OPPOSITION No B 2 583 808

AS Farmi Piimatööstus, Linda 15, 41536 Jöhvi, Estonia (opponent), represented by Patendibüroo Turvaja Oü, Liivalaia 22, 10118 Tallinn, Estonia (professional representative)

a g a i n s t

MLV 85 Sp. z o.o., Rondo ONZ 1, lok. XXI P, 00-124 Warszawa, Poland (applicant), represented by Maria Przybylska-Karczemska, ul. 10 Lutego 3/1, 90-303 Łódź, Poland (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 583 808 is partially upheld, namely for the following contested goods:

Class 29:         Meat, Poultry, Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Edible oils and fats; Preparations for making bouillon; Onions, preserved; Fruit chips; Potato chips; Garlic [preserved]; Poultry, not live; Jams; Beans, preserved; Tripe; Jellies for food; Meat jellies; Peas, preserved; Mushrooms, preserved; Hummus [chickpea paste]; Caviar; Kefir [milk beverage]; Sausages in batter; Sausages; Compotes; Broth concentrates; Preserved meat; Croquettes; Mussels, not live; Shellfish, not live; Clams, not live; Margarine; Marmalade; Fruit pulp; Meat; Meat extracts; Preserved meat; Salted meats; Ground almonds; Frozen fruits; Processed seeds; Edible oils; Olives, preserved; Fruit, stewed; Preserved fruits; Fruit preserved in alcohol; Crystallized fruits; Canned fruits; Fruit jellies; Potato flakes; Silkworm chrysalis, for human consumption; Tomato juice for cooking; Fruit-based snack food; Broth; Fruit salads; Vegetable salads; Fat-containing mixtures for bread slices; Edible fats; Fatty substances for the manufacture of edible fats; Vegetables, cooked; Preserved vegetables; Vegetables, dried; Canned vegetables; Liver; Charcuterie; Soups; Vegetable soup preparations; Soup (Preparations for making -).

2.        European Union trade mark application No 14 022 149 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 022 149. The opposition is based on European Union trade mark registrations No 9 703 638, No 11 098 563 and No 13 684 873. 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:

European Union trade mark No 9 703 638

Class 29:         Milk and milk products; cheese and cheese products; sour milk, yogurt, kefir, cream, whipped cream, sour cream, milk beverages, cottage cheese, quark, quark cream, curd snack, cheesecakes; eggs; edible oils and fats; butter, margarine, fat-containing mixtures for bread slices, dairy spread, cheese spread, chocolate nut butter; prepared, preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; vegetable bouillon concentrates; vegetable soups; vegetable soup preparations; vegetable juices for cooking, vegetable salads.

European Union trade mark No 11 098 563

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.

European Union trade mark No 13 684 873

Class 29:         Milk; Milk products; Dairy products and dairy substitutes; Desserts made from milk products; Artificial milk based desserts; Cheese; Cottage cheese; Cottage cheese preparations; Cream cheese; Fresh unripened cheeses; Cheese spreads; Dairy-based dips; Curd; Kephir [milk beverage]; Yogurt; Drinking yogurts; Flavoured yoghurts; Preparations for making yoghurt; Yoghurt desserts; Cream [dairy products]; Whipped cream; Smetana [sour cream]; Curd cheese; Double cream; Quark; Birds eggs and egg products; Oils and fats; Butter; Butter preparations; Butter substitutes; Margarine; Fat-containing mixtures for bread slices; Low fat dairy spreads; Cocoa butter; Dairy spreads; Buttercream; Jellies, jams, compotes, fruit and vegetable spreads; Processed fruits, fungi and vegetables (including nuts and pulses); Prepared salads; Soups; Bouillon concentrates; Preparations for making bouillon; Mixed vegetables; Vegetable soup preparations; Vegetable juices for cooking; Vegetable salads.

The contested goods are the following:

Class 5:         Dietetic food and substances adapted for medical or veterinary use; Infant formula; Dietary supplements for humans and animals; Dietetic foods adapted for medical use.

Class 29:         Meat, Poultry, Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Edible oils and fats; Preparations for making bouillon; Onions, preserved; Fruit chips; Potato chips; Garlic [preserved]; Poultry, not live; Jams; Beans, preserved; Tripe; Jellies for food; Meat jellies; Peas, preserved; Mushrooms, preserved; Hummus [chickpea paste]; Caviar; Kefir [milk beverage]; Sausages in batter; Sausages; Compotes; Broth concentrates; Preserved meat; Croquettes; Mussels, not live; Shellfish, not live; Clams, not live; Margarine; Marmalade; Fruit pulp; Meat; Meat extracts; Preserved meat; Salted meats; Ground almonds; Frozen fruits; Processed seeds; Edible oils; Olives, preserved; Fruit, stewed; Preserved fruits; Fruit preserved in alcohol; Crystallized fruits; Canned fruits; Fruit jellies; Potato flakes; Silkworm chrysalis, for human consumption; Tomato juice for cooking; Fruit-based snack food; Broth; Fruit salads; Vegetable salads; Fat-containing mixtures for bread slices; Edible fats; Fatty substances for the manufacture of edible fats; Vegetables, cooked; Preserved vegetables; Vegetables, dried; Canned vegetables; Liver; Charcuterie; Soups; Vegetable soup preparations; Soup (Preparations for making -).

