OPPOSITION No B 2 105 826

Dal Bello Società Importatrice Frutta Esotica S.R.L., Passaggio Corner Piscopia, 10, 35137 Padova, Italy (opponent), represented by Donà Viscardini Studio Legale, Via Altinate, 144, 35121 Padova, Italy (professional representative)

a g a i n s t

Van Ingen Group BV, Van Heemstraweg 103, 6659 KE Wamel, Netherlands (applicant), represented by T. Van den Bout, Javastraat 12, 2585 AN The Hague, Netherlands (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 105 826 is upheld for all the contested goods, namely 

Class 29: Preserved, dried and cooked fruits and vegetables, jellies, jams, the aforesaid goods made from apples.

Class 31: Fresh fruits, in particular apples.

2.        European Union trade mark application No 10 617 272 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 617 272, namely against all the goods in Classes 29 and 31. The opposition is based on, inter alia, Italian trade mark registration No 1 091 659. 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 Italian trade mark registration No 1 091 659.

1. The goods

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

Class 29: Preserved, dried and cooked fruits and vegetables; jellies, jams, compotes.

Class 31: Agricultural, horticultural and forestry products; fresh fruits and vegetables.

The contested goods are the following:

Class 29: Preserved, dried and cooked fruits and vegetables, jellies, jams, the aforesaid goods made from apples.

Class 31: Fresh fruits, in particular apples.

The applicant claims that the goods in question cannot be considered similar: according to the applicant, its goods cover apples that only grow in northern hemisphere, and the products made of this particular type of apples, and therefore cannot be considered similar to the opponents goods made of tropical fruit. The Opposition Division notes, however, that the specification of the goods of the earlier mark is not limited to tropical fruit only and the applicant did not request that the opponent prove genuine use of its earlier Italian trade mark registration No 1 091 659 pursuant to Article 42(2) EUTMR. In that case, goods must be compared as they appear in the specifications of the conflicting marks, and not, as the applicant claims, by reference to their alleged actual or intended use. Therefore, the applicant’s statements concerning the alleged lack of similarity between the goods traded by the parties must be dismissed.

Contested goods in Class 29

The contested preserved, dried and cooked fruits and vegetables, jellies, jams, the aforesaid goods made from apples are included in the broad category of the opponent’s preserved, dried and cooked fruits and vegetables; jellies, jams, compotes. Therefore, they are identical.

Contested goods in Class 31

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods 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). Thus, the contested fresh fruits, in particular apples are identical to the opponent’s fresh fruits.

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. The degree of attention will be average as the goods at hand are rather cheap goods for daily consumption.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 figurative mark consisting of the word ‘LOLA’ (which by Italian consumers will be understood as a female name) appearing in an oval-shaped figure. The word element occupies the central position within the sign and is clearly the most distinctive element of the earlier sign as it does not have any meaning that could be considered descriptive, allusive or otherwise weak for the relevant goods. The figurative element will be perceived as having a purely decorative nature (and therefore will be considered weak). The mark does not have any elements that could be considered more dominant than the others.

The contested mark is a figurative mark consisting of the word elements ‘LOLA’ (appearing in a yellow oval-shaped figure) and the meaningless, and thus distinctive for Italian consumers term ‘Just lovely’ (appearing below). There is also a figurative element of a leaf above the second ‘L’ in the word ‘LOLA’. The contested sign includes additionally the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison. Thus, the word ‘LOLA’ is distinctive, and clearly the most dominant element of the earlier sign. This is because it occupies the central position within the sign and does not have any meaning that could be considered descriptive, allusive or otherwise weak for the relevant goods; the figurative elements will be perceived as having a purely decorative nature, or as a reference to the goods, and therefore are considered weak, and the words ‘Just lovely’ are written in a smaller font and placed on the bottom of the sign.

Visually, the signs coincide in the word ‘LOLA’ and a similar oval-shaped form (although in different colours and position). They differ in stylisation of letters, colours, the term ‘Just lovely’, and additional figurative elements as described above, which are however considered secondary due to their weak character or subordinate position. Because the word ‘LOLA’ is the dominant element in the contested sign and is distinctive in relation to the goods in question, consumers will focus on and will remember this word. As such, it is considered that the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘LO-LA’, present identically in both signs. They differ in the pronunciation of ‘Just Lovely’ of contested mark, which has no counterpart in the earlier sign. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a reference to the female name ‘LOLA’, they are considered conceptually highly similar. This is because the remaining elements within both signs are either weak or have no concept for the relevant public.

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, it has been established that the contested goods are identical to the opponent’s goods. The signs are conceptually highly similar, and aurally and visually similar to an average degree, to the extent that they coincide in the word element ‘LOLA’, which is fully distinctive for the goods in question.

The word ‘LOLA’ is the one which most attracts the attention of the relevant public in both signs, and the imperfect image which the public will keep in its mind will be very closely connected to it. Moreover, the trade marks have their beginning elements in common and it is this part that generally catches the attention of the public consumer. Consequently, while it is true that the trade marks have certain differences between them, they are confined to weak or secondary elements and aspects. Such differences do not allow the public to safely distinguish between the marks based on the presence in each of them of the prominent term ‘LOLA’. The presence of this element in both marks will make it likely for the Italian public to believe erroneously that the goods which each of the trade marks cover have the same commercial origin or that there is a commercial or industrial link between the two signs.

Given the similarity existing between the conflicting trade marks and the identity between the goods and taking account of the principle of interdependence of the factors which determine the likelihood of confusion, 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 Italian trade mark registration No 1 091 659.

As the earlier Italian trade mark registration No 1 091 659 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). Given that the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 091 659, it is unnecessary to examine the evidence of use for the international registration No 611 523 filed by the opponent.

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

Anna BAKALARZ

Adriana VAN ROODEN

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.