OPPOSITION No B 2 792 953

Frutas Beri, S.A., Brazal Nuevo nº 2, 30130 Beniel/Murcia, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Presberia, Tolminkiemio 23-35, 06212 Vilnius, Lithuania (applicant).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 792 953 is partially upheld, namely for the following contested goods:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); vegetable chips; nut-based food bars; stewed apples; hazelnuts, prepared; nuts, prepared; spiced nuts; roasted nuts; nut-based snack foods; organic nut and seed-based snack bars; fruit-based snack food; fruit desserts; candied fruit snacks; potato crisps in the form of snack foods; dried fruit-based snacks; vegetable-based snack foods; snack mixes consisting of dehydrated fruit and processed nuts; fruit preserves; fruit jellies; fruit pulp; fruit chips; fruit marmalade; fruit paste; nut and seed-based snack bars; potato chips; coconut powder; vegetable powders; fruit powders.

2.        European Union trade mark application No 14 677 504 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 some of the goods of European Union trade mark application No 14 677 504 , namely against all the goods in Class 29. The opposition is based on European Union trade mark registration No 1 927 441  and Spanish trade mark registration No 3 094 306 . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION − SPANISH TRADE MARK No 3 094 306

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case, the evidence filed by the opponent consists of an extract from a database referring to Spanish trade mark registration No 3 094 306.

The evidence mentioned above is not sufficient to substantiate this earlier Spanish trade mark of the opponent because the opponent does not prove that the document emanates from an official and admissible database and the source of the document cannot be determined.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

Therefore, the opposition is now based on only European Union trade mark registration No 1 927 441.

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 31: Fresh fruits, vegetables and garden herbs.

Class 35: Advertising and business; import, export.

Class 39: Distribution, transport, storage and warehousing of fresh fruits, vegetables and fresh garden herbs.

The contested goods are the following:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); vegetable chips; nut-based food bars; stewed apples; hazelnuts, prepared; nuts, prepared; desserts made from milk products; spiced nuts; roasted nuts; nut-based snack foods; organic nut and seed-based snack bars; fruit-based snack food; fruit desserts; candied fruit snacks; potato crisps in the form of snack foods; dried fruit-based snacks; vegetable-based snack foods; snack mixes consisting of dehydrated fruit and processed nuts; fruit preserves; fruit jellies; fruit pulp; fruit chips; fruit marmalade; fruit paste; nut and seed-based snack bars; potato chips; drinks made from dairy products; beverages having a milk base; flavoured milk beverages; lactic acid bacteria drinks; milk drinks containing fruits; milk-based beverages flavored with chocolate; milk-based beverages containing coffee; beverages made from or containing milk; milk beverages, milk predominating; milk-based beverages containing fruit juice; yogurt drinks; drinks based on yogurt; coconut powder; vegetable powders; fruit powders; coconut milk powder; powdered milk for food purposes; powdered cream; flavoured milk powder for making drinks.

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.

The contested goods in Class 29 include a variety of different types of fruit and vegetables that are cooked, dried and prepared in the form of snacks. These goods have undergone some kind of processing to ensure conservation. However, the opponent’s goods in Class 31 are composed of fruit and vegetables that are raw or fresh and therefore unprocessed. This difference in processing means that they will originate from different undertakings. However, the goods are intended for human consumption and may be in competition, since the consumer can choose between fresh and processed products and healthy snacks. Moreover, they have the same distribution channels. Consequently, the contested processed fruits, fungi and vegetables (including nuts and pulses); vegetable chips; nut-based food bars; stewed apples; hazelnuts, prepared; nuts, prepared; spiced nuts; roasted nuts; nut-based snack foods; organic nut and seed-based snack bars; fruit-based snack food; fruit desserts; candied fruit snacks; potato crisps in the form of snack foods; dried fruit-based snacks; vegetable-based snack foods; snack mixes consisting of dehydrated fruit and processed nuts; fruit preserves; fruit jellies; fruit pulp; fruit chips; fruit marmalade; fruit paste; nut and seed-based snack bars; potato chips; coconut powder; vegetable powders; fruit powders are similar to a low degree to the opponent’s fresh fruits, vegetables.

