OPPOSITION No B 2 622 861

Booost Trading Limited, 176 Upper Richmond Road, London Wandsworth SW15 2SH, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang, Cannon Place 78 Cannon St. London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Child Mind Limited, 21 Arlington Street, London SW1A 1RN, United Kingdom (applicant), represented by Keystone Law, 48 Chancery Lane London,  London City of WC2A 1JF, United Kingdom (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 622 861 is upheld for all the contested goods and services, namely:

Class 30:        Snack foods, including wheat, corn and rice based snack foods; flour, cereals, rice, pasta, noodles and preparations made from or containing flour, pasta, cereals, rice, pasta and noodles; pretzels, peanut-butter filled pretzels; popcorn, including caramel popcorn and cheese flavoured popcorn; crackers including cheese flavoured crackers; rice crackers; snack mix consisting primarily of pretzels, popped popcorn, caramel popcorn, cheese flavoured popped popcorn, cheese flavoured crackers and/or rice crackers; non medicated confectionery and candies.

Class 31:        Fresh fruit and vegetables; fresh nuts.

Class 32:        Fruit juices, fruit drinks, mineral waters, soft drinks.

Class 43:        Services relating to the provision of food and drink; bar services; restaurant services; cafeteria services.

2.        European Union trade mark application No 14 268 759 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 268 759 namely against all the goods and services in Classes 30, 31, 32 and 41. The opposition is based on, inter alia, European Union trade mark registration No 10 895 233 and European Union trade mark registration No 13 781 414. The opponent invoked Article 8(1)(b) and, as regards European Union trade mark registration No 10 895 233, also Article 8(5) 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 10 895 233 and European Union trade mark registration No 13 781 414.

1. The goods and services

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

European Union trade mark registration No 10 895 233 

Class 29:        Fruit puree; apple purée; drinks made from dairy products.

Class 32:        Fruit beverages and fruit juices; fruit juice concentrates; concentrated fruit juice; non-alcoholic fruit juice beverages; beverages consisting principally of fruit juices; smoothies; smoothies [non-alcoholic fruit beverages].

European Union trade mark registration No 13 781 414

Class 5:        Baby and infant foods and drinks.

Class 29:        Preserved, dried, cooked, frozen and baked fruits and vegetables; fruit and vegetable based snack foods; fruit puree and pulp; jellies, milkshakes, yoghurt, snacks of yoghurt, yoghurt based drinks; snack foods.

Class 30:        Fruit confectionery, edible ices; frozen confectionery; ice cream.

Class 31:        Fresh fruits and vegetables; malts; grains; seeds; nuts.

The contested goods and services are the following:

Class 30:        Snack foods, including wheat, corn and rice based snack foods; flour, cereals, rice, pasta, noodles and preparations made from or containing flour, pasta, cereals, rice, pasta and noodles; pretzels, peanut-butter filled pretzels; popcorn, including caramel popcorn and cheese flavoured popcorn; crackers including cheese flavoured crackers; rice crackers; snack mix consisting primarily of pretzels, popped popcorn, caramel popcorn, cheese flavoured popped popcorn, cheese flavoured crackers and/or rice crackers; non medicated confectionery and candies.

Class 31:        Fresh fruit and vegetables; fresh nuts.

Class 32:        Fruit juices, fruit drinks, mineral waters, soft drinks.

Class 43:        Services relating to the provision of food and drink; bar services; restaurant services; cafeteria services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 non medicated confectionery and candies overlap with the opponent’s fruit confectionery in Class 30 covered by European Union trade mark registration No 13 781 414 to the extent that non medicated candies may be fuit-based. Therefore, they are identical.

The contested snack foods, including wheat, corn and rice based snack foods; pretzels, peanut-butter filled pretzels; popcorn, including caramel popcorn and cheese flavoured popcorn; crackers including cheese flavoured crackers; rice crackers; snack mix consisting primarily of pretzels, popped popcorn, caramel popcorn, cheese flavoured popped popcorn, cheese flavoured crackers and/or rice crackers are all edible foodstuff that can be eaten between meals. The same is valid for the opponent’s snack foods in Class 29 covered by European Union trade mark registration No 13 781 414. Not only these goods share the same nature, origin, relevant public and distribution channels, but they can also be in competition among each other. Thus, they must be considered highly similar.

The contested pasta, noodles; preparations made from or containing flour, pasta, cereals, rice, pasta and noodles are related to the opponent’s frozen confectionery. It is true that these goods, although being all foodstuff, clearly displays a difference in their main purpose, being the first mainly main or first dishes and the second sweet foodstuff. However, these goods can have the same origin, relevant public and distribution channels. These goods are therefore deemed to be similar to a low degree.

The contested flour, cereals, rice are similar to a low degree to the opponent’s grains in Class 31. Although the opponent’s goods are raw materials and the contested goods are semi-finished products, they can have the same public, for example food manufacturers, who may use either flour or grains in the preparation of their particular goods. Therefore, the public concerned might think that the goods in question came from the same undertaking. Moreover, they may coincide in distribution channels.

Contested goods in Class 31

The contested fresh fruit and vegetables are also covered by the earlier European Union trade mark registration No 13 781 414. Thus, these goods are identical.

