OPPOSITION No B 2 688 946

Pralibel N.V., Jagershoek 21, 8570 Vichte, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative)

a g a i n s t

Closed Joint-Stock Company Chocolate factory "Novosibirskaya", ul. Nikitina 14, Novosibirsk 630009, the Russian Federation (holder), represented by Foral Patent Law Offices, Kaleju 14-7, Riga 1050, Latvia (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 946 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 268 816, . The opposition is based on European Union trade mark registration No 6 747 554, ‘PRALIBEL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the holder. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

1. The goods and services

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

Class 30:        Chocolate and chocolate products.

Class 35:        Bringing together, for others, of chocolate and chocolate products (except the transport thereof) enabling customers to conveniently view and purchase those goods.

The contested goods are the following:

Class 30:        Confectionery made of sugar, namely waffles, caramels, sweets, marshmallow, chocolate, pralines, biscuits, fruit jellies [confectionery].

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of the goods included there.

The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

Chocolate is identically contained in both lists of goods. 

The contested pralines are included in the broad category of the opponent’s chocolate products. Therefore, they are identical.

The contested waffles, caramels, sweets, marshmallow, biscuits overlap with the opponent’s chocolate products since they are often coated with chocolate or contain chocolate. Therefore, they are identical.

The contested fruit jellies [confectionery] and the opponent’s chocolate products may have the same commercial origin, distribution channels and relevant public. Furthermore, they are in competition, as consumers may choose between them to satisfy the same need (that of having a dessert). Therefore, they are similar.

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 is considered to be average.  

3. The signs

PRALIBEL
Earlier trade mark	Contested sign

The relevant territory is 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 word mark, written in Latin characters whereas the contested sign is written in Cyrillic characters. Due to the use of different alphabets in the two signs, the Opposition Division will focus on the comparison of the signs on the part of the Bulgarian- and Russian-speaking public, which will be able to read both Latin and Cyrillic characters. This approach is the best case scenario for the opponent as for the public which is not familiar with the Cyrillic alphabet the signs are visually, aurally and conceptually not similar.

Though the Cyrillic alphabet is the official alphabet in Bulgaria the Latin alphabet is known, understood and used by many Bulgarians due to its extended use, not just in industry and commerce but also in mass media. Thus, despite the earlier sign featuring Latin characters, at least part of the public, as described above, will be able to read it without any difficulties. As regards the Russian language, the Opposition Division notes, that although Russian is not an official language of the EU, it is generally known that a significant proportion of European citizens understands Russian. After English, French, German and Spanish, Russian is one of the most widely spoken foreign languages in the European Union (European Commission, Special Eurobarometer 386, Europeans and their Languages, 2012, p. 7). Particularly in the Baltic EU Member States, i.e. Lithuania, Latvia and Estonia, a significant proportion of the population understands Russian or even speaks it as a native language (see decision of 17/05/2016, R 240/2016-1, медве́дь (fig.).  

The applicant claims that the consumers will inevitably dissect the signs in question and as a consequence will perceive the element ‘PRALI’ in the earlier mark as a reference to the word praline, ‘пралине́’ in Russian, an English word of a French origin meaning ‘a smooth, sweet substance made by boiling nuts in sugar and grinding the mixture, used especially as filling for chocolates’. However, according to case law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements with a particular meaning(s). The Court has not defined what is to be regarded as a ‘component’ or ‘element’ of a sign. It is easy to identify components when a sign is visually divided into different parts (e.g. separate figurative and verbal components), however, the term ‘component’ encompasses more than these visual distinctions. Ultimately, the perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. However, this only happens if there are indications within the sign that allow such a dissection like the use of differing colours, fonts, styles or even a hyphen.

In the present the case, the earlier mark is a word mark, consisting of the same size characters in one colour. The Opposition Division is therefore of the opinion that, the earlier mark will be not dissected but perceived as one single word ‘PRALIBEL’. As regards the contested sign, the term ‘пралинэль’ (pralinelʲ) does not exist either in Bulgarian or in Russian. However, it is likely that, a part of the public will see an allusion to the word ‘praline’ here. This due to the fact, that it almost includes the Russian word for praline (пралине́), as well as its Bulgarian version ‘пралина’ (pralina). In any case, the ending ‘-эль’ makes the contested sign fanciful and as such distinctive.