The term ‘including’, used in the list of goods of European Union trade mark No 13 684 873, 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).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 5

The contested dietetic food and substances adapted for medical or veterinary use; infant formula; dietary supplements for humans and animals; dietetic foods adapted for medical use are dissimilar to the opponent’s goods of the earlier European Union trade marks. The contested goods are intended, in general, to provide nutrients that may otherwise not be consumed in sufficient quantities. They are not foodstuffs that appear in the lists of goods of the earlier trade marks. Therefore, the goods under comparison do not serve the same purpose and do not target the same public. They usually differ in their producers and they do not have the same distribution channels.

Contested goods in Class 29

Meat, poultry, meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats; poultry, not live (some listed twice in the list of goods of the contested sign) are identically contained in the lists of goods of the contested sign and earlier European Union trade mark No 11 098 563 (including synonyms). In this regard, the Opposition Division notes that live animals are classified in Class 31. Therefore, poultry in Class 29 is not live.

Kefir [milk beverage]; margarine; vegetable salads; vegetable soup preparations are identically contained in the lists of goods of the contested sign and earlier European Union trade mark No 9 703 638.

The contested onions, preserved; fruit chips; potato chips; garlic [preserved]; beans, preserved; peas, preserved; mushrooms, preserved; hummus [chickpea paste]; marmalade; fruit pulp; croquettes; ground almonds; processed seeds; olives, preserved; fruit, stewed; fruit preserved in alcohol; crystallized fruits; canned fruits; potato flakes; tomato juice for cooking; fruit-based snack food; fruit salads; canned vegetables are included in, or overlap with, the broad category of the opponent’s prepared, preserved, dried and cooked fruits and vegetables in the list of goods of earlier European Union trade mark No 9 703 638. Therefore, they are identical.

The contested fruit jellies; jellies for food and meat jellies are included in the broad category of the opponent’s jellies in the list of goods of earlier European Union trade mark No 9 703 638. Therefore, they are identical.

The contested tripe; sausages in batter; sausages; liver; charcuterie; preserved meat; salted meats are included in the broad category of the opponent’s meat in the list of goods of earlier European Union trade mark No 11 098 563. These goods are, therefore, identical.

The contested fatty substances for the manufacture of edible fats; fat-containing mixtures for bread slices are included in the broad category of the opponent’s edible oils and fats in the list of goods of earlier European Union trade mark No 9 703 638. Therefore, they are identical.

The contested preparations for making bouillon; broth concentrates; soup (preparations for making -) overlap with the opponent’s vegetable bouillon concentrates in the list of goods of earlier European Union trade mark No 9 703 638. Therefore, they are considered identical.

The contested broth; soups include, as broader categories, or overlap with the opponent’s vegetable soups in the list of goods of earlier European Union trade mark No 9 703 638. Therefore, they are identical.

The contested caviar; shellfish, not live; mussels, not live; clams, not live; silkworm chrysalis, for human consumption are included in or overlap with the opponent’s fish in the list of goods of earlier European Union trade mark No 11 098 563. Therefore, these goods are considered identical.

Since all the contested goods in Class 5 are dissimilar to all the goods of the earlier marks, and the contested goods in Class 29 are identical to goods included in the lists of goods of earlier European Union trade marks No 9 703 638 and No 11 098 563, the assessment of the opposition will continue on the basis of these two 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 found to be identical are directed at the public at large. Taking into account the category of goods in question, which includes basic foodstuffs that are purchased frequently (e.g. margarine), as well as rather expensive delicacies (e.g. caviar and shellfish), the degree of attention will vary from lower than average to higher than average.

3. The signs

EUTM 9 703 638 EUTM 11 098 563
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 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.

The verbal elements ‘farma jakości’, ‘Kurczak Babuni’ and ‘wolny od antybiotyków’ of the contested sign are meaningful expressions in Polish. They mean, respectively, ‘farm offering quality products’, ‘grandma’s chicken’ and ‘free from antibiotics’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

The verbal elements ‘Farmi’ (in the earlier marks) and ‘farmio’ (in the contested sign) will not be understood by the relevant public, as they have no meaning in Polish. The words ‘Terve’ and ‘Eesti’ in earlier mark No 11 098 563 are meaningless for the relevant public.

The earlier marks and the contested sign all contain some figurative elements. In the earlier marks, the figurative elements are a black circle in which the verbal element ‘Farmi’ is placed and an element resembling a white sun in place of the dot above the letter ‘i’ (all depicted in white). The contested sign contains the abovementioned words depicted in various colours: dark green (‘farmio’), white (‘farma jakości’) and red (‘Kurczak Babuni’ and ‘wolny od antybiotyków’). The expression ‘farma jakości’ is placed on a green and red shape that resembles a leaf, and the expression ‘wolny od antybiotyków’ is placed on a gold ribbon. On the left side of the contested sign there is a depiction of a farm in a rural landscape. In addition, there is a slightly curved green line in the middle of the sign, dividing it into two parts. Above the line are the verbal elements ‘farmio’ and ‘farma jakości’ and the depiction of a farm in a rural landscape. Below the line are the other verbal and figurative elements.

