OPPOSITION DIVISION
OPPOSITION No B 2 518 432
Intersnack Group GmbH & Co. KG, Peter-Müller-Str. 3, 40468 Düsseldorf,
Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354
Hamburg, Germany (professional representative)
a g a i n s t
Borrás S.L. de Productos Alimenticios, Marina Española, 20-22, 51002 Ceuta,
Spain (applicant), represented by Fernández-Palacios Abogados S.L.P., Plaza de
la Magdalena 9 – 4º, 41001 Sevilla, Spain (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 518 432 is partially upheld, namely for the following
contested goods:
Class 29: Oils and fats; processed fruits, fungi and vegetables (including nuts
and pulses); edible oils; vegetable fats for cooking; nut-based food
bars; potato-based snack foods; vegetable stock; dips; eggplant
paste; vegetable marrow paste; French fries; fruit desserts; fruit-
based snack food; jellies, jams, compotes, fruit and vegetable
spreads; candied fruit snacks; peanuts, prepared; almonds, ground;
jams; fruit spread; hazelnut spread; jellies for food; butter made of
nuts; fruit marmalade; marmalade; pastes made from nuts;
vegetable pate; coconut, desiccated; maraschino cherries;
compotes; fruit conserves; dates; cooked fruits; candied fruits; fruit
preserves; prepared fruits; ground nuts; nuts, prepared; processed
nuts; fruit jellies; dried pulses; processed pulses; fruit salads; fruit
paste; fruit pulp; fruit pie fillings; truffles, preserved; frozen
vegetables; preserved vegetables; vegetables, cooked; vegetables,
dried; fruit juices for cooking.
Class 30: Seasonings, porridge and grits.
2. European Union trade mark application No 13 698 469 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Decision on Opposition No B 2 518 432 page: 2 of 8
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 13 698 469 ‘MARUJA KING’, against part of the goods.
The opposition is based on European trade mark registration No 12 966 628
. 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.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Extruded and pelletised and otherwise manufactured or processed
vegetable and potato products; roasted, dried, salted, spiced, coated and processed
nuts, cashew kernels, pistachios, almonds, peanuts, coconuts (dried); preserved,
dried and cooked fruits and vegetables; ginger products being dried fruit; peanut
butter; weed extracts for food.
Class 30: Extruded and pelletised or otherwise manufactured or processed
tapioca, manioc, maize, wheat or other cereal products for snacks, and ginger
products being confectionery and fruit jellies; savoury biscuits and pretzels; muesli
Decision on Opposition No B 2 518 432 page: 3 of 8
bars, mainly consisting of nuts, dried fruits, processed cereal grains; chocolate and
chocolate products; sauces.
Class 31: Unprocessed nuts, cashew kernels, pistachios, almonds, peanuts and
seeds; algae for human consumption.
As a preliminary remark it must be noted that in a parallel decision (B 2 518 341) the
contested mark was rejected for a number of goods. This decision is now final after
appeal R1803/2016 and, consequently, the goods against which the present
opposition is directed are:
Class 29: Oils and fats; meats; processed fruits, fungi and vegetables (including
nuts and pulses); birds eggs and egg products; fish, seafood and molluscs; dairy
products and dairy substitutes; edible oils; vegetable fats for cooking; nut-based food
bars; potato-based snack foods; bouillon; vegetable stock; dips; eggplant paste;
vegetable marrow paste; French fries; fruit desserts; artificial milk based desserts;
desserts made from milk products; yoghurt desserts; fruit-based snack food; jellies,
jams, compotes, fruit and vegetable spreads; candied fruit snacks; peanuts,
prepared; almonds, ground; jams; fruit spread; hazelnut spread; jellies for food;
cocoa butter; butter made of nuts; fruit marmalade; marmalade; pastes made from
nuts; vegetable pate; coconut, desiccated; maraschino cherries; compotes; fruit
conserves; dates; cooked fruits; candied fruits; fruit preserves; prepared fruits;
ground nuts; nuts, prepared; processed nuts; fruit jellies; dried pulses; processed
pulses; fruit salads; fruit paste; fruit pulp; fruit pie fillings; edible seeds; seeds,
prepared; truffles, preserved; frozen vegetables; preserved vegetables; vegetables,
cooked; vegetables, dried; fruit juices for cooking; cheese; ice cream shakes; milk
shakes; cream [dairy products]; milk; butter; margarine; butter substitutes; whey;
tofu; yogurt.
