OPPOSITION No B 2 716 572

Pepsico, Inc., 700 Anderson Hill Road, Purchase New York 10577-1444, United States of America (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Kellogg Company, One Kellogg Square P.O. Box 3599, Battle Creek, Michigan 49016-3599, United States of America (applicant), represented by Haseltine Lake LLP, Redcliff Quay 120 Redcliff Street, Bristol  BS1 6HU, United Kingdom (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 716 572 is upheld for all the contested goods.

2.        European Union trade mark application No 15 134 406 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 15 134 406. The opposition is based on, inter alia, Latvian trade mark registration No 63 942. 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 Latvian trade mark registration No 63 942.

1. The goods

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

Class 30:        Snack foods based on corn.

The contested goods are the following:

Class 29:        Potato-based snack foods; vegetable-based snack foods; nut-based snack foods; snack foods in this class; not including fruit snacks or fruit-based snacks.

Class 30:        Breakfast cereals; preparations made from cereals; cereal bars; and other cereal-derived food products to be used as a breakfast food, snack food or ingredient for making food; none of the aforegoing being in the nature of fruit snacks or fruit-based snacks.

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.

Contested goods in Class 29

The contested potato-based snack foods; vegetable-based snack foods; nut-based snack foods; snack foods in this class; not including fruit snacks or fruit-based snacks have a similar nature (being snack foods, based however on different main ingredients) as the opponent’s snack foods based on corn. The goods in comparison share the same purpose and method of use, and are in competition. They, furthermore, coincide in producer, end user and distribution channels. It follows that these are similar to a high degree.  

Contested goods in Class 30

It is noted that cereal or breakfast cereal is a food made from grain, which is usually mixed with milk and eaten for breakfast. Furthermore, cereals are plants such as wheat, corn, or rice that produce grain. The contested breakfast cereals; other cereal-derived food products to be used as a breakfast food, snack food or ingredient for making food; none of the aforegoing being in the nature of fruit snacks or fruit-based snacks overlap with the opponent’s snack foods based on corn, as far as the goods in comparison could be in the form of snack food products, based on corn, used for breakfast. The goods are, therefore, considered to be identical.  

The contested preparations made from cereals; none of the aforegoing being in the nature of fruit snacks or fruit-based snacks include, as a broader category the opponent’s snack foods based on corn. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cereal bars; none of the aforegoing being in the nature of fruit snacks or fruit-based snacks overlap with the opponent´s snack foods based on corn, as far as they both are corn cereal bars, used as snack food. Therefore, the goods are considered identical.  

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 highly similar are directed at the public at large. The goods can, furthermore, be related to habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

Therefore, the degree of attention when purchasing the relevant goods will vary from below average to average depending on the price of the goods and the frequency of their purchase.

3. The signs

  CHEETOS FOOTBALL                                 FOOTBOWL

Earlier trade mark	Contested sign

The relevant territory is Latvia.

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 earlier mark is a word mark consisting of the elements ‘CHEETOS’ and ‘FOOTBALL’. The element ‘CHEETOS’ has no meaning for the relevant public and is, therefore, distinctive. The element ‘FOOTBALL’ will be understood in the meaning of the English word ‘football’, as in the game played by two teams using a round ball, due to its similarity with the equivalent Latvian word, namely ‘futbols’. As the element ‘FOOTBALL’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a word mark consisting of the single element ‘FOOTBOWL’. It is likely that a significant part of the public will perceive the sole element in the meaning of ‘football’ due to its similarity with the equivalent Latvian word, as already referred to above. As the element ‘FOOTBOWL’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Visually, the signs coincide in the sequence of letters ‘FOOTB**L’ of the element ‘FOOTBALL’ of the earlier mark and of the sole element ‘FOOTBOWL’ of the contested sign. The signs differ in the element ‘CHEETOS’ of the earlier mark and in the letters ‘A-L’ of the element ‘FOOTB**L’ of the earlier mark against ‘O-W’ of the sole element of the contested sign.

As the shared sequence of letters is placed in the distinctive element ‘FOOTBALL’ of the earlier mark and the sole and distinctive element of the contested sign, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘FOOTB**L’, present identically in both signs. However, due to the specifics of the language in the relevant territory the element ‘FOOTBALL’ of the earlier sign will be pronounced highly similar to the sole element ‘FOOTBOWL’ of the contested sign. The pronunciation of the signs differs in the sound of the element ‘CHEETOS’ of the earlier mark, which has no counterpart in the contested sign.

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 elements ‘FOOTBALL’ of the earlier mark and ‘FOOTBOWL’ of the contested sign, both referring to the concept of ‘football’. It follows that 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.

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

As has been concluded above, the contested goods were found partly identical and partly similar to a high degree to the goods of the earlier mark. The degree of attention will vary from below average to average when choosing the relevant goods.

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).

Furthermore, 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 covered are from the same or economically linked undertakings.

As analysed above, the earlier mark is considered to enjoy a normal degree of distinctiveness for the relevant public. It has also been established that the signs are visually and aurally similar to an average degree and conceptually highly similar due to the coincidences between the distinctive element ‘FOOTBALL’, which is clearly separated and perceptible in the earlier mark and the sole element ‘FOOTBOWL’ of the contested sign.

In the light of the foregoing, the degree of similarity between the marks is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods found to be identical and similar to a high degree originate from the same undertaking or economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s Latvian trade mark registration No 63 942. It follows that the contested trade mark must be rejected for all the contested goods.

As the opponent’s earlier Latvian trade mark registration No 63 942 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

André Gerd Günther BOSSE

Irina SOTIROVA

Natascha GALPERIN

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.