OPPOSITION No B 2 537 978
Miko N.V., Steenweg op Mol 177, 2300 Turnhout, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Edo S.p.A.,Viale Aldo Moro, 14, 24054 Calcio, Italy (applicant), represented by Dott. Franco Cicogna & C. Srl, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative).
On 16/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 537 978 is partially upheld, namely for the following contested goods:
Class 29: Meats; fish; non-living molluscs and crustaceans; poultry & game; meat extracts; ham; sausages; meat, preserved; preserved, dried and cooked fruits and vegetables; jellies; marmalade; milk; milk products; milk products; products; yoghurt; drinks made from dairy products; canned fruits; pickles; vegetable preserves; meat, preserved; canned fish.
Class 30: Pastry dough; caramels; coffee; tea; cocoa; sugar; tapioca; artificial coffee; flour; cereals; bread; cake dough; tarts; confectionery; pralines; edible ices; honey; syrup; coffee, cocoa or chocolate beverages.
Class 32: Beer; mineral waters; aerated and other non-alcoholic drinks; syrups; products for making beverages; juices; fruit juice beverages.
2. European Union trade mark application No 13 781 489 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 13 781 489. The opposition is based on European Union trade mark registrations No 4 511 242 and No 8 842 346 and Benelux trade mark registrations No 843 833 and No 800 475. The opponent invoked Article 8(1)(b) EUTMR.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 4 511 242 and No 8 842 346 and Benelux trade mark registration No 843 833.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of European Union trade mark registrations No 4 511 242 and No 8 842 346 and Benelux trade mark registration No 843 833.
The request was submitted in due time and is admissible, given that the earlier trade marks were, with the exception of earlier European Union trade mark registration No 8 842 346, registered more than five years prior to the publication of the contested application.
The contested application was published on 23/03/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, as regards European Union trade mark registration No 4 511 242, and in the Benelux, as regards Benelux trade mark registrations No 843 833 and No 800 475, from 23/03/2010 to 22/03/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:
European Union trade mark registration No 4 511 242, for the figurative mark
Class 11: Installations and apparatus, all for making and/or producing coffee; and parts and accessories for all the aforesaid services.
Class 21: Sugar bowls; teapots; percolators, coffee filters; coffee grinders, kitchen containers; cups and plates.
Class 30: Coffee; coffee extracts, artificial coffee, filters in the form of paper bags filled with coffee.
Benelux trade mark registration No 843 833, for the word mark ‘PURO’
Class 11: Electric machines and apparatus for preparing coffee, tea, cocoa drinks, soups and soft drinks for, amongst which, use in canteens and showrooms; coffee percolators (electric); coffee roasters, electric coffee filters, electric coffee roasters, electric coffee machines; water distribution apparatus; water purification machines.
Class 30: Coffee; coffee extracts, artificial coffee, coffee pads, tea, cocoa, sugar, sago, artificial coffee; flour, preparations made from cereals, bread, cookies, biscuits, pastry and confectionery; ices; honey, treacle.
Class 43: Services for providing food and drink; temporary accommodation.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 18/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/03/2016 to submit evidence of use of the earlier trade marks. On 11/03/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Items 1-6: various invoices addressed to clients in Belgium, Germany, Ireland, the Netherlands, Romania, Slovakia, Finland and the United Kingdom dated 2010, 2011, 2012, 2013, 2014 and 2015. The invoices refer to coffee, sugar sticks, milk cups, biscuits, tea, cups and mugs, chocolate drinks, among other products, all under the mark ‘PURO’.
- Item 7: a list of products with their corresponding reference numbers, directly correlated with the products mentioned in the invoices. There are also images of coffee bags, sugar sticks, tea bags, coffee machines, cups and mugs, in which the mark
can be seen. The cover and end pages of these documents were also submitted, in which the mark
- Item 8: a leaflet dated 2014, with images of sugar sticks, a mug, milk cups and biscuits, in which the mark
- Item 9: images of articles such as coffee, sugar sticks, milk cups, biscuits, tea, cups and mugs, chocolate drinks and biscuits, in which the packaging shows the trade mark
The applicant argues that the opponent did not submit translations of the invoices. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). The opponent translated the relevant parts and taking into account the nature of the documents, and their self-explanatory character, the Opposition Division considers that there is no need to request a more detailed translation of these documents.
