OPPOSITION No B 2 282 237

Frutaria SAT Nº 9413, Avenida Cesar Augusto, 3, 7ª planta 50004 Zaragoza, Spain (opponent), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain (professional representative)

a g a i n s t

Markus Schneider, Gregor-Mendel-Straße 20, 53115 Bonn, Germany (applicant), represented by Michalski Hüttermann & Partner Patentanwälte mbB, Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 282 237 is upheld for all the contested goods and services.

2. European Union trade mark application No 11 987 419 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 and services of European Union trade mark application No 11 987 419. The opposition is based on, inter alia, European Union trade mark registration No 5 922 885. The opponent invoked Article 8(1)(b) EUTMR.

On 05/05/2015, the Opposition Division rendered a decision that resulted in the rejection of European Union trade mark application No 11 987 419.

The decision was appealed and the Board of Appeal decided in case R-1282/2015-1 on 09/09/2016. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division had failed to properly analyse the opposition under Article 8(1)(b) EUTMR because it did not analyse the proof of use of the earlier marks. According to the decision, the examination of the proof of use of an earlier mark in relation to the contested goods and services is a preliminary issue for the assessment of likelihood of confusion. The Opposition Division was obligated to take all the evidence provided by the opponent and applicant into account before deciding if there was a likelihood of confusion between the conflicting marks. Therefore, the case was remitted to the Opposition Division for further prosecution.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark No 5 922 885 and Spanish trade mark No 2 656 471.

In the present case the contested trade mark was published on 04/09/2013.

Earlier European Union trade mark No 5 922 885 was registered on 27/04/2010. Therefore, the request for proof of use is inadmissible as regards this earlier right.

As regards the assessment of proof of use of earlier Spanish trade mark No 2 656 471, according to settled case-law, if the earlier right leads to the success of the opposition and the rejection of the contested trade mark for all the goods and services 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).

In the present case, as will become evident from the analysis below, the earlier European Union trade mark leads to the total success of the opposition and, therefore, as explained above, there is no need to assess the opposition insofar as it is based on the earlier Spanish trade mark. Therefore, an assessment of the proof of use of the earlier Spanish trade mark would be redundant.

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. As stated above, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 922 885, not subject to the obligation of use.

1. The goods and services

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

Class 29: Preserved, dried and cooked fruits, vegetables and pulses; meat, fish, poultry and game; meat extracts; jams and jellies; fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 31: Agricultural, horticultural and forestry products and grains; fresh fruits, pulses and garden produce; seeds, natural plants and flowers.

Class 35: Commercial retailing, import, export, and sales promotion of agri-food products in general, in particular fresh or preserved fruits and vegetables; advertising; advertising material services (brochures, prospectuses, printed sheets, samples); commercial management assistance in relation to franchising; business management; commercial management assistance and consultancy and commercial and industrial management assistance and consultancy.

Class 39:        Warehousing, loading and unloading, packing and packaging, transport, delivery, distribution of agri-food products in general, and in particular, fresh or preserved fruit and vegetables.        

The contested goods and services are the following:

Class 29:        Preserved vegetables; dried vegetables; Frozen vegetables; Preserved fruit; Desiccated fruits; Jams and Vegetable jams.

Class 31:        Fresh vegetables; Fresh fruit, In particular fresh pomes, in particular fresh apples and pears, fresh; Fresh herbs; Fresh nuts; Foodstuffs for animals; Living plants; Seeds; Flowers, natural.

Class 35:        Retailing and wholesaling, namely of vegetables, fruits, herbs, nuts, foodstuffs for animals, natural plants, seeds and natural flowers.

Class 39:        Transportation and storage; Packaging of goods, In particular packaging of fruits, vegetables, herbs; Nuts (fruits); Foodstuffs for animals, natural plants, seeds and natural flowers.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in both parties’ lists of goods and services, indicates that the specific goods and services 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).

On the other hand, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Contested goods in Class 29

The contested preserved vegetables; dried vegetables; preserved fruit; desiccated fruits; jams are identically contained in both lists of goods (including synonyms). These goods are identical.

The contested frozen vegetables; vegetable jams are included in the broad category of the opponent’s preserved vegetables; jams. Therefore they are identical.

