OPPOSITION No B 2 752 429

S.C. Top Gel Prod S.r.l., Strada Aeroportului nr.120, 207206 Cârcea, Dolj, Romania (opponent)

a g a i n s t

Grupo Topgel S.L., Avda. de Europa, Nº 34-D. 1ª, 28023 Aravaca (Madrid), Spain (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 429 is partially upheld, namely for the following contested goods:

Class 30:         Ice, ice creams, frozen yogurts and sorbets; frozen dairy confections; frozen cakes; mixtures for making frozen confections; frozen pastries.

2.        European Union trade mark application No 15 464 845 is rejected for the above goods. It may proceed for the remaining goods and services.

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 15 464 845, namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 6 154 371. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 30:        Edible ices and ice for refreshment.

The contested goods are the following:

Class 30:         Ice, ice creams, frozen yogurts and sorbets; frozen dairy confections; frozen cakes; mixtures for making frozen confections; frozen pastries; frozen dough.

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 30

The contested ice includes, as a broader category, the opponent’s ice for refreshment. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s edible ices can be understood to be ‘ice creams’, that is, they are synonyms. Therefore, the opponent’s edible ices and the contested ice creams are identical.

The contested frozen yogurts and sorbets; frozen dairy confections have the same purpose, method of use and distribution channels as the opponent’s edible ices. They are produced by the same companies, target the same public and are in competition with each other. Therefore, they are highly similar.

The contested mixtures for making frozen confections are ingredients for making frozen confections, such as edible ices. They can target not only professionals but also members of the general public who wish to make frozen confections at home. Therefore, they can have the same distribution channels and target the same relevant public as the opponent’s edible ices. Furthermore, they have the same purpose and can be in competition with each other. Therefore, they are similar.

The contested frozen cakes; frozen pastries are goods found in the frozen food departments of grocery stores and are usually intended to be defrosted before serving. They have the same distribution channels and target the same relevant public as the opponent’s edible ices. Furthermore, they can be in competition. Therefore, they are similar to a low degree.

The contested frozen dough is also a product that can be found in the frozen food departments of grocery stores; however, it is not intended to be consumed as such but is to be used for baking. It is produced by different companies and for different purposes from the opponent’s goods. Furthermore, the contested frozen dough and the opponent’s goods are neither complementary nor in competition. 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 to different extents are directed at the public at large, whose degree of attention is 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 sign is a figurative mark composed of the verbal element ‘Top Gel’, depicted in white, bold, title case letters in a fairly standard typeface, and a figurative element in the background consisting of one red and one blue plaque with white borders.

The contested sign is a figurative mark composed of the verbal elements ‘GRUPO’, written in standard upper case letters, and ‘TOPGEL’, written in standard bold upper case letters, and a figurative element consisting of quadrilaterals that are grouped together and point in different directions. The sign is depicted in green and blue.

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 element ‘GRUPO’ in the contested sign is meaningful in certain territories, for example in those countries where Spanish is understood. This will affect the consumer’s perception of the element. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public. The elements ‘Top Gel’ of the earlier mark and ‘TOPGEL’ of the contested sign may be understood as ‘super gel’ by part of the Spanish-speaking public. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public for which the elements ‘Top Gel’ and ‘TOPGEL’ do not evoke any concepts and are, therefore, distinctive.

The element ‘GRUPO’ will be understood as ‘a group’ by the relevant public. Considered as a whole, the contested sign is likely to be perceived by the relevant public as ‘a corporate group named TOPGEL’. Therefore, the element ‘GRUPO’ merely refers to a group of companies operated by the producer or to which the producer belongs. Consequently, the element ‘GRUPO’ has a relatively low degree of distinctiveness in relation to all the goods at issue. The relevant public will understand the meaning of this weak element and will not pay as much attention to it as to the other, more distinctive, elements of the mark, namely the word ‘TOPGEL’ and the figurative element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The signs under comparison have no elements that could be considered clearly more dominant than other elements.

Visually, the verbal element of the earlier sign is reproduced in the contested sign, although the case of the letters is different and there is a space between ‘Top’ and ‘Gel’ in the earlier sign. However, the signs differ in their stylisations, colours and figurative elements, as well as in the additional element ‘GRUPO’ in the contested sign, which has no counterpart in the earlier mark, but is a weak element in the contested sign as explained above.

Moreover, 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 signs are visually similar to a low degree.

Aurally, the verbal elements ‘Top Gel’ and ‘TOPGEL’ are pronounced identically, irrespective of the different pronunciation rules in different parts of the relevant territory. The pronunciation differs in the in the sound of the letters of the weak element ‛GRUPO’ of the contested mark, which has no counterpart in the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the verbal elements of the contested sign will be associated with ‘a corporate group named TOPGEL’, while the verbal element of the earlier mark has no meaning for the relevant public, the signs are not conceptually similar. The figurative elements of the signs evoke no concepts.

Therefore, the signs are conceptually not 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 signs are visually similar to a low degree and aurally similar to at least an average degree. Conceptually, the signs are not similar. Most of the contested goods are identical or similar to different degrees to the opponent’s goods.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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).

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.

Although there are differences between the signs, the coinciding element plays an independent distinctive role in both signs. As it is a verbal element, it bears more importance for the relevant consumers than the differing figurative elements. Therefore, a likelihood of confusion exists for at least the Spanish-speaking part of the public for which the elements ‘Top Gel’ or ‘TOPGEL’ do not evoke any concepts. Even in respect of the goods that are similar to the opponent’s goods to only a low degree, there is a likelihood of confusion, because the relevant consumer, who encounters the goods depicting the contested sign in a grocery store’s freezer, is likely to associate them with the opponent’s undertaking. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 6 154 371. It follows that the contested trade mark must be rejected for the goods found to be identical or similar (including those 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.

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

Ana MUÑIZ RODRIGUEZ

Birgit Holst FILTENBORG

Plamen IVANOV

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.