OPPOSITION No B 2 580 986

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Kama International Oy, Mannerheimintie 113, 00280 Helsinki, Finland (applicant), represented by Redd Solicitors LLP, 22 Tudor Street, London EC4Y 0AY, United Kingdom (professional representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 580 986 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products; fruit-based snack food; fruit bars; milk based beverages; protein milk; milk protein bars; nuts, prepared; prepared meals, soups, snacks and desserts.

Class 30: Candy; candy bars; cereal bars; cereal based food bars; cereal based snack food; chocolate; chocolate bars; chocolate drink preparations; cocoa-based beverages; coffee-based beverages; cookies; energy bars; high-protein cereal bars; rice based snack food; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; tea-based beverages.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; beverages containing vitamins; fruit beverages and fruit juices; energy drinks; isotonic drinks; sports drinks; whey beverages; Aloe vera drinks, non-alcoholic; isotonic beverages; mineral water [beverages]; non-alcoholic fruit juice beverages; smoothies; waters [beverages].

2.        European Union trade mark application No 14 299 937 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 some of the goods of European Union trade mark application No 14 299 937, namely against all the goods in Classes 5, 29, 30 and 32. The opposition is based on European Union trade mark registration No 7 165 351.The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

In the present case the contested trade mark was published on 16/07/2015.

Earlier trade mark No 7 165 351 was registered on 29/10/2013. Therefore, the request for proof of use is inadmissible.

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 are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 5: Dietetic foods and substances adapted for medical use; dietary supplements for humans; dietary supplemental drinks; food supplements for human use; protein dietary supplements; vitamin drinks; mineral food supplements; vitamin preparations; amino acids for medical purposes.

Class 29: Milk and milk products; fruit-based snack food; fruit bars; milk based beverages; protein milk; milk protein bars; nuts, prepared; prepared meals, soups, snacks and desserts.

Class 30: Candy; candy bars; cereal bars; cereal based food bars; cereal based snack food; chocolate; chocolate bars; chocolate drink preparations; cocoa-based beverages; coffee-based beverages; cookies; energy bars; high-protein cereal bars; rice based snack food; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; tea-based beverages.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; beverages containing vitamins; fruit beverages and fruit juices; energy drinks; isotonic drinks; sports drinks; whey beverages; Aloe vera drinks, non-alcoholic; isotonic beverages; mineral water [beverages]; non-alcoholic fruit juice beverages; smoothies; waters [beverages].

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 5

The contested dietetic foods and substances adapted for medical use; dietary supplements for humans; dietary supplemental drinks; food supplements for human use; protein dietary supplements; vitamin drinks; mineral food supplements; vitamin preparations; amino acids for medical purposes are various dietetic substances and food supplements adapted for medical use or prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is different from the opponent’s meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats in Class 29 and coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in Class 30, which are non-medicated consumer products or ingredients. Furthermore, the opponent’s goods do not include food supplements and are, therefore, different in nature from the contested goods; their method of use is also different. Finally, the conflicting goods are not in competition and are not complementary. Therefore, they are dissimilar.

The contested goods in Class 5 are also dissimilar to the opponent’s goods in Class 32, namely beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Although the opponent’s fruit drinks and fruit juices have a similar nature and method of use to the contested dietary supplemental drinks and vitamin drinks, they have a completely different purpose: the latter are used for medical purposes and the former are not. Therefore, these goods are not in competition, are not complementary, target different relevant publics, are sold through different distribution channels and are produced by different companies.

Contested goods in Class 29

Milk and milk products are identically contained in both lists of goods.

The contested milk based beverages; protein milk; milk protein bars are included in the broad category of the opponent’s milk and milk products. Therefore, they are identical.

The contested nuts, prepared are included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested fruit-based snack food is included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested fruit bars are highly similar to the opponent’s preserved fruits, since the contested goods are fruit-based and have more or less the same nature as the opponent’s goods and are in competition with them. Moreover, these goods target the same relevant public and can be produced by the same companies. Finally, they are sold in supermarkets, although they are normally sold from different sections or shelves.

The contested prepared meals overlap with the opponent’s meat, since prepared meals can be either meats or meat-based. Therefore, they are identical.

The contested soups are similar to a low degree to the opponent’s meat, since soups can be based on meats as an ingredient. These goods can be in competition, they target the same relevant public and they can be produced by the same producers. They are also sold from the same outlet stores (e.g. in supermarkets), although normally from different sections or shelves.

The contested snacks overlap with the opponent’s preserved fruits, since snacks can be various fruits. Therefore, they are identical.