Class 30: Starches, and goods made thereof, baking preparations and yeasts;
ice, salts, seasonings, canned pasta foods; yeast and leavening agents; dried and
fresh pastas, noodles and dumplings; pasta; porridge and grits; ice; ice for
refreshment; water ice.
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
The opponent’s goods in Class 29 are basically vegetable, potato, nut and fruit
products processed and presented in different ways. Consequently, the contested
goods in Class 29 processed fruits, fungi and vegetables (including nuts and pulses);
nut-based food bars; potato-based snack foods; vegetable stock; dips; eggplant
paste; vegetable marrow paste; French fries; fruit desserts; fruit-based snack food;
jellies, jams (listed twice), compotes (listed twice), fruit and vegetable spreads;
candied fruit snacks; peanuts, prepared; almonds, ground; jams; fruit spread;
hazelnut spread; jellies for food; butter made of nuts; fruit marmalade; marmalade;
pastes made from nuts; vegetable pate; coconut, desiccated; maraschino cherries;
compotes; fruit conserves; dates; cooked fruits; candied fruits; fruit preserves;
prepared fruits; ground nuts; nuts, prepared; processed nuts; fruit jellies; dried
pulses; processed pulses; fruit salads; fruit paste; fruit pulp; fruit pie fillings; truffles,
preserved; frozen vegetables; preserved vegetables; vegetables, cooked;
vegetables, dried; fruit juices for cooking are either identical or similar to the
Decision on Opposition No B 2 518 432 page: 4 of 8
opponent’s goods. They are identical either because they appear on both lists
(including synonyms), or because they overlap, or because the opponent’s goods
include the applicant’s. To give some examples: processed vegetables appear on
both lists, preserved fruits are protected by the opponent’s goods and can overlap
with the contested prepared fruits, and extruded and pelletised and otherwise
manufactured or processed (…) potato products include the contested French fries.
Also, some of the goods are similar to various degrees as they share a number of
criteria for a finding of similarity. For example the earlier mark protects processed
nuts, which is the basic and main ingredient of the contested nut-based food bars,
and the goods are in this case similar as they share the commercial origin and the
nature, and can be in competition with each other.
Oils and fats; edible oils; vegetable fats for cooking; are similar to the sauces
protected by the earlier mark in Class 29 as the goods have the same purpose, and
they can coincide in end user and method of use. Furthermore they are in
competition.
The rest of the goods (meats; birds eggs and egg products; fish, seafood and
molluscs; dairy products and dairy substitutes; bouillon; artificial milk based desserts;
desserts made from milk products; yoghurt desserts; cocoa butter; edible seeds;
seeds, prepared; cheese; ice cream shakes; milk shakes; cream [dairy products];
milk; butter; margarine; butter substitutes; whey; tofu; yogurt) are dissimilar to the
goods protected by the opponent’s mark in Classes 29 and 30, as they do not
coincide in nature, purpose, method of use, commercial origins and channels of
trade, and they are neither in competition nor complementary.
Contested goods in Class 30
Seasonings are similar to sauces, as they can coincide in producer, end user and
distribution channels.
The contested porridge and grits are similar to chocolate products, as the former can
be chocolate based or strongly favoured with chocolate, and the goods can have the
same producers, end users and distribution channels.
The rest of the goods are dissimilar to all the opponent’s goods as they do not
coincide in nature, purpose, method of use, commercial origins and channels of
trade, and they are neither in competition nor complementary.
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.
The goods can, furthermore, be related to habitual buying behaviour. Purchase
decisions in this area relate to, for example, inexpensive goods purchased on a daily
basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).
Therefore, the degree of attention when purchasing the relevant goods will vary from
below average to average depending on the price of the goods and the frequency of
their purchase.
