OPPOSITION DIVISION
OPPOSITION No B 2 466 525
Sovena Portugal – Consumer Goods S.A., Rua Dr. António Loureiro Borges, nº2
Edificio ARQUIPARQUE 2, 3º andar, Miraflores, 1495-131 Algés, Portugal
(opponent), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro,
146-7º, 1050-061, Lisbon, Portugal (professional representative)
a g a i n s t
Carapelli Firenze S.p.A., Via Leonardo da Vinci, 31 – Località Sambuca, 50028,
Tavarnelle val di Pesa (Firenze), Italy (applicant), represented by María José
Garreta Rodríguez, Aribau, 155, bajos, 08036, Barcelona, Spain (professional
representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 466 525 is partially upheld, namely for the following
contested goods:
Class 29: Edible oils and fats; olives, [prepared]; olives, preserved
Class 31: Olives, fresh
2. European Union trade mark application No 13 370 754 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 13 370 754 ‘FRANTOLIVA’ namely against the goods in
Classes 29 and 31.
The opposition is based on Portuguese trade mark registration No 490 728
‘FONTOLIVA’. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 466 525 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Olive oil, edible oils and fats.
The contested goods are the following:
Class 29: Edible oils and fats; olives, [prepared]; olives, preserved; vegetable
preserves.
Class 31: Olives, fresh.
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
Edible oils and fats are identically contained in both lists of goods. Therefore, they
are identical.
The contested Olives, [prepared]; Olives, preserved are fruits that can be eaten as a
relish or snack and are also used as a staple ingredient in many foodstuffs, such as
salads. While the contested prepared and preserved olives and the opponent’s olive
oil may be sold in the same stores, they are likely to appear on different shelves and
in different areas of these stores. Moreover, while olive oil is heavily processed from
its raw ingredients (olives) and is distinguishable from them, prepared and preserved
olives, despite a degree of processing, are still recognisable as olives. However they
are likely to have the same producers and distributed via the same channels.
Therefore, there is a low degree of similarity.
The contested vegetable preserves are dissimilar to all of the opponent’s goods since
they have a different nature, specific purpose of use and method of use. They are not
in competition and the usual commercial origin of the goods is different. They are not
normally sold close to each other in supermarkets and food shops.
Contested goods in Class 31
Decision on Opposition No B 2 466 525 page: 3 of 6
The contested olives, fresh have a remote link with the opponent’s Class 29 olive oil
since the latter are essentially olives which have been pressed into liquid form. Whilst
they may differ in nature, since one is liquid used to cook or complement other foods
and the other are in whole form and be eat by themselves or with other foods, they
will coincide with producers and distribution channels. They are similar to a low
degree.
b) 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 lowly similar are directed at
the public at large. Nothing in the nature of the goods, their manner or purchase or
effect on the consumer leads or requires that consumers are more attentive and
observant when choosing such goods. Therefore, the degree of attention is
considered to be average.
c) The signs
FONTOLIVA FRANTOLIVA
Earlier trade mark Contested sign
The relevant territory is Portugal.
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; therefore they have no dominant elements.
As regards the earlier mark, although it is composed of one verbal element, the
relevant consumers, when perceiving a verbal sign, will break it down into elements
that suggest a concrete meaning, or that resemble words that they already know
(13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion,
EU:T:2008:33, § 58). Therefore, it cannot be excluded that the public will perceive the
word FONT in the earlier mark as evoking ‘fonte’, meaning ‘source, spring or
fountain’, because in the pronunciation the final ‘E’ is almost mute anyway. Since the
word is not allusive or descriptive, it is of normal distinctive character.
Also, the common word OLIVA is perceived, as it is used as a synonym for
AZEITONA (http://synonyms.woxikon.com/pt/oliva), meaning ‘olive’ (Collins
dictionary). Therefore, this part of the marks is considered non-distinctive, bearing in
mind that some of the relevant goods are olive oils prepared, preserved or fresh. For
Decision on Opposition No B 2 466 525 page: 4 of 6
edible fats and edible oils not considered to be, or include, olives, this element is of
normal distinctiveness.
Visually, the signs coincide in 8 out of the 10 letters of the contested sign, namely in
the letters ‘F**NTOLIVA’. The coinciding last 5 letters are ‘OLIVA’, which as outlined
above, is non-distinctive for part of the relevant goods. The respective signs differ in
the second and third letters, namely ‘R-A’ in the contested sign and ‘O’ in the earlier
mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the letter sequence ‘F_
_NTOLIVA’ present identically in both signs, though it must be borne in mind that
‘OLIVA’ is considered of being non-distinctive. The pronunciation differs in the sound
of the letters ‘O’ in the earlier trade mark and ‘RA’ in the contested sign, i.e. ‘FONT’
and ‘FRANT’ respectively.
In view of the coincidences between the signs, they are considered to be aurally
similar to an average degree.
Conceptually, neither of the signs has a meaning as a whole. Although the
coinciding word ‘OLIVA’ will evoke a concept for some of the goods, it does not serve
to establish any conceptual similarity because this element is not capable of
indicating the commercial origin in any of the marks. The attention of the relevant
public will be attracted by the additional verbal element in the earlier trade mark
which evokes ‘source, spring or fountain’. This element does not feature in the
contested sign. Therefore, for those that recognise ‘FONT’ the signs are not
conceptually similar. However, for those he conceptual aspect does not influence the
assessment of the similarity of the signs.
For goods whereby ‘OLIVA’ will not be perceived as descriptive (namely edible fats),
no element of the respective marks have a conceptual meaning. Therefore, for those
goods a conceptual comparison is not possible.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 non-distinctive element(s) in the mark, as stated
above in section c) of this decision.
Decision on Opposition No B 2 466 525 page: 5 of 6
e) 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).
In the present case, some of the goods are identical, some are similar to a low
degree and the rest are dissimilar.
It has been found that the signs are visually and aurally to an average degree and it
is not either possible to carry out a conceptual comparison or they are not
conceptually similar. The earlier mark is considered to be of normal distinctive
character and there is an average degree of attention paid upon purchasing the
goods.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Portuguese public and therefore the opposition is partly
well founded on the basis of the opponent’s Portuguese trade mark registration.
It follows from the above that the contested trade mark must be rejected for not just
the goods which were found to be identical, but also for the goods which are similar
to a low degree. This is because the similarity between the signs is sufficient for there
to be a likelihood of confusion even for goods which are lowly similar.
The rest of the contested goods are dissimilar. As the similarity of goods and services
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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 466 525 page: 6 of 6
The Opposition Division
Ioana MOISESCU Mark KING Francesca DRAGOSTIN
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.