically assumed in each case, as the overall impression of the signs has to be assessed on a case-by-case basis and depends on all the relevant circumstances. In the present case, the depiction of a Bedouin is a distinctive and visually eye-catching element in the earlier mark. The particular figurative depiction of that sign and the combination and arrangement of its elements have to be given appropriate significance when the visual impact of the marks is considered.

Considering the distinctive character of the element that the signs have in common and the dominant figurative element of the earlier mark, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the letters ‘mokat**e’. However, the pronunciation differs in the sound of the additional letters ‘-in’ of the earlier mark’s verbal element ‘MOKATINE’, the verbal element ‘CARAMELLA’ of the earlier mark and the verbal elements ‘Caffetteria’ and ‘sweet cookies’ of the contested sign, which are, however, of limited distinctiveness for part of the public. They also differ in their lengths and, most importantly, in their first elements. Generally, consumers tend to focus on the first element of the sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the top position of the sign the one that first catches the attention of the reader.

Considering all the above, the signs are aurally similar to an average degree.

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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical and the marks have some similarities because they have some letters in common, namely ‘mokat**e’ in one of the verbal elements of the signs. However, the signs have additional elements that mitigate the similarities arising from the letters they have in common. In particular, the figurative element of the earlier mark, namely the depiction of a Bedouin, is visually dominant and distinctive and will certainly catch consumers’ attention.

In this case, the visual aspect is more important, as the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Therefore, the considerable visual differences between the signs caused by the figurative element of the earlier mark and the overall figurative depiction of the signs is particularly relevant when assessing the likelihood of confusion between them. The similarities between the signs on account of the letters ‘MOKAT*E’ are secondary within the overall impressions created by the signs.

Bearing in mind all the above, it can be safely excluded that the average consumer, who for the purposes of the assessment of likelihood of confusion is deemed to be reasonably well informed and reasonably observant and circumspect, will not directly confuse the conflicting signs, even considering that the goods under comparison are identical. Furthermore, there is no reason to believe that the average consumer will perceive the marks under comparison as coming from the same undertaking or from economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the verbal elements ‘MOKATE’ and ‘MOKATINE’ are associated with the abovementioned meaning. In this case, both elements are considered weak and their conceptual similarity will not influence the likelihood of confusion.

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

Benelux trade mark registration No 64 985 for the figurative mark

.

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Moreover, the examination of the public in the territory of Benelux was included in the examination of earlier European Union trade mark No 412 197. 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Justyna GBYL

Begoña URIARTE VALIENTE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.