The contested fresh nuts are included in the broad category of the opponent’s nuts covered by the earlier European Union trade mark registration No 13 781 414. Therefore, they are identical.

Contested goods in Class 32

The contested fruit juices, fruit drinks are identically contained in both the contested mark’s list of goods and the list of goods of European Union trade mark registration No 10 895 233 (including synonyms).

The contested mineral waters, soft drinks are similar to the opponent’s fruit juices covered by European Union trade mark registration No 10 895 233 because they have the same nature (non-alcoholic drinks), purpose and method of use, they are in competition and they can have the same distribution channels and relevant consumers.

Contested services in Class 43

The contested services relating to the provision of food and drink; bar services; restaurant services; cafeteria services are are related to the provision of food and drinks to others. Notwithstanding their different nature (goods vs. services), they are closely related to the earlier goods in Class 32. There is evident complementarity between fruit juices in Class 32 of the earlier European Union trade mark registration No 10 895 233 and the contested services which involve the provision of the earlier goods. Moreover, the practice exists nowadays for producers of goods in Class 32 to offer the applicant’s services under the same brand and/or to offer their drinks in such establishments. To that end, the relevant public, which is the same for the competing goods and services, would expect that in some cases the commercial origin of said goods and services also coincide. In view of these factors, the contested services are similar to a low degree to the earlier mark’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 and services found to be identical or similar various degrees are directed at the public at large. The level of attention is expected to be average.

3. The signs

PIP (EUTM 10 895 233) PIP ORGANIC (EUTM 13 781 414)	PIP'S ISLAND
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 elements ‘PIP’ and ‘PIP’S ISLAND’ 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, for instance, the Italian-speaking part of the public.

All the marks are word marks. The earlier marks consist of the word ‘PIP’ and of the words ‘PIP ORGANIC’ while the contested mark consists of the words ‘PIP’S ISLAND’.

The marks have no meaning per se in Italian. However, it cannot be excluded that at least a part of the Italian-speaking consumers will understand the element ‘ORGANIC’ of the earlier European Union trade mark registration No 13 781 414 as the equivalent of the Italian word ‘organico’ in the sense it has in English, that is to say of, relating to, or grown with the use of fertilizers or pesticides deriving from animal or vegetable matter, rather than from chemicals (for the definition in Italian, see Grande Dizionario Italiano Hoepli, Online Edition- http://www.grandidizionari.it/Dizionario_Italiano/parola/O/organico.aspx?query=organico and for the definition in English, see Collins Dictionary, Online Edition – https://www.collinsdictionary.com/dictionary/english/organic).

As seen above the elements ‘PIP’ and ‘PIP’S ISLAND’ have no meaning for the relevant public and are, therefore, distinctive.

The element ‘ORGANIC’ of the earlier European Union trade mark registration No 13 781 414 evokes the idea of something grown naturally. Bearing in mind that the relevant goods and services are or are related to foodstuff and drinks, this element is weak for all of them.

Account must be taken on the fact that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters/sounds ‘PIP’. However, they differ in the additional elements – the apostrophe and the letters/sounds ‘S ISLAND’- which follows the word ‘PIP’ in the contested sign and in the additional weak element ‘ORGANIC’ of the earlier European Union trade mark registration No 13 781 414. Also, the first parts of the conflicting marks are identical. As seen above, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Therefore, the commonalities in the beginning of the signs will have more impact in the present comparison. In view of the foregoing, the signs are visually and aurally similar to an average degree

Conceptually, as concerns the earlier European Union trade mark registration No   10 895 233 and the contested sign, neither of them has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, the word ‘ORGANIC’ of the European Union trade mark registration No 13 781 414 might be understood by at least a part of the consumers. In this case, despite the weak character and lesser relevance of such term, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 marks

The distinctiveness of the earlier marks 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 European Union trade mark registration No 13 781 414 is particularly distinctive by virtue of intensive use or reputation.

On the contrary, according to the opponent, the earlier European Union trade mark registration No 10 895 233 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services 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, for a part of the public, of a weak element in the European Union trade mark registration No 13 781 414 as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services covered by the trade marks in dispute have been found partly identical, partly similar to various degrees and partly dissimilar. These goods and services are directed at the public at large. The degree of attention is deemed to be average.

The earlier marks ‘PIP’ and ‘PIP ORGANIC’ on one hand and the contested mark ‘PIP’S ISLAND’ on the other display an average degree of similarity both form a visual and aural point of view. In fact, the earlier mark ‘PIP’ is fully included as the first element of the contested sign while, as regards the earlier mark ‘PIP ORGANIC’, it is included is the most distinctive element ‘PIP’, being the word ‘ORGANIC’ a weak element which for this reason will not catch the consumer’s attention. The coinciding element plays an independent distinctive role in both signs.

Furthermore, as already pointed out in section c) of the present decision, account must be taken on the fact that in word signs the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Also, it is crucial not to obliterate 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).

Considering all the above, there is a likelihood of confusion on Italian-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 European Union trade mark registration No 10 895 233 and European Union trade mark registration No 13 781 414. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registration No 10 895 233 , there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 10 895 233 and European Union trade mark registration No 13 781 414 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

The Opposition Division

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.