OPPOSITION No B 2 443 631

Procomel S.L., Paraje Los Ruices, 115, 30156 Los Martínez del Puerto (Murcia), Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Fashion Foods Limited, Redwood Valley Road RD1, Richmond 7081, New Zealand (holder), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 443 631 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 204 168. The opposition is based on European Union trade mark registrations No 11 920 618 and No 5 648 324 and Spanish trade mark registration No 2 675 429. The opponent invoked Article 8(1)(b) EUTMR.

Proof of use of the earlier marks, European Union trade mark registration No 11 920 618 and Spanish trade mark registration No 2 675 429, was requested by the holder. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 marks, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

European Union trade mark registration No 11 920 618

Class 31:        Fresh vegetables and fruits.

Class 35:        Wholesaling and retailing in shops and via global computer networks of preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, and fresh fruits and vegetables.

European Union trade mark registration No 5 648 324

Class 31:        Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Spanish trade mark registration No 2 675 429

Class 31:        Melon.

The contested goods are the following:

Class 31:        Fresh fruit; fruit trees and reproductive material therefor.

Some of the contested goods are identical to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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 assumed to be identical are directed at the public at large. The degree of attention is considered to vary from average to low.

3. The signs

 

(1) European Union trade mark registration No 11 920 618 (2) European Union trade mark registration No 5 648 324 SUGAR BABY MELON (3) Spanish trade mark registration No 2 675 429	SUGAR DADDY
Earlier trade marks	Contested sign

The relevant territory is the European Union for earlier trade marks (1) and (2) and Spain for earlier trade mark (3).

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The elements ‘SUGAR’, ‘BABY’, ‘MELON’ and ‘GOLD’ of the earlier marks are understood in part of the EU, due to consumers’ understanding of English or similar equivalents in their language which refer respectively to ‘a white crystalline sweet carbohydrate, used especially as a sweetening agent in food and drinks’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/sugar), ‘a very young child or comparatively small or immature of its kind’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/baby), ‘the large round fruit of a plant of the gourd family, with sweet pulpy flesh and many seeds’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/melon) and ‘something considered to be like gold esp. in high value’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/gold). In relation to the relevant goods, this part of the public may therefore perceive the elements as indicating the goods are sugar-containing melons intended for very young children that are of very high quality, which renders them weak elements.

However, for another part of the public, namely the Romanian-speaking public, the elements ‘SUGAR’ and ‘MELON’ have no meaning and are distinctive.

The element ‘DADDY’ of the contested mark is an English word meaning ‘one’s father’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/daddy) but is meaningless for the non-English-speaking part of the public. For both parts of the public, the element is distinctive, as its meaning it is not related to the relevant goods.

The Opposition Division will therefore first examine the opposition in relation to the part of the public for which ‘SUGAR’ and ‘MELON’ have no meaning and have a normal degree of distinctiveness. This represents the best-case scenario for the opponent.

Earlier marks (1) and (2) are complex figurative trade marks consisting of several elements, namely an oval background divided into four parts in pink, blue, yellow and green. The word ‘BABY’ runs diagonally across the middle of this background in red, lower case letters and the word ‘SUGAR’ is in yellow, upper case letters in the top left quadrant. In the bottom right quadrant, the word ‘GOLD’ appears in gold, upper case letters set against a rectangular gold frame in earlier mark (1) and the word ‘melon’ in red lower case letters in earlier mark (2) respectively.

The element ‘BABY’ in earlier marks (1) and (2) has the strongest impact on the consumer, as its striking red colour, central position and sheer size in proportion to the rest of the mark make it stand out visually, while the other elements have less importance in the overall perception of the signs. Therefore, the focus will be not on the element that is identically contained in the contested mark but on its other, more memorable element, ‘BABY’.

Earlier mark (3) is a word mark consisting of the words ‘SUGAR BABY MELON’, and therefore it has no elements which are more dominant than others.

The contested mark is also a word mark, composed of the words ‘SUGAR DADDY’, and therefore it has no elements which are more dominant than others.

Visually, the signs coincide in the element ‘SUGAR’. However, the signs clearly differ in the element ‘DADDY’ of the contested mark, which is not included in any of the earlier marks, in the distinctive element ‘GOLD’ of earlier mark (1), in the distinctive element ‘MELON’ of earlier marks (2) and (3) and in all the figurative elements of the earlier marks.

Although the beginning of signs is generally a factor that adds a certain weight to the comparison of signs, this is not decisive in this case for finding similarity, as the signs have fairly different structures and lengths. As a result, an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In this sense, the differences in the signs’ overall impression counterbalances the similarities of their beginnings.

Therefore the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sounds of ‘SUGAR’, present identically in all the signs. The marks differ, however, in the sounds of their remaining verbal components. The signs have different structures and lengths, which ultimately results in very different rhythms and intonations.

Therefore, they are aurally similar to a low degree.

Conceptually, reference is made to the statements made above regarding the meanings of the signs and their composite elements.

While part of the public in the relevant territory will understand the words ‘BABY’ and ‘GOLD’ of the earlier marks, the elements ‘SUGAR’ and ‘MELON’ lack any meaning. Since the other sign will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar (to a low degree) 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 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier marks as a whole have 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 marks must be seen as normal, despite the presence of some weak elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements, and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22).

The Court has also held that 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 goods have been assumed to be identical. The degree of attention varies from average to low.

It must be recalled that according to well-established case-law, the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The average consumer showing an average degree of attention is not prone to making a closer inspection of the composition of signs. Assuming the contrary does not reflect the market reality and the cognitive process of perception and does not comport with the principles developed by the Courts regarding the objective evaluation of similarity between signs from the perspective of the average consumer.

The signs coincide visually and aurally in the verbal element ‘SUGAR’. However, in the present case, this commonality is not sufficient to lead to a likelihood of confusion on the part of the public. Bearing the above in mind, the Opposition Division is of the opinion that, while the signs have certain similarities (detailed above), there are ample differences (also detailed above) between them which rule out the potential for confusion when the signs are appreciated globally.

The signs have significant differences, namely the earlier marks have the additional elements ‘BABY’ and ‘GOLD’ or ‘MELON’ in addition to all the figurative elements and colours of earlier marks (1) and (2), as described above, whereas the contested sign includes the additional element ‘DADDY’, which has no counterpart in the earlier marks.

All the above renders the signs visually similar to a low degree and aurally similar to a very low degree. Conceptually, they are not similar. Therefore, those differences are sufficient to enable the public to safely distinguish between the conflicting signs.

Therefore, in spite of the coincidence in the element ‘SUGAR’, the differing elements in the signs are clearly sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The Opposition Division has concentrated on the part of the public for which the elements ‘SUGAR’ and ‘MELON’ are not affected by a reduced degree of distinctiveness, which represents the best-case scenario for the opponent. This absence of a likelihood of confusion equally applies to the part of the public for which these elements are weak. This is because, as a result of the weak character of these elements, that part of the public will perceive the signs as being even less similar. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; and 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22).

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DINU

Cristina CRESPO MOLTO

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.

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.