The applicant argues that not all the items of evidence indicate genuine use in terms of the extent, nature and use of the goods and services for which the earlier marks are registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
From the addresses mentioned on the invoices, it can be inferred that the place of use is Belgium, Germany, Ireland, the Netherlands, Romania, Slovakia, Finland and the United Kingdom. Therefore, the evidence relates to the relevant territories.
Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.
Time of use
Most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the opponent contains sufficient indications concerning the time of use.
Extent of use
The Court of Justice has held that ‘use of the mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145).
As far as this indication is concerned, the General Court has stated that ‘account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’ (08/07/2004, T-334/01, Hipoviton, EU:T:2004:233).
The assessment of genuine use ‘entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa’ (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
It is true that there are invoices in which the sum relating to the sale of ‘PURO’ products is low, for example, EUR 200, and therefore substantial use of the mark by the opponent could be questionable. However, the opponent did not merely submit a few invoices, more than 70 invoices dated between 2010 and 2015 were submitted; some were for low sums of money, but others were for larger sums, such as EUR 3 500. Moreover, the invoices demonstrate frequent sales transactions involving each year of the relevant period, and therefore provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the opponent’s marks. The information presented on the invoices demonstrates that the quantitative aspects of use were not merely token, but were sufficient to establish commercial amounts of transactions related to the goods at issue. In addition, the invoices submitted by the opponent are only samples and do not indicate the total sales (as can be inferred from the non-consecutive numbering of the invoices).
Therefore, it is concluded that the evidence provides sufficient indications regarding the extent of use of the earlier marks.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the earlier trade marks and ‘PURO’ are present in the materials submitted and goods bearing these marks appear on the invoices. Moreover, it is true that the items listed on the invoices are described with only a ‘code number’ and a short description of the product (e.g. ‘KOFF PURO’) and that the earlier figurative marks do not appear directly on the invoices. Nevertheless, a link can be established between the items on the invoices and the list of products and also with the images of the products submitted. The code structure from the invoices coincides with that from the listing, which leads to the conclusion that they refer to the same product.
The applicant argues, however, that the opponent has not shown use of the marks as registered, but as the word ‘PURO’ in combination with the elements ‘Fairtrade coffee saving the forest’. The Opposition Division considers that the use of the earlier marks in combination with these elements does not alter the distinctive character of the earlier marks, since the terms are purely descriptive, are written in small characters and occupy a secondary position, at the bottom of the sign. The use of these words is not sufficient to call into question the conclusion on the use of the marks, since, because of their weak distinctive character and their ancillary position, those additions do not alter the distinctive character of the marks in the form in which they are registered.
The applicant also argues that the word trade mark ‘PURO’ should not be protectable, since it is an adjective describing a quality of the product and a commonly used word in Italian, which is the language of a Member State of the European Union.
In this regard, earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. Earlier registered trade marks are therefore presumed to have at least a minimum degree of inherent distinctiveness.
In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
Overall assessment
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.
However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case, the evidence shows genuine use of the earlier trade marks for the following goods:
European Union trade mark registration No 4 511 242
Class 21: Cups.
Class 30: Coffee; filters in the form of paper bags filled with coffee; coffee pads.
Benelux trade mark registration No 843 833
Class 30: Coffee; coffee pads, tea, sugar, cookies, biscuits.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 4 511 242
Class 21: Cups and plates.
Class 30: Coffee; filters in the form of paper bags filled with coffee; coffee pads.
Benelux trade mark registration No 843 833
Class 30: Coffee; coffee pads, tea, sugar, cookies, biscuits.
European Union trade mark registration No 8 842 346
Class 11: Electric machines and apparatus for preparing coffee, tea, chocolate beverages, soups and soft drinks including for use in cantines and show rooms; coffee makers (electric); coffee roasters, electric coffee filters, electric coffee roasters, electric coffee makers; water purifying machines.
