OPPOSITION No B 1 975 302

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Anna Sophie Steinmeister, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Oy Karl Fazer Ab, Fazerintie 6, 01230 Vantaa, Finland (applicant), represented by Borenius Attorneys Ltd, Eteläesplanadi 2, 00130 Helsinki, Finland (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 975 302 is upheld for all the contested goods.

2.        European Union trade mark application No 10 484 624 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 10 484 624. The opposition is based on, inter alia, European Union trade mark registration No 9 512 609. 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.

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 9 512 609.

1. The goods

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

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and stewed fruit and vegetables; jellies for food; jams, compotes; eggs, milk and milk products; edible oils and fats; broth, broth concentrates, fat-containing mixtures for bread slices, butter, peanut butter, broth concentrates, meat jellies, fruit preserved in alcohol, preparations for making bouillon, fruit jellies, lobsters, not live, yoghurt, cocoa butter, crystallized fruits, potato crisps, potato fritters, cheese, Kephir (milk beverage), coconut butter, coconut, dessicated, soups, croquettes, crustaceans, not live, liver pâté, almonds, ground, margarine, marmalade, milk beverages, milk predominating, whey, nuts, prepared, olives, preserved, pickles, mushrooms, preserved, pollen prepared as foodstuff, raisins, cream, sauerkraut, shellfish, not live, ham, soya beans, bacon, gelatine for food, preparations for making soup, tofu, tomato purée, tomato juice for cooking, truffles, preserved, sausages, charcuterie; antipasti, included in this class, meat, fish, poultry and game products, minced meat and meat preparations, ready meals and partially cooked meals and salads, mostly consisting of meat and/or fish and/or poultry and/or sausage and/or game, ready meals and partially cooked meals and salads, mostly consisting of fruit and/or vegetables, vegetarian sandwich spreads, included in this class, butter milk, fresh cream, curd, milk powder, dietetic foods not for medical purposes based on white of egg, fats, fatty acids, with added vitamins, minerals, trace elements, either individually or in combination, included in this class, legumes, potatoes and prepared potato products, included in this class, cheese products and cheese preparations, coffee whitener, potato dumplings, mashed potatoes, caviar, coconut milk, snacks, included in this class, extruded potato products for consumption, included in this class, potato sticks, dried fruits, dried, roasted, salted and/or spiced hazelnuts, peanuts, macadamia nuts, cashew nuts, pistachio nuts, chips, quark, rösti (Swiss potato dish), sour cream, soya products as meat replacements, included in this class, all the above mentioned in class goods also available as preserves or frozen, as far as this is possible.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee replacement; flours and cereal preparations, bread, pastries, edible ices; honey, golden syrup; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment, flavorings (flavourings), other than essential oils, for beverages, flavourings other than essential oils, flavorings (flavourings), other than essential oils, for cakes, thickening agents for cooking foodstuffs, binding agents for ice cream (edible ices), biscuits, sweetmeats (candy), bread rolls, sandwiches, cornflakes, iced tea, essences for foodstuffs, except etheric essences and essential oils, meat tenderizers, for household purposes, meat pies, meat gravies, spring rolls, pastries, cereals, husked barley, tea-based beverages, condiments, glucose for food, gluten for food, yeast, coffee flavorings (flavourings), coffee-based beverages, cocoa products, cocoa-based beverages, candy for food, capers, potato flour for food; biscuits, ketchup (sauce), cake powder, cakes, cake paste, corn, milled, corn, roasted, corn flour, maltose, malt for human consumption, marzipan, mayonnaise, farinaceous foods, gruel, with a milk base, for food, nutmeg, flour-milling products, muesli, noodles, breadcrumbs, pastries, pies, pancakes, pizzas, popcorn, puddings, popcorn, quiches, ravioli, dressings for salad, sandwiches, leaven, chocolate, chocolate-based beverages, mustard meal, soya flour, soya sauce, sherbets (ices), spaghetti, powders for ice cream, starch for food, sushi, natural sweeteners, tacos, tapioca flour for food, tomato sauces, pasta, tarts, tortillas, glucose for food, waffles, seasonings, aromatic preparations for food, confectionary, rusks, confectionary for decorating Christmas trees; ready meals and partially cooked products and salads, mostly consisting of rice and pasta, baking powder, cereal products, corn snacks, bread for toasting, bread for sandwiches, all croissants and baguettes, with and without fillings, crispbread, hamburgers, vegetarian burgers, hot dogs, rice snacks, produced using extrusion methods, wheat, rice and corn products for food, corn crisps, popcorn, salt sticks, savoury snacks, pretzels; confectionary, pralines, also filled, sugar foam products, chocolate products, chocolate marshmallows, wine and fruit gums, liquorice (confectionery), sweet spreads for bread, insofar as included in this class, sweets and desserts, pudding powder, red fruit jelly, rice pudding, gnocchi, tortellini, macaroni, lasagne, spaetzle, maultaschen (Swabian ravioli), fruit sauces, ready-made sauces, remoulade, pepper, dietic foods not for medical purposes based on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements individually or in combination, included in this class, pot herbs; fruit sauces.

Class 32:        Beer; mineral water (beverages) and aerated mineral water and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for beverages; aperitifs, non-alcoholic, powders for effervescing beverages, pastilles for effervescing beverages, non-alcoholic cocktails, peanut milk (soft drink), essences for making beverages, fruit nectars, non-alcoholic, vegetable juices (beverages), isotonic beverages, lemonades, syrups for lemonade, lithia water, malt beer, milk of almonds (beverage), whey beverages, must, preparations for making liqueurs, sarsparilla (soft drink), seltzer water, soda water, sherbets (beverages), table water, tomato juice (beverage), waters (beverages), preparations for making mineral waters; non-alcoholic honey-based beverages; non-alcoholic wines.