The element ‘Farmi’ in the black circle in the earlier marks is more dominant (visually eye-catching) than the other elements. This element is distinctive for the goods at issue.

The expressions ‘farma jakości’, ‘Kurczak Babuni’ and ‘wolny od antybiotyków’ are non-distinctive for the Polish-speaking part of the public in the relevant territory, as they describe characteristics of the goods and/or their provider. The figurative elements of the leaf-like device and the gold ribbon, on which some of the verbal elements are placed, the green line dividing the sign into two parts and the depiction of a farm in a rural landscape are of a decorative nature. They are banal elements, commonly found on the packaging of foodstuffs. Consequently, the verbal element ‘farmio’ is the most distinctive element of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, earlier trade mark No 9 703 638 and the contested sign coincide in the word ‘farmi’. However, the marks under comparison differ in the last letter, ‘o’, of the word ‘FARMIO’ in the contested sign, and in the figurative elements of the earlier mark. In addition, they differ in the other verbal and figurative elements of the contested sign, described above, which are, however, descriptive or purely decorative.

Therefore, the signs are visually similar to an average degree.

The same applies to earlier trade mark No 11 098 563 and the contested sign, except that the earlier mark has the additional elements ‘Terve Eesti …’, which have no counterparts in the contested sign. However, the element ‘Farmi’ in the black circle is the dominant element of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of earlier trade mark No 9 703 638 and the contested sign coincides in the sound of the letters ‛FARMI’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘o’ at the end of the verbal element ‘farmio’ in the contested mark, as well as in the sounds of the contested sign’s additional verbal elements ‘farma jakości’, ‘Kurczak Babuni’ and ‘wolny od antybiotyków’, if pronounced, which have no counterparts in the earlier sign. However, these verbal elements are descriptive.

Therefore, the signs are aurally similar to a high degree.

The same applies to earlier trade mark No 11 098 563 and the contested sign, except that the earlier mark has the additional verbal elements ‘Terve Eesti …’.

Therefore, the signs are aurally similar to a low degree.

Conceptually, as explained above, the verbal elements ‘Farmi’ (in the earlier marks) and ‘farmio’ (in the contested sign) will not be understood by the relevant public, as they have no meaning in Polish. The figurative element resembling a white sun in the earlier mark will be perceived as such by the relevant public. The contested mark contains a leaf-like device and a depiction of a farm in a rural landscape, neither of which has a counterpart in the earlier marks, and which are, however, purely decorative. Furthermore, the Polish expressions in the contested sign will be understood as explained above and are, therefore, descriptive. Since the signs will be associated with dissimilar meanings, they are not conceptually similar. This also applies to earlier trade mark No 11 098 563, containing the phrase ‘Terve Eesti …’, which is meaningless for the public in the relevant territory.

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 marks

The distinctiveness of the earlier marks 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 trade marks as a whole have no meaning in relation to any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

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.

The contested goods are partly identical and partly dissimilar to the opponent’s goods, and they target the public at large, whose degree of attention may vary from lower than average to higher than average. The signs are visually similar to an average degree and aurally similar at least to a low degree. Furthermore, the earlier marks have a normal degree of distinctiveness.

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).Taking into account the identity between the goods, the Opposition Division finds that the differences between the signs do not prevent a finding of likelihood of confusion, since they are mainly confined to secondary elements, and to the last letter, ‘o’, of the element ‘farmio’ in the contested sign.

Consequently, the similarity between the conflicting signs attributable to the word elements ‘Farmi’ of the earlier sign and ‘farmio’ of the contested sign is of particular importance when assessing whether the public will be able to differentiate the marks in question.

Taking into account the fact that consumers rarely have the chance to compare marks, but must rely on their imperfect recollection, which is also true for consumers with a high degree of attention (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), the Opposition Division is of the opinion that the abovementioned similarities between the marks outweigh the differences, and that the overall similarity between the signs is sufficient to find a likelihood of confusion on the part of the Polish-speaking public in relation to the goods found to be identical.

It is a result of the unitary character of the European Union trade mark, laid down in Article 1(2) EUTMR, that an earlier European Union trade mark has identical protection in all Member States. Earlier European Union trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Union. It follows that the principle laid down in Article 7(2) EUTMR, which provides that it is sufficient that an absolute ground for refusal exists in only part of the European Union for a trade mark application to be refused, applies, by analogy, to a relative ground for refusal under Article 8(1)(b) EUTMR.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking public and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registrations No 9 703 638 and No 11 098 563.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade marks. The rest of the contested goods are dissimilar to the goods of all earlier marks on which the opposition is based. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Natascha GALPERIN

Michal KRUK

Plamen IVANOV

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.