OPPOSITION No B 2 766 858

Lotus Bakeries (Naamloze Vennootschap), Gentstraat 1, 9971 Lembeke, Belgium (opponent), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Bruxelles / Brussel, Belgium (professional representative)

a g a i n s t

Henan Lotus Health Industry Limited By Share Ltd, No.18 Lianhua Boulevard, Xiangcheng City, Henan, People’s Republic of China (applicant), represented by Casas Asin S.L., Av. San Francisco Javier 9, Edificio Sevilla 2, 8ª Planta, Oficina 7

41018 Sevilla, Spain  (professional representative).

On 16/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 858 is partially upheld, namely for the following contested goods:

Class 29:         Milk; milk beverages, milk predominating; condensed milk; Jams; marmalade; apple purée; cranberry sauce [compote].

2.        European Union trade mark application No 15 489 107 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 15 489 107. The opposition is based, inter alia, on the following earlier marks:

-international trade mark registration No 1 203 431 for the word mark ‘LOTUS‘ designating the EU;

-international trade mark registration No 1 204 205 for the figurative mark  designating the EU;

– European Union trade mark registration No 9 161 514 for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR for all marks.

SUBSTANTIATION

International trade mark registration No 1 203 431 ‘LOTUS‘ designating the EU and

International trade mark registration No 1 204 205  designating the EU.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international registrations on which the opposition is based.

On 22/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/01/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier trade international registrations.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier international registrations.

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 9 161 514.

1. The goods

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

Class 30:         Pastry, bakery goods, biscuits and confectionery, factory-baked pastries, confectionery, gingerbread, "speculoos" (Belgian ginger biscuits) (caramelised biscuits), waffles, cookies, cakes; chocolate paste or "speculoos" (Belgian ginger biscuits); desserts based on "speculoos" (Belgian ginger biscuits); puddings; mousses (desserts) not included in other classes; edible ices.

The contested goods are the following:

Class 29:         Sesame oil; edible fats; rape oil for food; colza oil for food; maize oil; edible oils; olive oil for food; linseed oil for culinary purposes; sunflower oil for food; peanut butter; jams; marmalade; apple purée; cranberry sauce [compote]; tahini [sesame seed paste]; cheese; milk; milk beverages, milk predominating; condensed milk.

Class 30:         Coffee flavourings; coffee; vinegar; beer vinegar; soya sauce; spices; meal; glucose for culinary purposes; chutneys [condiments]; sauces [condiments]; relish [condiment].

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 29

Milk; milk beverages, milk predominating; condensed milk are similar to a high degree to the opponent’s edible ices. Both are dairy products and milk is the main ingredient of ice cream, i.e. of edible ices. Moreover, they can coincide in producers, end users and distribution channels to the extent that some dairies produce ice creams with milk as the main ingredient, endorsing the decision of 09/01/2017, R 476/2016-2, Healthie (fig.) / HEALTH-iX (fig.)

Jams; marmalade; apple purée; cranberry sauce [compote] are various types preserved fruit, consisting of thick sweet food product made by cooking fruit with sugar. They are similar to a low degree to the opponent’s confectionery as they can coincide in producer, end user and distribution channels.

Sesame oil; edible fats; rape oil for food; colza oil for food; maize oil; edible oils; olive oil for food; linseed oil for culinary purposes; sunflower oil for food are edible oils and fats, which have a different nature, purpose and methods of use compared to all the opponent’s goods, which are mainly pastries, desserts, confectionary and ice creams. The goods are not complementary nor have the same manufacturers. Whilst they are all broadly speaking foodstuffs, as are the opponent’s goods in Class 30, this is not enough for a finding of similarity. The mere fact that they both have the aim of satisfying human nutritional needs is a very general purpose; considering that these goods cannot be said to meet the same or similar nutritional needs, the purpose is not the same. Although the goods under comparison can be used as ingredients in the process of preparing various dishes, the mere fact that they are needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar The goods are dissimilar.