The contested goods 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, artificial coffee; 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.

Contested goods in Class 29

Meat, fish, poultry and game; meat extracts; preserved and dried fruits and vegetables; jams, compotes; eggs, milk and milk products; edible oils and fats are identically contained in both lists of goods, albeit with slightly different wording.

The contested jellies and the opponent’s jellies for food are synonymous; therefore, they are identical.

Preserved fruits and vegetables are foodstuffs treated in a particular way so that they can be kept for a long time without going bad, including by freezing or cooking. Therefore, the contested frozen and cooked fruits and vegetables are included in the broad category of the opponent’s preserved fruits and vegetables. Therefore, they are identical.

Contested goods in Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice are identically contained in both lists of goods (including synonyms), albeit with slightly different wording.

The contested artificial coffee is the same kind of product as the opponent’s coffee replacement. Therefore, they are identical.

The contested treacle includes, as a broader category, the opponent’s golden syrup. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 32

Beers; mineral waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods, albeit with slightly different wording.

The contested aerated waters include, as a broader category, the opponent’s aerated mineral water. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to 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 are directed at the public at large, whose degree of attention, on the whole, is average. Nevertheless, as some of the foodstuffs in question are inexpensive and are purchased on a daily basis (e.g. eggs), the habitual buying behaviour associated with those goods may result in a lower than average degree of attention.

3. The signs

	FAZER REAL
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 earlier mark is a figurative mark consisting of the verbal element ‘real’, written in red bold italic lower case letters, followed by a figurative element in blue made up of two geometric shapes.

The Opposition Division notes that 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 word ‘REAL’ in the earlier mark has a stronger impact than the figurative element.

The contested sign is a word mark consisting of the verbal elements ‘FAZER’ and ‘REAL’. It is important to note that, in the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The coinciding element, ‘REAL’, is meaningful in certain parts of the relevant territory, for example in the English-speaking parts of the territory, where it will be understood by the relevant public as referring to something ‘existing or occurring in the physical world; not imaginary, fictitious, or theoretical; actual’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Contrary to the applicant’s argument, the word ‘REAL’, on its own, which is a vague adjective per se, has no direct connection to any of the relevant goods and is, therefore, distinctive in both signs.

The remaining verbal element of the contested sign, ‘FAZER’, as it has no meaning for the relevant public, is distinctive. In response to the applicant’s argument that this element is the dominant element of the contested sign, the Opposition Division notes that word marks have no dominant elements because, by definition, they are in a standard typeface. Therefore, this argument of the applicant must be set aside.

The applicant argues 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. However, the Opposition Division considers that the word ‘REAL’ of the contested sign will not go unnoticed by the relevant public. Indeed, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T-286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T-169/02, Negra modelo, EU:T:2005:46; 08/03/2005, T-32/03, Jello Schuhpark, EU:T:2005:82; 23/10/2002, T-104/01, Fifties, EU:T:2002:262), and the coinciding element, ‘REAL’, clearly retains an independent distinctive role in the contested mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).

Visually, the signs coincide in the sequence of letters ‘REAL’. They differ in the additional verbal element ‘FAZER’ of the contested sign and in the figurative elements of the earlier mark, although the latter have less impact on the public than the verbal elements, to which the consumers will pay more attention. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REAL’, present identically in both signs. The pronunciation differs in the sound of the letters ‛FAZER’ in the contested sign, which have no counterparts in the earlier mark. The signs have different rhythms due to their different lengths. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs convey the meaning of the word ‘REAL’, which is inherently distinctive in relation to the goods in dispute. The additional word in the contested sign, ‘FAZER’, has no meaning for the relevant public. The additional figurative element in the earlier mark does not introduce any concept capable of altering the conceptual perception of the earlier sign. Therefore, the signs are conceptually highly 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.

According to the opponent, the earlier mark 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

The goods in dispute are identical and target the public at large, whose degree of attention may vary from low to average. Furthermore, the earlier mark has an average degree of distinctiveness.

The contested sign and the earlier mark have the word ‘REAL’ in common. However, the signs differ in the remaining word element of the contested sign, namely ‘FAZER’. Therefore, as explained in section c), the signs are visually and aurally similar to an average degree and conceptually highly similar.

The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical goods come from the same undertaking or at least economically linked undertakings.

The applicant refers to previous decisions of the Office and previous national decisions to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Furthermore, decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). Moreover, the circumstances in the present case and those in the previous decisions differ. Indeed, in comparison with the present case, the marks in dispute in the cited cases covered different Classes of goods and services, the goods and services in dispute were found to be dissimilar and/or the relevant territory was different (25/03/2010, B 1 422 783; 30/09/2009, B 1 313 172; 17/02/2016, 26 W (pat) 37/13 Bundespatentgericht, REAL/POLLO REAL; 16/11/2010, 257 Oficiul de Stat pentru Inventii si Marci, REAL/FUTUREAL).

Considering all the above and taking into account 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), there is a likelihood of confusion in relation to the identical goods on the part of the 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 512 609. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 9 512 609 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition is directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Katarzyna ZANIECKA

Alexandra APOSTOLAKIS

Martina GALLE

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.