OPPOSITION No B 2 510 306

Matric Italgross AB, Sjöflygsvägen 38, 183 62 Täby, Sweden (opponent), represented by Kransell & Wennborg KB, Styrmansgatan 2, 114 54 Stockholm, Sweden (professional representative)

a g a i n s t

Pågen Trademark AB, Box 8143, 200 41 Malmö, Sweden (applicant), represented by Advokatfirman Lindahl KB, Studentgatan 6, 211 38 Malmö, Sweden (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 510 306 is partially upheld, namely for the following contested goods:

Class 30:        Rusk flour; Bread, cookies, rusks, biscuits, cakes, pastry; Honey, treacle; Yeast, baking-powder.

2.        European Union trade mark application No 13 452 826 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 13 452 826. The opposition is based on European Union trade mark registration No 13 055 462. 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 are the following:

Class 29:        Meat, fish, poultry and game, except cured meat; Meat extracts; Canned fruits; Vegetable preserves; Frozen vegetables; Dried fruit products; Vegetables, dried; Prepared vegetable products; Preserved fish; Olives, preserved; Jellies, jams, compotes, fruit and vegetable spreads; Eggs; Cheese; Edible oils and fats.

Class 30:        Teas and substitutes therefore; Rice; Cereals; Flour; Pasta; Vinegar; Spices, Sauces; Patisserie; Confectionery and desserts.

Class 31:        Agricultural products not included in other classes; Fresh fruits, nuts, vegetables and herbs.

The applicant limited the list of goods of its trade mark application on 17/04/2015 and 30/10/2015. The resulting contested goods are the following:

Class 30:        Rusk flour; Bread, cookies, rusks, biscuits, cakes, pastry; Sugar, honey, treacle; Yeast, baking-powder.

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.

Pastry is identically contained in both lists of goods (including synonyms).

The contested rusk flour is included in the opponent’s flour and is, therefore, identical.

The contested cookies, biscuits, cakes are included in the opponent’s patisserie and are also identical.

The contested bread and the opponent’s patisserie may have the same producers and are usually available in the same outlets. They are intended for the same public. Therefore these goods are similar. The Opposition Division takes note of the applicant’s arguments in support of a conclusion that the contested bread is dissimilar. The applicant argues that bread is sold in separate shelves in Sweden and submits photographs from major supermarket chains in Sweden in support of its contentions. However, the relevant territory in the present case is not limited to Sweden. Furthermore, in the major part of the European Union, bread is not sold only in supermarkets but also in bakeries from which pastry is also usually available. The applicant’s argument is therefore to be set aside.

 

According to the Oxford English Dictionary as consulted online at www.oed.com on 19/04/2017, the term ‘rusk’ refers to ‘a. originally: bread or cake broken into small pieces and hardened by rebaking, esp. for use as ship’s stores. In later use: plain or sweet bread which has been baked twice until it is dry and crisp. b. A piece of plain or sweet bread which has been baked twice to form a light biscuit.’ Therefore, the contested rusk, if considered to be a biscuit, can be deemed to be included in, hence identical to, the opponent’s patisserie. It can also be considered similar to the opponent’s patisserie based on the same reasoning used for comparing bread with patisserie in the previous paragraph.

The contested yeast, baking powder are similar to the opponent’s flour . These goods often have the same producers, are found in the same sections in shops and are intended for the same public.

The contested honey, treacle are similar to the opponent’s jams in Class 29 because these goods are intended for the same purpose (as spreads) and have the same method of use and distribution channels. In addition, they target the same public and are in competition with each other.

The contested sugar is not similar to any of the opponent’s goods in Classes 29, 30 and 31. In particular, it is not similar to the opponent’s confectionery and desserts in Class 30 or jellies, jams, compotes, fruit and vegetable spreads in Class 29, notwithstanding the fact that such goods may include sugar as an ingredient. In this respect, it is taken into account that the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). Furthermore, when the ingredient can be considered as being the main ingredient of the prepared dish, a similarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use. In the present case, sugar can be considered to be the main ingredient of, for instance, confectionery or desserts. However, these goods do not have the same producers and are not available in the same sections in shops, their natures and purposes differ (being prepared foodstuffs on the one hand, that is actual food, versus raw ingredient on the other hand, essentially used for sweetening). The only coincidence is in the public, which is not considered of sufficient weight to tip the balance for similarity, in view of the mentioned differences. The contested sugar is, therefore, dissimilar to the opponent’s confectionery and desserts, jellies, jams, compotes, fruit and vegetable spreads. The link with the opponent’s other goods in Classes 29, 30 and 31 is even more distant, since it lies in the best case scenario in the fact that the these goods are foodstuffs (either processed or unprocessed) for the general public, which is not enough for any degree of similarity to be established. The Opposition Division notes that the opponent argues that the contested sugar is similar to flour, edible oils and fats, spices covered by the earlier mark because these goods are used together as ingredients in, for instance, bread and cakes. However, the mere fact that these goods are used as ingredients, in combination with each other, is neither an indication of complementarity (which is defined as the fact the goods are indispensable or essential to each other) not more generally a factor of similarity. Therefore, the contested sugar is dissimilar to all of the opponent’s 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 or similar are directed at the public at large.

 

The degree of attention is considered to be average.

3. The signs

MATILDA	MATILDA’S
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).

Visually and aurally, the signs coincide in the verbal element ‘MATILDA’ and only differ in the fact that the element is followed by an apostrophe and the letter (sound) ‘S’ in the contested sign (bearing in mind that the apostrophe is not pronounced). The difference has a very low impact given its reduced extent and its position at the end of the sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, the verbal element ‘MATILDA’ will be perceived as a female given name by virtually the entire relevant public either because the name exists as such or because a close variant exists. The final apostrophe and ‘S’ in the contested sign will not prevent the public from perceiving the concept of the name in the contested sign. As regards the English-speaking public, the addition in the contested sign introduces a slight difference on the conceptual level to the extent that it indicates a possessive form.

In view of the above, the signs are conceptually similar to a high degree, or even identical for a large part of the public.

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.

The applicant argues that the earlier mark has a low distinctive character because it is a common female name. However, the mere fact that the name ‘Matilda’ may be common does not impair its distinctive character. What matters is that the name in question does not describe, or allude to, the goods or any of their characteristics.

Since 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, its distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

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).

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).

In the present case, as regards the contested identical and similar goods, there is a likelihood of confusion considering the high degree of  similarity between the signs on the visual, aural and conceptual levels (even identity from the conceptual point of view as regards an important part of the public), and the average distinctive character of the earlier mark.

It follows from the above that the opposition is partly well-founded on the basis of the opponent’s European Union trade mark and that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition is not successful insofar as the dissimilar goods, namely sugar, are concerned.

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

Boyana NAYDENOVA

Catherine MEDINA

Adriana VAN ROODEN

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.