OPPOSITION No B 2 702 937

Predio Xarbet, S.L., c/Turégano, 4-B, 28035 Madrid, Spain (opponent), represented by Clarke, Modet y CÍA. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Sabinsa Europe GmbH, Monzastr. 4, 63225 Langen, Germany (applicant).

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

DECISION:

1.        Opposition No B 2 702 937 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 095 871, namely against all the goods in Classes 29 and 30. The opposition is based on Spanish trade mark registration No 2 563 533. 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.

1. The goods

The goods on which the opposition is based 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; preserved fish and meat.

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; capers.

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

The contested goods are the following:

Class 29:        Dairy products and dairy substitutes; processed fruits, fungi and vegetables (including nuts and pulses).

Class 30:        Baked goods, confectionery, chocolate and desserts; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes therefor.

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 dairy products and dairy substitutes include, as a broader category, the opponent’s milk. 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 processed fruits and vegetables (including nuts and pulses) are fruits and vegetables treated in a particular way so that they can be kept for a long time without going bad, including in a frozen, dried or cooked state. They overlap with the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

The contested processed fungi are highly similar to the opponent’s sauces (condiments) in Class 30, which include, inter alia, fungi sauces. These goods have the same purpose. They target the same consumers and are produced by the same undertakings, which distribute them through the same channels, namely supermarkets and food shops, where they are normally displayed in close proximity. Moreover, they are in competition.

Contested goods in Class 30

Coffee, teas and cocoa; confectionery; ice, ice creams; yeasts; salts; sugars are identically contained in both lists of goods (albeit with slightly different wordings).

The contested baked goods are included in the broad category of the opponent’s pastry and the contested chocolate and desserts are included in the broad category of the opponent’s confectionery. Likewise, the contested frozen yogurts and sorbets are included in the broad category of the opponent’s ices. Therefore, all these sets of goods are identical.

The contested processed grains include, as a broader category, the opponent’s rice. Likewise, the contested goods made thereof (i.e. of processed grains) include, as a broader category, the opponent’s preparations made from cereals. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, all these sets of goods are considered identical.

The contested baking preparations include, as a broader category, the opponent’s baking powder. Likewise, the contested natural sweeteners include, as a broader category, the opponent’s honey. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, all these sets of goods are considered identical.

The contested bee products overlap with the opponent’s honey. Therefore, they are identical.

The contested substitutes therefor (i.e. for coffee, teas and cocoa) are similar to a high degree to the opponent’s coffee, tea and cocoa respectively, as they can have the same producers, consumers, distribution channels and methods of use. Furthermore, they are in competition.

The contested seasonings, flavourings and condiments have the purpose of adding to or enhancing the flavour of food. Therefore, they are considered similar to the opponent’s salt and sauces (condiments). These goods have the same purpose (food seasoning) and can have the same producers, target public and distribution channels.

The contested starches and goods made thereof are similar to the opponent’s flour. These goods can have the same producers, target public and distribution channels. Furthermore, they are in competition.

The contested sweet coatings and fillings are similar to the opponent’s sugar, honey, as they can have the same consumers and distribution channels. Furthermore, they are in competition with each other.

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 similar (to different degrees) are directed at the public at large. The degree of attention is likely to vary from lower than average to average, depending on their type, price and frequency of the purchase.

3. The signs

XARBET	SaBeet
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both marks are word marks consisting of one word. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is in upper or lower case characters or, as the case may be, a combination thereof.

Neither the word ‘XARBET’ nor the word ‘SaBeet’ has any meaning for the relevant Spanish-speaking public. Therefore, these words are distinctive in relation to the relevant goods. Since they are word marks, neither of them has any element that could be considered clearly more dominant than other elements.

Visually, the signs are similar to the extent that they both consist of six letters, four of which coincide, ‘*A*BET’ versus ‘*aB*et’, and three, namely the second letter, ‘A’, and the last two letters, ‘ET’, are in the same positions. The signs differ in their first letters (‘X’ in the earlier mark versus ‘S’ in the contested sign) and in the third letter, ‘R’, of the earlier mark and the fourth letter, ‘e’, of the contested sign.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). This applies to the present case. Indeed, the mere fact that the signs under comparison have four letters out of six in common does not contribute significantly in a finding of similarity between them.

It is an established principle that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Therefore, the differing first letters, ‘X’ versus ‘S’, will be the first elements to catch the consumers’ attention, and the striking visual impression created by the letter ‘X’ in the earlier mark will be significantly different from that created by the letter ‘S’ in the contested sign. In addition, and without prejudice to the principle that consumers usually perceive a sign as a whole and do not tend to analyse it in detail, the differing letter ‘R’ (in the middle of the earlier mark) and the double ‘e’ at the end of the contested sign will not go completely unnoticed and will create an additional visual difference between the marks. Therefore, the marks are considered visually similar to a low degree.

Aurally, both signs will be pronounced in two syllables, /XAR/BET/ versus /SA/BEET/, and, therefore, will have, to some extent, similar rhythms and intonations. The two letters ‘ee’ in the second syllable of the contested sign may be pronounced by a part of the relevant Spanish-speaking public in the same way as the single letter ‘e’ of the earlier mark, whereas by others in a highly similar way (i.e. as a prolonged ‘e’). Therefore, the second syllables in both marks will be pronounced identically or, as the case may be, almost identically. The pronunciation of the first syllable, however, will differ, firstly because of the differing first letters, ‘X’ in the earlier mark, which will be pronounced by a significant part of the relevant public as [sh], versus ‘S’ in the contested mark, which will be pronounced as [s], and, secondly because of the aural difference created by the hard consonant ‘R’ at the end of the first syllable of the earlier mark. Although the sounds of the first letters may be very similar for the remaining part of the public, which will pronounce the letter ‘X’ in a very similar way to the letter ‘S’ of the contested sign, the presence of the sound ‘R’ in the earlier mark still creates a strong and striking difference between the first syllables of the marks, /XAR/ versus /SA/. Therefore, the signs are considered aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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).

As concluded above, the contested goods are identical or similar (to different degrees) to the opponent’s goods and they target the public at large, whose degree of attention is likely to vary from lower than average to average.

The signs are similar insofar as they have four letters in common, three of which are in the same positions; however, as explained in detail in section c), these coincidences have only been of such a nature as to lead to a finding of a low degree of visual similarity, especially since the signs begin with completely different letters, ‘X’ versus ‘S’, which results in a significant visual difference because of the very different shapes of these letters.

Admittedly, the marks are aurally similar to an average degree. However, the degree of aural similarity may be less important for the goods in Classes 29 and 30, which are usually purchased in supermarkets or establishments where goods are arranged on shelves. Consequently, while oral communication in respect of the goods and the trade mark is not ruled out, consumers are, however, guided more by the visual impact of the mark they are looking for. Therefore, the considerable visual differences between the signs caused by their differing letters (especially the first letters) are particularly relevant when assessing the likelihood of confusion between them.

Moreover, the signs do not have a conceptual link that would lead the public to associate them with each other.

Consequently, it is considered that, despite the similarities between the marks under comparison, the differences between them are clearly perceptible and sufficient to exclude any likelihood of confusion even in relation to the identical goods.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Biruté SATAITE-GONZALEZ

Rasa BARAKAUSKIENE

Oana-Alina STURZA

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.