OPPOSITION DIVISION

OPPOSITION No B 2 671 199

Joint-Stock Company ‘Krasnyj Octyabr’, ul. Malaya Krasnoselskaya d. 7, str. 24,

Moscow 109072, Russian Federation (opponent), represented by Foral Patent Law

Offices, Kaleju 14-7, Riga 1050, Latvia (professional representative)

a g a i n s t

Zakrytoe aktsionernoe obshchestvo ‘Renna-Holding’, ul. Privolnaya 25, Moscow

109145, Russian Federation (holder), represented by Agency Tria Robit, Vilandes

rice-based snack food; cereal-based snack food; fruit jellies

[confectionery]; candy decorations for cakes; confectionery for

decorating Christmas trees; cakes; pastries; peanut confectionery;

almond confectionery; frozen yogurt [confectionery ices]; caramels

[candy]; sweetmeats [candy]; liquorice [confectionery]; peppermint

sweets; custard; edible ices; candy; marzipan; ice cream; cocoa

beverages with milk; coffee beverages with milk; chocolate

beverages with milk; pastilles [confectionery]; biscuits; petit-beurre

biscuits; pies; fondants [confectionery]; popcorn; powders for ice

cream; pralines; fruit coulis [sauces]; confectionery; halvah; chips

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.

Decision on Opposition No B 2 671 199 page: 2 of 8

REASONS

The opponent filed an opposition against some of the goods and services of

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 30: Almond confectionery; bakery confectionery being frozen; boiled

confectionery chocolate products; confectionery containing jelly; confectionery

containing jam; confectionery having liquid spirit fillings; confectionery having liquid

fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in

frozen form; confectionery in liquid form; confectionery in the form of tablets;

confectionery items coated with chocolate; confectionery items formed from

chocolate; confectionery made of sugar; confectionery (non-medicated-);

confectionery products (non-medicated-); crystal sugar pieces [confectionery]; dairy

confectionery; dragees [non-medicated confectionery]; flavoured fillings for

confectionery; flavoured sugar confectionery; bread; pastries; ices; flour

confectionery; fondants [confectionery]; food supplements (non-medicated-) being

mint flavoured confectionery (non-medicated-); non-medicated chocolate

confectionery; non-medicated confectionery containing milk; non-medicated

confectionery in jelly form; non-medicated confectionery candy; non-medicated

confectionery containing chocolate; non-medicated confectionery having a milk

Decision on Opposition No B 2 671 199 page: 3 of 8

flavour; non-medicated confectionery having toffee fillings; non-medicated

confectionery in the form of lozenges; non-medicated confectionery in the shape of

eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-

chocolate; non-medicated flour confectionery coated with imitation chocolate; non-

medicated flour confectionery containing with chocolate; non-medicated flour

confectionery containing imitation chocolate; non-medicated mint confectionery; non-

medicated sugar confectionery; nut confectionery; orange based confectionery;

containing grains [confectionery]; snack bars containing nuts [confectionery]; snack

foods consisting principally of confectionery; stick liquorice [confectionery]; sweets

(non-medicated-) in the nature of sugar confectionery; truffles [confectionery]; truffles

(rum-) [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy];

chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel

wafers; bean-jam filled wafers (monaka); rolled wafers [biscuits]; cocoa; marzipan;

chocolate beverages; coffee.

The contested goods are the following:

Class 30: Cereal bars; high-protein cereal bars; pancakes; vareniki [stuffed

dumplings]; waffles; leaven; rice-based snack food; cereal-based snack food; fruit

biscuits; pies; pizzas; fondants [confectionery]; popcorn; powders for ice cream;

pralines; fruit coulis [sauces]; confectionery; halvah; chips [cereal products]; corn

flakes; oat flakes; chocolate.

As a preliminary remark, it should be noted that the term ‘principally’, used in the

opponent’s list of goods, 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 (on the use of ‘in particular’, which has

the same function as ‘principally’, see a reference in judgment of 09/04/2003,

T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter

[confectionery]; fondants [confectionery]; pralines; confectionery; chocolate; edible

ices are identically contained in both lists of goods.

Decision on Opposition No B 2 671 199 page: 4 of 8

The opponent’s ices are to be understood as ‘ice creams’. Therefore, the contested

ice cream and the opponent’s ices are identical.

category of, or overlap with, the opponent’s pastries. Therefore, they are identical.