The contested desserts made from milk products; drinks made from dairy products; beverages having a milk base; flavoured milk beverages; lactic acid bacteria drinks; milk drinks containing fruits; milk-based beverages flavored with chocolate; milk-based beverages containing coffee; beverages made from or containing milk; milk beverages, milk predominating; milk-based beverages containing fruit juice; yogurt drinks; drinks based on yogurt; coconut milk powder; powdered milk for food purposes; powdered cream; flavoured milk powder for making drinks are dissimilar to the opponent’s goods in Class 31. The mere fact that they are all foodstuffs and that yoghurt, milkshakes or milk desserts can contain, for example, fruits does not render these goods similar. It is not likely that a producer of the fresh fruits in Class 31 would also manufacture milkshakes, as the process of milk processing requires specific plant installations and machinery. The contested milk products and beverages are also dissimilar to the opponent’s other goods and services in Classes 35 and 39. The goods and services under comparison have different purposes and methods of use. Moreover, they are not in competition with each other or distributed through the same channels and they do not usually have the same producers/providers.

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 similar to a low degree are directed at the public at large. The degree of attention is considered average.

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 figurative mark that comprises two relatively thin black rectangles that are very close to each other and are aligned horizontally. While the right rectangle is empty, the left rectangle is partly covered by a figurative element depicting a map of the world incorporated into the shape of a fruit. Furthermore, the right side of this rectangle contains the verbal elements ‘Frutas BERI, S.A.’ depicted in white letters, the first word in title case letters and the remaining verbal elements in upper case letters.

The contested sign is a figurative mark that consists of the verbal elements ‘VERI BERI’ in white slightly stylised upper case letters with black shadowing, one underneath the other. Around the verbal elements there is a figurative element in the shape of an incomplete circle depicting different types of highly stylised fruits and vegetables.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are meaningful in certain territories, for example in those countries where Italian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

As far as the element ‘Frutas’ of the earlier mark is concerned, the Opposition Division considers that the relevant public will understand the meaning of this Spanish word as referring to something that grows on a tree or bush and contains seeds or a stone covered by a substance that you can eat (information extracted from Collins Dictionary on 11/08/2017 at https://www.collinsdictionary.com/dictionary/english/fruit) because the equivalent word in Italian (‘frutta’) is similar. This verbal element is considered weak for the relevant goods, as it directly refers to fresh fruits and vegetables. For the same reason, the figurative element in the shape of a fruit is considered weak. The figurative element of the map of the world (incorporated into the shape of a fruit) is also considered weak, as it is referring to the international scale of the opponent’s activities.

The letter combination ‘S.A.’ of the earlier trade mark will be associated by the relevant public with ‘Società anonima’, a legal term for stock corporations in Italy. Therefore, this element is considered non-distinctive.

Furthermore, the earlier mark is composed of less distinctive black rectangles that have a purely decorative nature.

The coinciding verbal element ‘BERI’ in the marks is meaningless for the public in the relevant territory and is, therefore, distinctive.

Regarding the verbal element ‘VERI’ in the contested sign, it is considered that the relevant public will perceive the meaning of this word as the masculine plural form of the word ‘true’, which is used to emphasise that a person or thing is sincere or genuine, often in contrast to something that is pretend or hidden (information extracted from Collins Dictionary on 11/08/2017 at https://www.collinsdictionary.com/dictionary/english/true). This word is therefore weak because it merely describes the quality of the relevant goods.

Finally, the figurative element of the contested sign is a stylised composition of different types of fruits, such as strawberries, raspberries, apples, cherries and blueberries. Despite the high degree of stylisation of this element, it is considered weak in relation to all the relevant goods.

Neither of the signs has elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive element ‘BERI’. They differ in their graphic depictions and in their remaining verbal elements, which are, depending on the goods in question, considered non-distinctive, weak or distinctive.

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

Aurally, the signs are similar to the extent that they coincide in the pronunciation of the element, ‘BERI’. However, they differ in the pronunciation of their remaining elements, which have no counterparts in the opposing marks.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the most distinctive and the coinciding element of the signs, ‘BERI’, has no meaning for the public in the relevant territory. The remaining elements of the signs convey different concepts, as mentioned above. Since the signs will be associated with dissimilar meanings, the signs are not conceptually similar, although the impact of this difference is diminished by the fact that the meanings of the differing elements renders them weak or non-distinctive for some of the relevant 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 and 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, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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.

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).

As concluded above, the contested goods are partly similar to a low degree to the opponent’s goods and partly dissimilar. The signs are visually similar to an average degree, aurally similar to a high degree and not conceptually similar.

Therefore, taking into account the public at large and its average degree of attention, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 similar to a low degree 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 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 will 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

Steve HAUSER

Begoña URIARTE VALIENTE

Benoît VLEMINCQ

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.