OPPOSITION No B 2 740 333

St Michel Holding, Zone Industrielle 2 boulevard de l'Industrie, 41700 Contres,  France (opponent), represented by Strato-IP,18, rue Soleillet, 75020 Paris, France (professional representative)

a g a i n s t

Daniel Schwarz, Romanshornerstrasse 76b, 9320 Arbon, Switzerland (applicant) represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

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

DECISION:

1.        Opposition No B 2 740 333 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 European Union trade mark application No 15 403 736. The opposition is based French trade mark registration No 3 602 891. 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.

1. The goods

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

Class 30:        Coffee, tea, cocoa; sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; cookies, cakes; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible fats, edible oils.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31:        Nuts [fruits]; sowing seeds.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33:         Alcoholic beverages (except beers).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 29

The contested milk products are similar to high degree to the opponent’s ices in Class 30. The nature and purpose of these goods are similar. They often coincide in relevant public, distribution channels and producers. In addition they are in competition.

The contested cooked, preserved and frozen fruit and vegetables are similar to high degree to the opponent’s sauces (condiments). The purpose of these goods may coincide. They may be directed at the same relevant public via the same distribution channels. The producers also often coincide and these goods may also be in competition.

The contested meat extracts are similar to the opponent’s spices in Class 30. The purpose of the goods is the same, that is to be used as a seasoning for cooking food. The distribution channels and relevant public often coincide and they may come from the same producer. In addition these goods may be considered competitive goods.

The contested jellies, jams, compotes are similar to the opponent’s honey in Class 30. The method of use of these goods coincide as do the distribution channels and relevant public. These goods are also in competition.

The contested edible fats, edible oils are similar to the opponent’s sauces (condiments) in Class 30. The purpose and method of use of these goods is similar. The relevant public and distribution channels may coincide. In addition the goods may be considered to be in competition.

The contested dried vegetables are similar to the opponent’s spices. The purpose of the goods may coincide, that is to give flavour to food. The goods are directed at the same relevant public via the same distribution channels and the producers may also coincide.

The contested dried fruits are similar to a low degree to the opponent’s confectionery. These goods may coincide in relevant public, distribution channels and producers.

The contested meat, fish, poultry and game; eggs, milk are dissimilar to all of the opponent’s goods. The nature, purpose and method of use of these goods differ. They are neither in competition nor are they complementary.

Contested goods in Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice are identically contained in both lists of goods.

Contested goods in Class 31

The contested nuts [fruits]; sowing seeds are dissimilar to all of the opponent’s goods. The nature, purpose and method of use of these goods differ. They are neither in competition nor are they complementary. In addition they do not normally come from the same providers.

Contested goods in Class 32

The contested mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices are similar to the opponent’s coffee in Class 30. These goods are considered to be in competition. The may coincide in distribution channels, relevant public and provider.

The contested syrups are similar to a low degree to the opponent’s honey in Class 30. These goods are considered competitive and they may coincide in distribution channels and relevant public.

The contested preparations for making beverages are similar to a low degree to the opponent’s coffee in Class 30. The method of use of these goods may coincide as may the distribution channels and relevant public.

The contested beers are dissimilar to the opponent’s coffee in Class 30. Although both are beverages, this is not enough to find any level of similarity between them. These products are not in competition nor are they complementary.  In addition, the purpose does not coincide and they do not come from the same providers. The contested beers are also dissimilar to all of the other opponent’s goods for the same reasons outlined above. In addition the nature of the goods differ.

Contested goods in Class 33

The contested alcoholic beverages (except beers) are dissimilar to all of the opponent’s goods. The nature, purpose and method of use of the goods do not coincide. They are neither complementary nor are they in competition.

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 and similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

MONSIEUR BISCUIT	Mr. Snackins
Earlier trade mark	Contested sign

The relevant territory is France.

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 the word mark ‘MONSIEUR BISCUIT’ which means ‘Mr. Biscuit’ in French. The word ‘MONSIEUR’ is not descriptive, allusive or otherwise weak for the relevant goods. Therefore it is distinctive. ‘BISCUIT’ is descriptive and non-distinctive for some of the goods at hand such as confectionary. It is distinctive for other goods such as vinegar.

The contested sign is the word mark ‘Mr. Snackins’. ‘Snackins’ has no meaning in French and is therefore distinctive for the goods in question. ‘Mr.’ is an abbreviation for ‘Mister’ (Dictionary Le Grand Robert de la langue française at http://gr.bvdep.com/robert.asp on 13/06/2017). Some French speakers may read ‘Mister Snackins’ when faced with this sign. However the majority of the general French public will read ‘Monsieur Snackins’ and will see ‘Mr.’ as an abbreviation for ‘Monsieur’ even though the correct abbreviation in French is ‘M.’. As this is the best case scenario for the opponent, the comparison will proceed on this basis.

Visually, the first word of the signs start with the letter ‘M’ and ends with the letter ‘R’. The signs also coincide in some other random letters.

The General Court has held that the fact that signs coincide in some letters is not of particular significance for the relevant public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the pronunciation of the word ‘MONSIEUR’ at the start of the signs. The pronunciation differs with respect to the second verbal element in each sign, ‘BISCUIT’ and ‘Snackins’.

Therefore the signs are considered to be aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the meaning of ‘MONSIEUR’ which is ‘Mister’ in English. The concept of ‘BISCUIT’ in the earlier mark is not present in the contested sign.

Therefore they are conceptually similar to an average degree.

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, despite the presence of a non-distinctive element in the mark (in relation to some of the goods) as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case the goods have been found to be partly identical, partly similar to varying degrees and partly dissimilar. The signs are conceptually and aurally similar to an average degree and they are visually similar to a low degree. The degree of distinctive character of the earlier mark is normal.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). It is the visual aspect, therefore, which is the crucial factor that will allow the consumer to distinguish between one good and another.

Considering all the above, and in particular the importance of the visual aspect in this case, it is concluded that there is no likelihood of confusion on the part of the relevant public whose level of attention is average for the goods at issue. This can be said even for those goods found to be identical. The visual impact of the signs is such that it overcomes the conceptual and aural similarities and a likelihood of confusion can be safely ruled out. Therefore, the opposition must be rejected.

For the sake of completeness it is noted that this absence of a likelihood of confusion equally applies to the part of the public who will read ‘Mr.’ as ‘Mister’ rather than ‘Monsieur’ in the contested mark. This is because that part of the public will perceive the signs as being even less similar.

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.

The Opposition Division

Lars HELBERT

Lynn BURTCHAELL

Martin EBERL

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.