Decision on Opposition No B 2 518 432 page: 5 of 8
c) The signs
MARUJA KING
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 common element of the marks, ‘KING’, is meaningful for the English-speaking
part of the public, whereas in this language the term ‘MARUJA’ will not be
understood. Consequently, the Opposition Division finds it appropriate to focus the
comparison of the signs on this public.
The earlier mark lacks elements that can be considered more dominant than others,
as the element ‘KING’ and the figurative representation of such have the same
relevance in the emblem on which they appear. As for the contested sign, being a
word mark it lacks dominant elements.
The applicant states that ‘KING’ is not fully distinctive for foodstuffs, and to support
this argument it refers to several trade mark registrations at EUIPO, and to several
trademarks that are being used in the market. Furthermore, it cites the decision in the
opposition proceedings B 2 207 523.
In the first place it must be stated 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.
In relation to the pictures sent with marks that contain ‘KING’ and are being used in
the market it must be clarified that in many of them the term is secondary to a
primary denomination, or it refers to the ‘king size’ of the products.
Decision on Opposition No B 2 518 432 page: 6 of 8
As for the decision in the prior opposition case cited by the applicant, it must be
remembered that the outcome of any particular case will depend on specific criteria
applicable to the facts of that particular case, including, for example, the parties’
assertions, arguments and submissions. Finally, a party in proceedings before the
Office may not rely on, or use to its own advantage, a possible unlawful act
committed for the benefit of some third party in order to secure an identical decision.
In relation to decision 04/09/2014, R 1675/2013-1, ‘Scux The King of Candy’ it must
be clarified that in this case ‘King’ was clearly secondary to ‘Scux’ and qualified
‘candy’, and therefore the particulars of this case are not commensurate to the
present proceedings. Furthermore, it can be added that there is enough Case Law
supporting the fact that KING, when seen on its own, does not lack distinctiveness
(25/07/2013, R 68/2013-1, The KING (FIG.MARK) / KING‟s et al., § 22).
The Opposition Division therefore finds that the common element of the marks ‘KING’
is distinctive, and it will be perceived by the consumers as a man who is the most
important member of the royal family of his country. The concept will be further
reinforced by the figurative element placed above the denomination. The term
‘MARUJA’ does not convey any meaning for the English-speaking public and
therefore it is also distinctive.
Visually, the signs coincide in the presence in both of them of the term ‘KING’ and
differ in the rest of the elements of the marks. In connection with the figurative items
present in the earlier mark it must be clarified that, as mentioned already, the
representation found above the denomination merely reinforces the term ‘KING’, and
as for the emblem on which both parts of the mark appear it must be noted that it is a
fairly common feature in marks. Even though the marks differ in the first
denomination of the contested sign, attention must be paid to the fact that the
common element plays an independent, distinctive role in both signs. Consequently,
the signs are visually similar to an average degree.
Aurally the marks coincide in ‘KING’ and differ in ‘MARUJA’; following the reasoning
made above the marks are aurally similar to an average degree.
Conceptually, the Opposition Division refers back to the comments made above in
relation to the verbal and figurative elements of the marks. The degree of similarity in
this level is high as the different element ‘MARUJA’ lacks any concept.
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
Decision on Opposition No B 2 518 432 page: 7 of 8
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
According to the case law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed
globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors
and, in particular, a similarity between the trade marks and between the goods or
services. Accordingly, a lesser degree of similarity between the goods or services
may be offset by a greater degree of similarity between the marks, and vice versa.
The public concerned is composed by average consumers and the level of attention
varies from low to average. The marks are visually and aurally similar to an average
degree and conceptually to a high degree.
The Opposition Division finds that, in view of all these circumstances, in the presence
of identical or similar goods, consumers may be led to believe that the goods at issue
originate from the same undertaking or at least economically linked undertakings
given 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). 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.
The opposition is therefore partly well founded on the basis of the earlier European
trade mark registration and the contested trade mark must be rejected for the goods
found to be identical or similar 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 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 2 518 432 page: 8 of 8
The Opposition Division
María Clara
IBÁÑEZ FIORILLO
María Belén IBARRA DE
DIEGO
Orsola LAMBERTI
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.