Tahini [sesame seed paste] is a paste made from ground, hulled sesame seeds used in North African, Greek, Turkish, and Middle Eastern cuisine. Tahini is served as a dip. Peanut butter is a food paste made primarily from ground dry roasted peanut and mainly used as a sandwich spread, but also used as an ingredient in other foods. They have a different nature, purpose and methods of use compared to all the opponent’s goods, which are mainly pastries, desserts, confectionary and ice creams. The goods are not complementary nor have the same manufacturers. The contested Cheese is a solid food made of milk. The fact that it may contain milk as a main ingredient is not enough to find similarity with the opponent’s edible ices, because, they do not have the same producers, distributional channels and target the same consumers. Furthermore, they are not complementary neither in competition. Cheese is also dissimilar to all other opponent’s goods, as they have a different nature, purpose and methods of use. The goods are dissimilar.

Contested goods in Class 30

Coffee flavourings; coffee; vinegar; beer vinegar; soya sauce; spices; meal; glucose for culinary purposes; chutneys [condiments]; sauces [condiments]; relish [condiment] have a different nature, purpose and methods of use compared to all the opponent’s goods, which are mainly pastries, desserts, confectionary and ice creams. The goods are not complementary nor have the same manufacturers. Whilst they are all broadly speaking foodstuffs, as are the opponent’s goods in Class 30, this is not enough for a finding of similarity. The mere fact that they both have the aim of satisfying human nutritional needs is a very general purpose; considering that these goods cannot be said to meet the same or similar nutritional needs, the purpose is not the same. Although the goods under comparison can be used as ingredients in the process of preparing various dishes, the mere fact that they are needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar. The goods are dissimilar.

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 to varying degrees are basic food stuff and 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 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 element VILLA is meaningful in certain territories, for example, in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The element VILLA of the contested sign will be understood as referring to a ‘small town, borough, municipality, villa as a house’ (www.rae.es) by the relevant public, which together with the following name indicate the origin of the goods. Bearing in mind that the relevant goods, found similar to a varying degrees, this element is of less distinctive character for these goods.

The element LOTUS of the marks has no meaning for the relevant public and is, therefore, distinctive.

In the earlier mark the remaining device elements are purely decorative and have no specific meaning, although it can not be excluded that some consumers might grasp the figurative device placed underneath of the verbal element as a highly stylised depiction of flower and therefore, will see it as such. The element LOTUS, due to its size and position is the dominant element.

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

It is considered that, when a sign consists of both word and figurative components, as is the case with the marks, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the elements of stylisation. Furthermore, the consumer pays more attention to the beginning of the marks, as they read from left to right, and the coincidence in the present case in the first element of the contested mark is therefore significant.

Visually and aurally, the signs coincide in the word element LOTUS. It is the only word in the earlier mark and the first word in the contested mark where consumers pay more attention. However, they differ in the word VILLA, found to have less distinctive character and placed on a second position, and in a visual level, the signs also differ in the remaining device elements and stylisation and colours.

Therefore, the signs are similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element VILLA of the contested sign, as explained above, found to have less distinctive character, the other sign has no meaning in that territory. Since one of the signs (LOTUS) will not be associated with any meaning, the signs are not conceptually similar.

In the highly unlikely event that part of the public grasp the meaning of the flower in the earlier mark, the signs have different meanings and 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 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

The goods have been found partially similar to varying degrees and partially dissimilar. The visual, aural and conceptual aspects have been examined.

The marks have visual and aural similarities in respect of the element LOTUS, present in the contested sign in the first position. Notwithstanding the visual differences in the presentation of some elements, it is considered that they could be pronounced in a same way by some Spanish speakers, omitting the element VILLA of the contested sign as, this has been considered to have less distinctiveness for the relevant public. As the goods are everyday goods, the attention of the public is average.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

In the present case, the established similarities between the signs are sufficient to cause at least part of the public in the relevant territory to believe that part of the conflicting goods, which have been found similar to varying degrees, come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 similar to varying degrees, due to the closeness of the marks, 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.

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

European Union trade mark registration No 2 545 812 ‘LOTUS’ for goods in Class 30;

European Union trade mark registration No 2 284 016  for goods in Class 30.

The other earlier rights invoked by the opponent cover goods Class 30 which are of narrower scope and also different (EUTM No 2 545 812) to those applied for in the contested trade mark. The EUTM No 2 284 016 is identical to the one which has been compared.  Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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. 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

Birgit FILTENBORG

Erkki MÜNTER

Loreto URRACA LUQUE

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.