OPPOSITION No B 2 759 796

Víctor Guedes – Indústria e Comércio, S.A., Largo Monterroio Mascarenhas nº 1, 1070-184 Lisbon, Portugal (opponent), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Fiori d’Arancio S.R.L., Via S.S. 115 dir. Selinunte km 0+500, 91022 Castelvetrano (TP), Italy (applicant).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 796 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 445 372. The opposition is based on, inter alia, European Union trade mark registration No 5 540 299. 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.

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 5 540 299.

1. The goods

The goods on which the opposition is based are the following:

Class 29:        Olive oil, edible oils and fats.

The contested goods are the following:

Class 29:        Oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); meats; dairy products and dairy substitutes; fish, seafood and molluscs; olive oil; extra-virgin olive oil.

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.

Oils and fats; olive oil are identically contained in both lists of goods.

The contested extra-virgin olive oil is included in the broad category of the opponent’s olive oil. Therefore, they are identical.

The contested dairy products and dairy substitutes are similar to the opponent’s edible oils and fats, as they have the same purpose and can coincide in end users. Furthermore, they are in competition.

The contested processed fruits, fungi and vegetables (including nuts and pulses) are foodstuffs of vegetal origin, while the contested meats; fish, seafood and molluscs are nourishment of animal origin. These goods do not have anything in common with the opponent’s goods, which are vegetal and/or animal oils and fats. They are not usually produced by the same undertakings and do not have the same nature or method of use. The fact that the goods to be compared fall under the same broad category (in the present case, foodstuffs for human consumption) does not automatically mean that they have the same nature. Although they have the same distribution channels, these goods are not sold in the same sections of groceries and supermarkets. Therefore, they are dissimilar.

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 goods found to be identical or similar are directed at the public at large. The degree of attention will vary from low to average, since they consist of foodstuffs that are purchased at a relatively cheap price.

3. The signs

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 earlier mark is a purely figurative mark composed of a stylised figurative element depicting a rooster in black, white and shades of grey. The element has no connection with the relevant goods; therefore, it has an average degree of distinctiveness.

The contested sign is a figurative mark that includes the verbal element ‘CENTONZE’ in golden upper case letters. This element is meaningless and, therefore, distinctive. The mark also includes a depiction of a rooster in various colours on a golden circle; the rooster is distinctive because it has no connection with the relevant goods and the circle has a limited degree of distinctiveness because of its simplicity and decorative nature.

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). Therefore, the graphic devices and the stylisation of the word component of the mark have less relevance in the present comparison than the verbal element ‘CENTONZE’.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs differ in the word ‘CENTONZE’ of the contested sign, which has no counterpart in the contested sign, and in the stylisation and colours of the figurative elements that depict roosters. Although both signs include a stylised depiction of that animal, its figurative presentation is completely different.

The signs also differ in the previously described circular element of the contested sign; however, as was concluded above, this element does not play a meaningful role in the distinctiveness of the sign in question.

As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering that both signs will be perceived as consisting of or including the depiction of a rooster, 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.

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.

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 relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The relevant goods are partly identical, partly similar and partly dissimilar. The degree of attention of the relevant public, which is the general public, varies from low to average and the earlier mark has an average degree of distinctiveness.

The signs are visually dissimilar because of their significant structural differences, namely the distinctive verbal element in the contested sign, which has no counterpart in the contested sign, and the graphic presentation of the figurative elements of the signs (including the less distinctive element of the contested sign). The signs are conceptually highly similar.

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). Nonetheless, in the present case, the identity and similarity among the relevant goods, as well as the conceptual similarity between the marks, cannot overcome the visual differences, which are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

Regarding the conceptual aspect of the comparison, conceptual identity may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24); however, this is not applicable in the present case, where the distinctiveness of the earlier mark is only average and there is not a conceptual identity but an high similarity.

In exceptional cases, likelihood of confusion may be found if the conceptual similarity or identity is accompanied by a certain visual similarity (14/12/2006, T-81/03, T-82/03 & T-103/03, Venado, EU:T:2006:397), which is not the case in the present assessment, where the signs are not visually similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 10 194 447, ;
• European Union trade mark registration No 10 194 521, .

These earlier rights are less similar to the contested mark. This is because they contain further figurative elements (i.e. the colours in the depiction of the rooster of European Union trade mark registration No 10 194 521) and additional words such as ‘GALLO’, which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

Francesca CANGERI SERRANO

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.