Class 30: Sugar, sago; flour, preparations made from cereals, bread, cookies, biscuits, pastry and confectionery; ices; honey, treacle.
Class 43: Services for providing food and drink; temporary accommodation.
The contested goods are the following:
Class 29: Meats; fish; non-living molluscs and crustaceans; poultry & game; meat extracts; ham; sausages; meat, preserved; preserved, dried and cooked fruits and vegetables; jellies; marmalade; eggs; milk; milk products; milk products; cheese products; butter; yoghurt; drinks made from dairy products; edible oils and fats; pickles; canned fruits; vegetable preserves; meat, preserved; canned fish.
Class 30: Pastry dough; farinaceous food pastes; caramels; coffee; tea; cocoa; sugar; rice; tapioca; artificial coffee; flour; cereals; bread; cake dough; tarts; confectionery; pralines; edible ices; honey; syrup; pepper spice; vinegar; sauces; spices; ice; coffee, cocoa or chocolate beverages.
Class 32: Beer; mineral waters; aerated and other non-alcoholic drinks; syrups; products for making beverages; juices; fruit juice beverages.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, 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 (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 29
The opponent’s ices in Class 30 refer to a smooth, sweet, cold food prepared from a mixture of milk products and/or flavourings, which is often eaten as a snack or dessert. To this extent they have the same nature and serve the same purpose as the contested milk products (listed twice); yoghurt; and drinks made from dairy products. They are in competition, can originate from the same undertakings, target the same consumers and are offered through the same trade channels. They are, therefore, similar to a high degree.
The opponent’s honey in Class 30 is similar to the contested preserved fruits; jellies; and marmalade, as they have the same purpose (sweet foods used in cooking, baking or desserts/used as an addition, e.g. as a spread on bread). They can have the same end users, distribution channels and method of use. Furthermore, they are in competition. Therefore, the goods are similar.
The contested milk is a product that has a similar nature and purpose to the opponent’s ices. Furthermore, the goods could have the same producers and sales outlets. Therefore, the above goods are considered to be similar to a low degree.
There is a low degree of similarity between the contested meats; fish; non-living molluscs and crustaceans; poultry & game; meat extracts; ham; sausages; meat, preserved (listed twice); dried and cooked fruits and preserved, dried and cooked vegetables; canned fruits; vegetable preserves; canned fish; and pickles and the opponent’s services for providing food and drink in Class 43. Even though the comparison is between services on the one hand and goods on the other, the different natures and purposes of those goods and services cannot counteract the similarity that exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services (12/12/2014, T-405/13, da rosa, EU:T:2014:1072, § 97).
As regards the contested eggs; cheese products; butter; edible oils and fats, these goods have a different nature from the opponent’s goods in Classes 11, 21 and 30, as well as the opponent’s services in Class 43. They are not manufactured/provided by the same producers, have different methods of use and are not complementary. Although in some cases they may have the same purpose and can even be in competition (e.g. bread versus rice), this is not sufficient to find similarity between these goods. Therefore, they are dissimilar. The contested cheese products and butter could conceivably come from similar producers to the opponent’s ices. However, they differ in all the other criteria, especially their nature (sweet versus savoury), method of use, target public and distribution channels. Therefore, on balance, the Opposition Division finds these goods to be dissimilar.
Contested goods in Class 30
The contested coffee; tea; sugar; bread; flour; confectionery; and honey are identically contained in both lists of goods.
The opponent’s ices are synonymous with the contested edible ices in Class 30 and they are, therefore, identical.
The contested caramels; tarts; and pralines are included in the broad category of the opponent’s pastry and confectionery. Therefore, they are considered identical.
The contested pastry dough; cake dough; and farinaceous food pastes are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.
The contested coffee beverages are included in the broad category of the opponent’s coffee. Therefore, they are considered identical.
The contested artificial coffee is highly similar to the opponent’s coffee, since they have the same method of use, target the same public and are in competition. Furthermore, these goods have the same manufacturers and distribution channels.