Contested goods in Class 31

The contested living plants; flowers, natural; seeds are identically contained in both lists of goods (including synonyms). These goods are identical.

The contested fresh vegetables; fresh fruit, in particular fresh pomes, in particular fresh apples and pears, fresh; fresh herbs; fresh nuts are included in the broad category of the opponent’s agricultural, horticultural and forestry products. Therefore they are identical.

The contested foodstuffs for animals overlap with the opponent’s natural plants in the same class. These goods are, therefore, identical.

Contested services in Class 35

The contested retailing, namely of vegetables, fruits, herbs, nuts, foodstuffs for animals, natural plants, seeds and natural flowers is included in the broad category of the opponent’s commercial retailing … of agri-food products in general (as explained above, the services preceded by the term ‘in particular’ are merely examples). Therefore, they are considered identical.

The contested wholesaling, namely of vegetables, fruits, herbs, nuts, foodstuffs for animals, natural plants, seeds and natural flowers is similar to the opponent’s commercial retailing … of agri-food products. The services under comparison concern the same goods. Wholesaling consists in selling goods to other undertakings (retailers), which then sell the goods to end consumers. Therefore, although the relevant publics and distribution channels of the services under comparison are different, their nature and purpose are the same. Furthermore, they are complementary and can have the same origins, as wholesalers sometimes also provide retail services.

Contested services in Class 39

The contested transportation includes, as a broader category, the opponent’s transport of agri-food products in general, and in particular, fresh or preserved fruit and vegetables. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested storage is included in the broad category of the opponent’s warehousing. Therefore, they are identical.

Finally, the contested packaging of goods, in particular packaging of fruits, vegetables, herbs; nuts (fruits); foodstuffs for animals, natural plants, seeds and natural flowers includes, as a broader category, the opponent’s packaging of agri-food products in general, and in particular, fresh or preserved fruit and vegetables. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

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 and services found to be identical or similar are directed at the public at large and at business customers. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that speaks the Slavic languages (the Bulgarian-, Croatian-, Slovak-, Czech-, Polish- and Slovenian-speaking parts of the public) and on the Hungarian-, Estonian- and Finnish-speaking parts of the public.

With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarities of the marks, on the basis of the overall impression given by them, 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 meaningless word ‘Frutaria’, depicted in a bold green typeface. Surrounding the verbal element is a figurative device of a decorative nature, which consists of basic geometric shapes, namely a curved line, a semi-circle and a square.

The contested sign is a figurative mark consisting of the meaningless word ‘frutania’, depicted in blue lower case letters in a bold handwriting-style typeface.

Neither of the signs has any element that could be considered clearly more distinctive or more dominant than other elements.

Visually, the signs coincide in their verbal elements, which are the same except for their sixth letters, namely ‘r’ in the earlier mark and ‘n’ in the contested sign. The signs differ in their graphic depictions, that is, the stylisation of their words and the figurative device in the earlier mark.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all the letters of the signs except for the letters ‘r’ and ‘n’ in the earlier mark and the contested sign, respectively. Contrary to the applicant’s argument, this difference is not significant. Given that the differing letters are placed in the same positions, that they are both consonants and that the verbal components of the marks are the same length, the overall aural impressions produced by the signs are very similar.

Therefore, the signs are aurally highly similar.

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

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/services covered are from the same or economically linked undertakings.

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).

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 and services are identical or similar and the marks’ verbal components are almost identical, differing in only one letter. The earlier mark is of average distinctiveness from the perspective of at least part of the relevant public (as defined above). Having regard also to the principle of interdependence (i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and vice versa), it is considered that the significant coincidences between the signs, together with the identity or similarity between the goods and services, are sufficient to outweigh the difference between the signs and might induce at least part of the public to believe that the conflicting services found to be identical or similar came from the same undertaking or economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that speaks the Slavic languages (the Bulgarian-, Croatian-, Slovak-, Czech-, Polish- and Slovenian-speaking parts of the public) and on the part of the Hungarian-, Estonian- and Finnish-speaking parts 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 5 922 885. It follows that the contested trade mark must be rejected for all the contested goods and services.

As stated above, because the earlier right European Union trade mark registration No 5 922 885 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine earlier Spanish trade mark registration No 2 656 471 (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, he 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

Michaela SIMANDLOVA

Liina PUU

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.