OPPOSITION No B 2 683 681

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Soco CZ s.r.o., V Lipkách 645, 15400 Praha 5, Czech Republic (applicant), represented by Milan Škoda, Nahořanská 308, 549 01 Nové Město nad Metují, Czech Republic (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 683 681 is upheld for all the contested goods.

2.        European Union trade mark application No 14 906 002 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 906 002. The opposition is based on international trade mark registration No 901 970 designating the European Union. 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 30: Filled hard-boiled candy.

The contested goods are the following:

Class 30: Gluten-free bars; Gluten-free bars containing chocolate and/or soya and/or dried fruits.

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 30

The contested gluten-free bars; gluten-free bars containing chocolate and/or soya and/or dried fruits are similar to the opponent’s filled hard-boiled candy. Both the contested goods and the opponent’s goods are sweet snacks. These goods may be produced by the same companies; furthermore, they can be found close to each other in supermarkets, are in competition and target the same public.

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 similar are directed at the public at large.

The degree of attention will vary from average (for the general public that buys cereal bars) to high (for the public with health issues related to celiac disease, which pays special attention to food ingredients).

3. The signs

YUMMI FRUITS
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.

The common element ‘Yummi/y’ is not meaningful in certain territories, for example, in those countries where English is not widely understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a word mark, ‘YUMMI FRUITS’. The sign as a whole has no meaning for the relevant Spanish-speaking public, but the English word ‘FRUITS’ will be understood, due to its similarity to the Spanish word ‘fruta’. The element ‘FRUITS’ of the earlier sign will be associated with ‘fruits or fruits flavours’. Bearing in mind that the relevant goods are filled hard-boiled candy, this element is weak for these goods. The public understands the meaning of this element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign is a figurative sign, composed of the verbal element ‘YUMMY’ in a stylised beige typeface, preceded by a hashtag, against a brown background.

The element ‘YUMMI/Y’, included in both signs, has no meaning for the relevant public and is, therefore, distinctive.

As regards the contested sign, it is composed of two distinctive verbal elements, the word ‘YUMMY’ and a hashtag, and of less distinctive figurative elements of a purely decorative nature (the stylised typeface and brown background). Therefore, the verbal element and the symbol are more distinctive than the figurative elements.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘YUMM’. However, they differ in the last letters, ‘I’/‘Y’ of the most distinctive element of both signs, ‘YUMMY/I’, in the hashtag and in the figurative elements of the contested sign, as described above, as well as in the second verbal element of the earlier sign, ‘FRUITS’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛YUMMI/Y’, present identically in both signs (the pronunciation of the letters ‘I’ and ‘y’ in this word is identical in Spanish). The pronunciation differs in the sound of the letters ‛FRUITS’ of the earlier sign, which have no counterparts in the contested mark. The hashtag will not be pronounced. It should be taken into account that the differing element ‘FRUITS’ is weak in relation to the goods at issue.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘FRUITS’, included in the earlier mark, will be associated with the concept of ‘fruit’ and is, therefore, weak for filled hard-boiled candy, which often has fruit flavours. As explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, as this element is weak and not as important as the other element in the earlier mark, it has a limited conceptual impact.

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 a weak element 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 similar.

The signs are visually similar and aurally similar to a high degree. The distinctive word ‘YUMMI’ of the earlier mark is the sole verbal element of the contested sign; these elements differ only in the letters ‘I’/‘Y’, which are pronounced identically. The additional word ‘FRUITS’ of the earlier mark is weak in relation to the goods at issue and the public will not pay as much attention to this weak element as to the other, more distinctive, element of the mark.

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). 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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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).

In its observations, the applicant argues that it owns a registration containing the word ‘YUMMY’ that coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Furthermore, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include ‘YUMMI/Y’. In support of its argument the applicant refers to some trade mark registrations in several countries in the European Union.

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 ‘YUMMI’. Under these circumstances, the applicant’s claims must be set aside.

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

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 901 970 designating the European Union. 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 applicant 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

Liliya YORDANOVA

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.