The contested candy includes, as a broader category, the opponent’s non-medicated

confectionery candy. Since the Opposition Division cannot dissect ex officio the

The contested peppermint sweets include, as a broader category, the opponent’s

peppermint pastilles [confectionery]. 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 cocoa beverages with milk; chocolate beverages with milk are

included in the broad category of the opponent’s chocolate beverages. Therefore,

they are identical.

The contested coffee beverages with milk are included in the broad category of the

opponent’s coffee. Therefore, they are identical.

identical.

The contested fruit coulis [sauces]; corn flakes; oat flakes are included in the broad

category of the opponent’s ingredients for confectionery. Therefore, they are

identical.

The contested biscuits; petit-beurre biscuits are similar to the opponent’s pastries, as

they can have the same producers, end users and distribution channels.

Furthermore, they are in competition.

The contested chips [cereal products] are similar to the opponent’s chocolate, as

those goods have the same purpose, distribution channels and end users. In

The contested powders for ice cream are similar to the opponent’s ices, as they have

the same purpose. They can have the same end users and distribution channels.

Furthermore, they are in competition.

Decision on Opposition No B 2 671 199 page: 5 of 8

The contested custard is similar to a low degree to the opponent’s ices, as they can

have the same end users and distribution channels. Furthermore, they are in

The contested vareniki [stuffed dumplings]; pasta; mayonnaise; pizzas are dissimilar

to the opponent’s goods in Class 30. The goods under comparison have different

purposes and producers, as the contested goods are salty goods for the main dish of

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 considered average.

c) The signs

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). This applies by analogy to international registrations

designating the European Union. Therefore, a likelihood of confusion for only part of

the relevant public of the European Union is sufficient to reject the contested

application.

The coinciding element ‘KOROVKA’ is a Russian word, which is meaningless for

most of the consumers in the European Union. Consequently, as Russian is unofficial

Decision on Opposition No B 2 671 199 page: 6 of 8

but widely spoken in Slavic countries, the Opposition Division finds it appropriate to

focus the comparison of the signs on non-Slavic-language-speaking part of the

public.

The earlier sign is a figurative mark containing the word element ‘KOROKVA’ in a

stylised typeface with a dark outline that includes some orange shapes on an orange

background. This element is slightly curved. Above these elements, there is a

depiction of a cow in a field with five daisies.

fondants [confectionery]; confectionery; chocolate.

The contested sign is a figurative mark composed of the three-word element

‘KOROVKA IZ KORENOVKI’ in normal black upper case letters.

The contested sign has no meaning for the relevant public and is, therefore,

distinctive.

The signs have no elements that could be considered clearly more dominant than

other elements.

When signs consist of both verbal and figurative components, in principle, the verbal

Moreover, consumers generally tend to focus on the beginning of a sign when they

encounter a trade mark. This is because 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.

Visually, the signs coincide in the verbal element ‘KOROVKA’. However, they differ

in the additional figurative elements of the earlier sign, which are weak for some of

the goods, and in the two additional word elements, ‘IZ KORENOVKI’, in the

contested sign. The coinciding element of the signs is distinctive, is the first element

of the contested sign and is the only verbal element of the earlier sign. Therefore, the

signs are visually similar to an average degree.

Conceptually, neither of the verbal elements of the signs has a meaning. However,

the figurative elements of the earlier mark will be perceived by the relevant public as

a cow in a field with daisies, which is weak for some of the goods. Since the

Decision on Opposition No B 2 671 199 page: 7 of 8

contested sign will not be associated with any meaning, the signs are not

conceptually similar.

examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on

numerous elements and, in particular, on the recognition of the earlier mark on the

In addition, the global assessment of the risk of confusion entails certain

interdependence between the factors taken into account and, in particular, between

the similarity of the trade marks and the similarity of the goods or services covered.

Accordingly, a low degree of similarity between those goods or services may be

offset by a high degree of similarity between the marks, and vice versa (23/10/2002,

T-6/01, Matratzen, EU:T:2002:261, § 25).

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).

figurative element of the earlier sign has a meaning, it has less impact than the

verbal element of the sign, as seen in section c) above.

Decision on Opposition No B 2 671 199 page: 8 of 8

The coinciding element of the signs is the only word element of the earlier sign and

the first word element of the contested sign. Therefore, it is highly conceivable that

the relevant consumer will perceive the contested mark as a sub-brand, a variation of

services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the non-Slavic-language-speaking part of the public and

goods found to be identical, similar or similar to a low degree to those of the earlier

trade mark.

The rest of the contested goods are dissimilar. As 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

to bear its own costs.