OPPOSITION No B 2 776 006

Sánchez Cano, S.A., Crta. Madrid, Km. 385, 30500 Molina del Segura (Murcia), Spain (opponent), represented by Garrigues IP, S.L.P, C/ San Fernando 57, 03001 Alicante, Spain (professional representative)

a g a i n s t

BMB Spółka z ograniczoną odpowiedzialnością, Spółdzielcza 5, 05-600 Grójec, Poland (applicant), represented by Kancelaria Patentowa Sitko Czubkowska S & C Patent Społka Partnerska, Inflancka 5/5, 00-189 Warsaw, Poland (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 776 006 is upheld for all the contested services.

2.        European Union trade mark application No 14 824 296 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 824 296 ‘FINI MINI’ (word). The opposition is based on, inter alia, European Union trade mark registration No 8 402 241 . The opponent invoked Article 8(1)(b) EUTMR in relation to the above earlier trade mark and Article 8(1)(b) and 8(5) EUTMR in relation to the remaining two earlier trade marks.

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 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 registration No 8 402 241.

1. The services

The goods and services on which the opposition is based are, inter alia, the following:

Class 35:        Retailing and wholesaling of stick liquorice, chocolate caramels, caramels and peppermint sweets, chewing gum, jellybeans and chocolate bars, ingredients used in making the aforesaid goods, in particular, starch, sugar, cocoa, chocolate, sweeteners and syrups; advertising; business management; business administration; office functions.

The contested services are the following:

Class 35:        Advertising via electronic media and specifically the internet; Advertising through all public communication means; Advertising in periodicals, brochures and newspapers; Advertising; Banner advertising; Brand creation services (advertising and promotion).

Advertising is identically contained in both lists of services.

The contested advertising via electronic media and specifically the internet; advertising through all public communication means; advertising in periodicals, brochures and newspapers; banner advertising; brand creation services (advertising and promotion) are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

2. 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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention will be high because advertising is of utmost importance for the smooth running of the relevant customer’s business and is often quite costly.

3. The signs

	FINI MINI
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 ‘FINI’ is meaningful in certain territories, for example, in those countries where Croatian, Spanish, Hungarian, Bulgarian or French is understood. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom this element has no meaning, such as the German, Latvian, Dutch and Estonian -speaking public.

The element ’FINI’ included in both marks has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark also includes the image of a smiling elephant that will be perceived by the relevant public as a cartoon character. This element is distinctive in relation to the relevant services.

The element ‘MINI’ of the contested sign is a universally understandable expression that is generally associated with something small or reduced. Bearing in mind that the relevant services are related to advertising, this element is somewhat weak for all the contested services because it may refer, for example, to advertising on a small (minimal) scale or to the low (minimal) prices charged for the services.

The marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements. The opponent claims that the element ‘Fini’ in the earlier mark is the dominant element. However, even if it is the only verbal element of the sign and appears in the foreground (in front of the elephant and the oval shape), it cannot be concluded that this element clearly stands out from the other elements.

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).

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 element ‘FINI’ which is the only verbal element of the earlier trade mark and the initial verbal element of the contested sign (that first catches the attention of the public). The fact that this element is depicted in title case in the earlier trade mark and in upper case in the contested sign has no bearing on the comparison of the marks because the contested sign is a word mark. Protection is therefore sought for the word itself, and not for the particular way in which the mark is written.

On the other hand, the marks differ in all the figurative elements of the earlier sign, including the stylised script, the picture of a smiling elephant, a set of colourful dots and the oval background, as seen above. The marks also differ in the weak element ‘MINI’ contained in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FINI’, present identically in both signs. The pronunciation differs in the sound of the letters ‛MINI’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the earlier mark contains the concept of a smiling elephant whereas the contested sign contains the element ‘MINI’ whose meaning has been established above. Consequently, the marks are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services have been found identical. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will be high.

The marks are visually and aurally similar to an average degree. However, the marks will be associated with different concepts. Nevertheless, the common element ’FINI’ is the only word element of the earlier trade mark (and therefore has the strongest impact) whereas ‘FINI’ in the contested sign is the most distinctive element (‘MINI’ being weak) and is placed in the prominent position at the beginning of the mark. Consequently, and despite the different concepts, the overall impressions created by the marks are similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, it is very likely that the public will perceive the contested sign as a modification of the earlier trade mark based on the same core distinctive element ‘FINI’.

Considering all the above, there is a likelihood of confusion on the part of the German, Latvian, Dutch and Estonian -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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 402 241. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the aforementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR, claimed for the remaining two earlier trade marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Marta GARCÍA COLLADO

Vít MAHELKA

Lucinda CARNEY

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.