As regards the contested cocoa or chocolate beverages, cocoa is similar to the opponent’s coffee. They are all beverages that can be prepared hot or cold and are usually consumed at the same moments of the day. They have the same method of use, share the same distribution channels, target the same public and are in competition with each other.
The contested syrup is similar to the opponent’s sugar. These goods can be in competition and can be directed at the same consumers. They frequently share the same distribution channels and coincide in their points of sale.
The contested tapioca is similar to the opponent’s sago. They have the same method of use, can be produced by the same undertakings and sold through the same distribution channels. Furthermore, they may be in competition with each other.
The contested cereals and rice are considered to be similar to a low degree to the opponent’s preparations made from cereals, as they can serve as basic ingredients of the aforementioned opponent’s goods, have the same purpose (to be eaten) and coincide in their end users and distribution channels.
The contested pepper spice; vinegar; sauces; and spices have a different nature from the opponent’s goods in Classes 11, 21 and 30, as well as the opponent’s services in Class 43. They are not manufactured/provided by the same producers, they have different methods of use and are not complementary. Although in some cases they may have the same purpose and can even be in competition, this is not sufficient to find similarity between these goods. Therefore, they are dissimilar.
The contested ice is to be understood as cooling ice, namely just frozen water, which is used to preserve food or to cool liquids. The mere fact that the opponent’s ices are frozen is not sufficient to establish even a low degree of similarity between them, given the differences between these goods as regards their purposes, methods of use, usual distribution channels and manufacturers. Moreover, they also have a different nature from the opponent’s goods in Classes 11, 21 and 30, as well as the opponent’s services in Class 43. They are not manufactured/provided by the same producers, have different methods of use and are not complementary. Therefore, they are dissimilar.
Contested goods in Class 32
The contested beer; mineral waters; aerated and other non-alcoholic drinks; syrups; products for making beverages; juices; and fruit juice beverages are similar to a low degree to the opponent’s services for providing food and drink in Class 43. It is true that goods are, by their nature, different from services, and that the provision of food and drinks as services in Class 43 entails preparing and serving drinks, whereas the contested goods as goods in Class 32 are merely meant to be consumed to quench thirst or for enjoyment. However, the fact that the contested goods and the provision of food and drinks have some relevant points in common outweighs these differences. In Spain, for example, beers are served in places that serve food and drinks. There is a close connection as regards the purpose of beers and the services of providing food and drink, because people go to places where food and drink are served to have a drink and, perhaps, a beer. In that sense, beers and the services of providing food and drink are strictly complementary, since the provision of drinks (including beers) is the core activity of establishments such as bars.
- 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 and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.
- The signs
|
(1) European Union trade mark registration No 4 511 242,
PURO
(2) European Union trade mark registration No 8 842 346, (3) Benelux trade mark registration No 843 833
|
|
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Earlier trade marks |
Contested sign |
For earlier marks (1) and (2), the relevant territory is the European Union, whereas for earlier mark (3), the relevant territory is Benelux.
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.
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).
Earlier trade mark (1) is a figurative mark composed of the verbal element ‘PURO’, written in stylised upper case letters, and the figurative elements of a coffee bean and a leaf. The letters ‘PUR’ and the leaf are depicted in green, while the coffee bean and the letter ‘O’ are depicted in brown. Earlier trade marks (2) and (3) are both word marks comprising the verbal element ‘PURO’.
The contested sign is a figurative mark composed of the verbal element ‘PURO’ in large grey upper case letters, with the figurative element of a black leaf depicted inside the letter ‘O’. Below, the expression ‘Simply natural’ is written in a smaller size and black italic lower case letters.
The element ‘PURO’, which is contained in all of the compared marks, does not have any meaning in French, but is similar to the word ‘pur’ in French, meaning ‘pure, not mixed, unblended’. Although ‘PURO’ in all the signs may bring to mind the French word ‘PUR’, this association may require several mental steps and, therefore, the coinciding element, ‘PURO’, is not sufficiently similar to the word ‘PUR’ to be considered weakly distinctive.