The contested desserts are highly similar to the opponent’s preparations made from ices in Class 30, which are ice-creams and can be consumed as a dessert. These goods have the same nature, purpose and method of use and can be in competition. Moreover, they target the same relevant public and can be produced by the same companies.

Contested goods in Class 30

The contested cocoa-based beverages; coffee-based beverages; tea-based beverages are identically contained in both lists of goods (including synonyms).

The contested chocolate drink preparations are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested cereal bars; cereal based food bars; cereal based snack food; high-protein cereal bars are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested candy; candy bars; chocolate; chocolate bars; cookies; energy bars; rice based snack food; snack bars containing a mixture of grains, nuts and dried fruit [confectionery] are included in the broad category of the opponent’s preparations made from confectionery. Therefore, they are identical.

Contested goods in Class 32

The contested mineral and aerated waters and other non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested beverages containing vitamins; energy drinks; isotonic drinks; sports drinks; whey beverages; Aloe vera drinks, non-alcoholic; isotonic beverages; mineral water [beverages]; waters [beverages] are included in the broad category of the opponent’s mineral and aerated waters and other non-alcoholic drinks. Therefore, they are identical.

The contested fruit beverages and fruit juices; non-alcoholic fruit juice beverages; smoothies are included in the broad category of the opponent’s fruit drinks and fruit juices. Therefore, they are identical.

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 is considered 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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public for which neither of the marks’ verbal elements has a meaning.

Both marks are figurative.

The earlier mark is composed of the words ‘Be Light’ (in a font that resembles handwriting), which are meaningless and consequently distinctive for that part of the public that does not understand English. Between (and slightly below) ‘Be’ and ‘Light’, the mark has a figurative and distinctive depiction of a jumping person with their hands in the air, which may create associations of joy and happiness. For some, the figurative element may be perceived as a combination of a person and the letter ‘X’. The Opposition Division finds it appropriate to focus on the part of the public that sees the element only as figurative and not as an ‘X’, since this is clearly a more plausible scenario, and because a majority of the relevant public will perceive the sign as ‘Be Light’ and a figurative depiction of a person.

The contested sign is composed of the letters ‘*elight’, in a black standard font. The initial element of the sign will be perceived as a ‘D’, depicted as a smiley emoticon. The smiley, which is distinctive, will create associations of something positive and good. As a whole, the sign is likely to be perceived as ‘Delight’, which has no meaning for the non-English-speaking part of the relevant public and is distinctive.

Visually, the verbal elements of the signs coincide in six out of their seven letters, that is, ‘*elight’. They differ in only one letter, since the first letter of the contested sign will be perceived as a ‘D’ (depicted as a smiley) and the first letter of the earlier mark will be perceived as a ‘B’. The figurative element of the earlier mark also creates certain differences between the signs and some space between the earlier mark’s word elements. 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). Therefore, the signs are visually highly similar.

Aurally, both signs will be pronounced in two syllables (‘/be/light/’ and ‘/de/light/’), and the difference in the pronunciation of the initial letters, ‘B’ and ‘D’, is hardly audible. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs’ figurative elements, namely the jumping figure and the smiley, will be associated with similar concepts or associations (i.e. of happiness and something positive), the signs are conceptually similar to a low 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.

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 likelihood 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 covered. 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).

In the present case, the goods are partly identical, partly highly similar and partly similar to a low degree. The signs are visually and aurally highly similar and conceptually similar to a low degree. Moreover, the earlier mark has an average degree of distinctiveness and the degree of attention of the relevant public is deemed to be average. Bearing this in mind, the similarity between the signs is such that it is likely to lead consumers to confuse them, even in relation to the goods found to be similar to a low degree. In this regard, account is 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).

The applicant claims that the opponent’s European Union trade mark registration No 7 165 351 is a ‘re-filing’ of UK trade mark registration No 2 484 705 and German trade mark registration No 30 521 695, which were registered on 03/10/2008 and 21/06/2005, respectively, and in this regard makes reference to 15/11/2011, R 1785/2008-4, PATHFINDER and 13/02/2014, R 1260/2013-2, KABELPLUS, in which the Boards of Appeal found that the opponent had artificially extended the grace period for use of its earlier rights. Bearing this in mind, although the earlier mark was registered on 31/10/2013, which is less than five years from the date of publication of the applicant’s European Union trade mark application, the applicant claims that the opponent’s earlier mark is subject to proof of use.

The Opposition Division cannot address the applicant’s argument that the earlier mark is, in effect, a ‘re-filing’ of the abovementioned UK and German trade mark registrations. These arguments imply that the opponent filed the earlier mark in bad faith, which the Opposition Division cannot address in an opposition proceeding on the basis of Article 8 EUTMR.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part 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.

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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Pedro JURADO MONTEJANO

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.