OPPOSITION DIVISION
OPPOSITION No B 2 551 987
Joaquim Almela Vicent, Calle Ultonia, 3 – 3º 2ª, 17002 Girona, Spain (opponent),
represented by AB Asesores, Balmes, 180 – 4º 2ª, 08006 Barcelona, Spain
(professional representative)
a g a i n s t
Hors Limited, 26 Nikou Pattichi Str., 3071 Limassol, Cyprus (applicant), represented
by HGF Limited, 1 City Walk, Leeds LS11 9DX, United Kingdom (professional
representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 551 987 is upheld for all the contested goods.
2. European Union trade mark application No 13 943 287 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods of European Union trade mark
application No 13 943 287 for the figurative mark , namely against all the
goods in Class 30. The opposition is based on Spanish trade mark registration
No 3 501 608 for the figurative mark . 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
Decision on Opposition No B 2 551 987 page: 2 of 5
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: Coffee, also coffee in filter wrapper, coffee-based beverages; coffee and
coffee beverages containing milk, milk powder, artificial coffee, cocoa,
chocolate, cereals, fruits, sugar, herbs or spices or a combination of both;
coffee extracts, instant coffee, artificial coffee: tea, tea-based beverages,
tea leaves, herbal tea, tea extracts, instant tea, artificial tea; tea infusions,
non-medical infusions; cocoa, cocoa-based beverages; chocolate and
cocoa powder extracts, granulated or liquid chocolate; sugar, spices; herbs
for the preparation of beverages.
The contested goods are the following:
Class 30: Coffee; artificial coffee; coffee-based beverages.
The contested coffee; artificial coffee; coffee-based beverages are identically
contained in both lists of goods.
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 are directed at both professionals
and the public at large.
The degree of attention is considered to be average.
c) The signs
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).
Decision on Opposition No B 2 551 987 page: 3 of 5
Both earlier and contested marks are figurative.
The earlier mark contains two elements – the verbal element ‘AVANTI’, depicted in
ordinary style upper-case letters, and the figurative element constituting part of the
letter ‘V’ depicting a stylised leaf. Since the notion of a leaf can be related to the coffee
plant, this element is weak. The word ‘AVANTI’ strongly resembles the Spanish word
‘avante’ meaning ‘forward’ and, therefore, it is likely that the relevant public would
associate the earlier mark with this meaning. Since the verbal element does not have a
direct clear meaning in relation to the relevant goods, it is distinctive and the applicant’s
claim that the word is laudatory and has a weak distinctive character must be set aside.
None of the elements is clearly dominant in the overall composition of the sign.
The contested sign contains the fairly stylised verbal element ‘AVANTI’, depicted in
block upper case letters that widen at the bottom. The first two letters are green, the
middle two letters are white and the last two letters are red, which allude to the Italian
flag and, presumably, hint at a particular quality of products. Therefore, this element is
very weak. The verbal element does not have a meaning in relation to the relevant
goods in the relevant territory and so is distinctive.
Notwithstanding the applicant’s claims that the average consumer relies on the
stylisation and figurative elements of the signs and not on the words, when a sign
consists 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). None of the
elements is clearly dominant in the overall composition of the sign.
Visually, the signs coincide in the distinctive verbal elements ‘AVANTI’. However, they
differ in the stylisation and in the weak figurative elements. Therefore, the signs are
visually highly similar.
Although the applicant emphasises the striking differences in stylisation (font and
colours), it should be noted that these differences, as mentioned above, are mostly
conveyed by the weak figurative elements, namely the leaf and the association with the
Italian flag, and so they have little trade mark significance to the customer.
Aurally, the signs are identical, since the figurative elements will not be pronounced.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the distinctive verbal elements in the two signs are
the same and have the same meaning and only the weak figurative elements convey
different meanings, the signs are conceptually highly similar.
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 his mark is particularly distinctive by virtue of
intensive use or reputation.
Decision on Opposition No B 2 551 987 page: 4 of 5
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 weak element in the mark, as stated above in
section c) of this decision.
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).
The signs are visually and conceptually highly similar and aurally identical.
As the goods are identical, it is highly conceivable that the relevant consumers would
perceive the contested sign as a variation of the earlier mark. 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).
In its observations, the applicant argues that the earlier trade mark has a weak
distinctive character given that many trade marks include the element ‘AVANTI’. In
support of its argument the applicant refers to some trade mark registrations in the
European Union and Spain.
The Opposition Division notes that the existence of several trade mark registrations is
not per se particularly conclusive, as it does not necessarily reflect the situation in the
market. In other words, on the basis of register data only, it cannot be assumed that all
such trade marks have been effectively used. It follows that the evidence filed does not
demonstrate that consumers have been exposed to widespread use of, and have
become accustomed to, trade marks that include the element ‘AVANTI’. Under these
circumstances, the applicant’s claims must be set aside.
The applicant claims that, in principle, the shorter the signs in question are, the more
easily the public will be able to perceive all their single elements. This claim is not really
pertinent in this case, since, as detailed above, the differences between the signs
mostly lie in the weak figurative elements and, moreover, both signs share the
distinctive element ‘AVANTI’.
Considering all the above, and based on the average degree of inherent distinctiveness
of the earlier mark, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade
mark registration No 3 501 608. It follows that the contested trade mark must be
rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 551 987 page: 5 of 5
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Denitza STOYANOVA-
VALCHANOVA
Milda CERNIAUSKAITE Martin EBERL
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.
The amount determined in the fixation of the costs may only be reviewed by a decision
of the Opposition Division on request. According to Article 109(8) EUTMR (former
Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within
one month of the date of notification of this fixation of costs and will be deemed to have
been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been
paid.