Earlier mark (1) will, however, be understood as referring to pure coffee or coffee related goods, because of the graphic representation of a coffee bean and because the letters ‘PUR’ are depicted in the same colour (green), in contrast with the last letter, ‘O’.
The expression ‘SIMPLY NATURAL’ of the contested sign is made up of basic English words and therefore will be understood by the French-speaking part of the public as meaning ‘something just existing in or formed by nature and not by humans; not artificial’. Given that the relevant goods are all related to the food sector, the inherent distinctiveness of these terms decreases, since they can be considered as alluding to the quality and nature of the goods.
As regards the coffee bean of earlier mark (1) and the leaf of the same earlier mark and of the contested sign, those elements will be understood as such by the relevant public. Bearing in mind that some of the relevant goods are coffee, or coffee-based beverages, these elements are considered non-distinctive for the coffee-related goods. Consequently, the impact of these non-distinctive elements is limited when assessing the likelihood of confusion between the marks at issue. For the remaining goods, it has an average degree of distinctiveness.
In view of the foregoing, the element ‘PURO’ constitutes the more distinctive element in earlier mark (1) and in the contested sign.
Earlier marks (2) and (3) have no other distinctive elements.
As regards the earlier marks, none of them has an element that can be considered clearly more dominant (visually eye-catching) than other elements.
The element ‘PURO’ of the contested sign is the dominant element due to its larger size compared with the other elements.
Visually, the signs coincide in the verbal element ‘PURO’ and in the representation of a leaf in earlier mark (1), although their graphic representation is not identical. Therefore, the first element of the contested sign and the sole verbal element of the earlier marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. This holds all the more true when taking into account that the secondary and additional expression, ‘SIMPLY NATURAL’, of the contested sign is weak for the goods at issue.
Moreover, they differ in the remaining figurative elements of all the marks, with the exception of earlier marks (2) and (3), as mentioned above. However, in this respect, it should be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PURO’, present identically in all the signs. The pronunciation differs in the sound of the letters corresponding to the expression ‘SIMPLY NATURAL’ of the contested sign, which have no counterparts in the earlier signs. However, this expression is weak for the goods at issue, as explained above, and due to its secondary position within the sign and the fact that it is formed of English words, it may not be pronounced by the French-speaking part of the public.
Therefore, the signs are aurally similar to an average degree.
Conceptually, as mentioned above, the French-speaking part of the public may associate the word ‘PURO’ in the signs with the French word ‘pur’ meaning ‘pure, not mixed, unblended’ whereas the non-distinctive words ‘SIMPLY NATURAL’, present in the contested sign will be associated with ‘something just existing in or formed by nature and not by humans; not artificial’. The figurative element of a coffee bean in earlier mark (1) and a leaf in earlier mark (1) and the contested sign will be perceived as such by all of the public in the relevant territory.
In view of the foregoing, 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.
- Distinctiveness of the earlier marks
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 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 for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of non-distinctive elements in the case of earlier trade mark (1) as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
In the present case, the contested good are identical or similar to different degrees to the earlier goods and services, and the signs are visually similar to an average degree and aurally and conceptually similar to a high degree. The earlier marks are inherently distinctive to a normal degree.
In view of the fact that the signs have the verbal element ‘PURO’ in common, whereas the differences between the signs lie in elements that are either non-distinctive or have less impact on the consumers for the reasons explained, the relevant public is likely to associate the contested sign with the earlier marks, and believe that the goods and services found to be identical or similar to different degrees originate from the same undertaking or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade marks.
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.
The opponent has also based its opposition on the following earlier trade mark: Benelux trade mark registration No 800 475, , registered for the following goods and services:
Class 11: Coffee percolators (electric).
Class 30: Coffee; coffee extracts, coffee substitutes, coffee pad.
Class 43: Providing of food and drinks; temporary accommodation.
Since this mark covers the same or a narrower scope of goods and services of the other earlier rights, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
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Marta GARCÍA COLLADO
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Cristina CRESPO MOLTO |
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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.