Visually, the signs coincide in the character ‘A’ placed in both signs at the third place and the character ‘P’, however placed differently in the two signs. However, these are the only coincidences. The signs differ in all the remaining characters due to the different alphabets, the earlier mark being written in Latin and the contested sign being written in Cyrillic. Moreover, they differ in their length.

The opponent argues that a significant part of the relevant public will transliterate the contested sign, and when its transliterated version is compared with the earlier mark, the marks are almost identical. The Opposition Division points out that when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).

Therefore, the signs are visually dissimilar.

Aurally, the pronunciation of the marks coincides in the sound of the first syllable [pra] present in both signs, as the Cyrillic letters ‘п-р-а’ are phonetically analogous to the Latin letters used in the earlier mark. Albeit the letter ‘л’ (l) is followed by the softening vowel ‘и’ (i) in the contested sign, the pronunciation of the letters ‘l-i’ in the earlier mark and ‘л-и’ in the contested sign are highly similar if not identical. The pronunciation, however, differs in the remaining letters in the signs at hand ‘bel’ and ‘нэль’ respectively. The last letter ‘л’ (l) in the contested sign is followed by the soft sign ‘ь’, which makes the pronunciation of the ‘л’ very soft (palatalized) and striking. Also the vowel ‘Э’ in the contested sign will be pronounced differently to the letter ‘E’ in the earlier mark. Since it follows the consonant ‘Н’ (‘N’ in Latin) it sounds as /jɛ/.  

Therefore, the signs are at most similar to an average degree.

Conceptually, neither of the signs has a meaning for the significant part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As mentioned above, it is likely that a part of the relevant public will perceive an allusion to the word ‘praline’ in the contested sign. However, as explained above, the other sign has no meaning for that part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the relevant public.

In any case and for the sake of completeness, the Opposition Division points out that even if considered that a part of the relevant public would dissect the earlier mark and perceive the sequence of the first five letters ‘PRALI’ as the reference to the words ‘praline’, ‘pralina’, the evocation to the same concept in this case, is not sufficient to establish any relevant conceptual similarity, as the words ‘praline’, ‘pralina’ respectively are non-distinctive and cannot indicate the commercial origin of any of the goods.

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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T 6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer, who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

The goods at issue have been found identical or similar. The signs have been found visually dissimilar, phonetically similar to at most an average degree. This is because the signs are reproduced in different alphabets (Latin and Cyrillic), they differ slightly in their lengths as well as in their different pronunciation of some of the characters which the signs have in common. All these differences are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks at issue.

In addition, the marks have either no concept in common that would lead the public to associate one with the other or the coincidence in their concept is of no importance due to the non-distinctive character of the words ‘praline’, ‘pralina’

Moreover, account must also be taken of the market reality of purchasing the goods at issue. In the present case, the goods at issue are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. Consequently, for such goods the visual perception is central to establishing whether a likelihood of confusion exists (11/12/2013, T-487/12, Panini, EU:T:2013:637, §§ 63, 64, 65 and case-law cited therein).

Therefore, even though oral communication concerning the goods concerned and the trade marks is not excluded, the visual perception of the trade marks at issue will generally occur prior to purchase because the goods and their associated trade marks are displayed in those shops.

Consequently, it should be noted, that the average consumer (who is still deemed to be reasonably well informed and reasonably observant and circumspect, will perceive both trade marks as a whole, and the differences between them will prevent the public from mistakenly believing that the goods bearing these marks are of the same origin. Therefore, the Opposition Division considers that the dissimilarities between the signs at hand prevail their similarities and are sufficient to offset even the identity between the goods, and hence to exclude any likelihood of confusion between the marks.

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

The absence of a likelihood of confusion even more applies to the part of the public which is not familiar with the Cyrillic characters. In fact, as already mentioned above, the signs in comparison will be perceived as dissimilar. The only recognizable letters for this part of the public will be ‘P’, ‘H’ and ‘A’. However, the letter ‘P’ (‘R’ in Cyrillic) in the contested sign will be visually and aurally perceived as the Latin letter ‘P’ and the letter ‘H’ (‘N’ in Cyrillic) has not counterpart in the earlier mark. The remaining characters in the contested sign will be perceived as figurative signs. As such each of the mark in question as a whole transmits a very different overall impression and there is no likelihood of confusion on the part of the relevant public which will not understand Cyrillic alphabet either.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Konstantinos MITROU

Renata COTTRELL

Denitza STOYANOVA-VALCHANOVA

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.