OPPOSITION No B 2 747 874

I.N.P.A. Industria Nazionale Prodotti Alimentari S.p.A., Via Ciambellana, 2, 50059 Sant' Ansano-Vinci (Florence)  Italy (opponent), represented by Ufficio Tecnico Ing. A. Mannucci, Via della Scala, 4, 50123 Florence , Italy (professional representative)

a g a i n s t

Λευκα Ορη Αβεε  Στυλοσ Αποκορωνου Αρμενων, 73003  Καλυβεσ Χανιων, Greece (applicant).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 747 874 is upheld for all the contested goods.

2.        European Union trade mark application No 15 447 709 is rejected for all the contested goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 447 709. The opposition is based on, inter alia, European Union trade mark registration No 9 590 878. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is also based on the trade company name ‘INPA’, used in the course of trade in Italy and the domain name www.inpa.it. The opponent invoked, therefore, Article 8(4) 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 9 590 878.

1. The goods

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

Class 29: Meat extracts; Preserved, frozen, dried and cooked vegetables; Jellies; Edible fats, edible oils. 

Class 30: Sugar; Salt, mustard; Vinegar, sauces (condiments); Spices.

The contested goods are the following:

Class 30: Salts, seasonings, flavourings and condiments; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Savory sauces, chutneys and pastes; Achar pachranga (fruit pickle); Brine for pickling; Spiced salt; Ground pepper; Edible salt; Salt for preserving foodstuffs; Vinegar; Dry seasonings; Wine vinegar; Fruit vinegar; Pepper vinegar; Mustard vinegar; Beer vinegar; Spices in the form of powders; Baking spices; Pizza spices; Mustard powder [spice]; Nutmegs; Seasoning mixes; Sausage binding materials; Mustard preparations for food; Spice preparations; Sauces containing nuts; Sauces flavoured with nuts; Sauces for ice cream; Sauces [condiments]; Sauces; Pickled ginger [condiment]; Ginger [spice]; Peppers [seasonings]; Pepper powder [spice]; Pepper; Prepared horseradish [condiment]; Saffron [seasoning]; Powdered garlic; Mustard powder for food; Minced garlic; Minced garlic [condiment]; Horseradish [relishes]; Salt pellets for preserving fish; Salt pellets for preserving foodstuffs; Seaweed [condiment]; Vegetable-based seasonings for pasta; Natural flavourings for use in ice cream [other than etheric essences or essential oils]; Sesame seeds; Curry mixes; Curry spice mixes; Marinades containing seasonings; Peppercorns; Table salt; Curry powder [spice]; Curry [spice]; Capers; Allspice; Sea salt for cooking; Table salt mixed with sesame seeds; Spice extracts; Condiments; Pepper spice; Hot pepper powder [spice].

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.

Salts, sugars, sauces [condiments]; sauces are identically contained in both specifications (including synonymous).

The contested spiced salt; edible salt; salt for preserving foodstuffs; salt pellets for preserving fish; salt pellets for preserving foodstuffs; table salt; sea salt for cooking; table salt mixed with sesame seeds are included (or overlap) in the broad category of the opponent’s salt. Therefore, they are considered identical.

The contested savory sauces, chutneys and pastes;  ground pepper; spices in the form of powders; baking spices; pizza spices; nutmegs; seasoning mixes; spice preparations; sauces containing nuts; sauces flavoured with nuts; sauces for ice cream; pickled ginger [condiment]; ginger [spice]; peppers [seasonings]; pepper powder [spice]; mustard powder [spice]; pepper; prepared horseradish [condiment]; saffron [seasoning]; powdered garlic; minced garlic [condiment]; horseradish [relishes]; seaweed [condiment]; curry mixes; curry spice mixes; marinades containing seasonings; peppercorns; curry powder [spice]; curry [spice]; capers; allspice; spice extracts; condiments (repeated); pepper spice; hot pepper powder [spice]; minced garlic; table salt mixed with sesame seeds are either identical to the opponent’s sauces (condiments) and spices (the contested goods included in these broad categories) or similar to them, as they overlap in nature and purpose, they can have the same producers and they target the same end users.

The contested seasonings, dry seasonings; vegetable-based seasonings for pasta are similar to a high degree to salt in Class 30 of the earlier mark as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested vinegar; wine vinegar; fruit vinegar; pepper vinegar; mustard vinegar; beer vinegar are similar to a high degree to sauces [condiments] in Class 30 of the earlier mark as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested flavourings and natural flavourings for use in ice cream [other than etheric essences or essential oils] are related to the opponent’s salts in Class 30, as they have the same purpose. Moreover, they can have the same producers, relevant public and distribution channels. For all these reasons, they are considered similar to a high degree.

The contested natural sweeteners sweet coatings and fillings, bee products are similar to the opponent’s sugar. They have the same nature and purpose. Moreover, they also have the same usual producers and end users, and are interchangeable and consequently in competition.

Mustard preparations for food; mustard powder for food and the opponent’s mustard are similar as they contain the same ingredient. They can coincide in their producer, end user and distribution channels. Furthermore, they are in competition.

The contested brine for pickling; achar pachranga (fruit pickle) could be simply vegetables or fruits that are pickled in a vinegar, water, and salt (sometimes sugar, too) solution and stored in the refrigerator. They are similar to the opponent’s preserved, frozen, dried and cooked vegetables, as these goods are intended for the same public and hence, they are in competition. Furthermore, they could be found in the same sections in stores.

The contested sausage binding materials are similar to edible fats in Class 29 of the earlier registration. They can coincide in their producer, end user and distribution channels. Furthermore, they are in competition.

Sesame seed are added to food or are used to produce oil. These contested goods are similar to a low degree to the opponent’s edible oil, as they can coincide in their producer, end user and distribution channels. Furthermore, they are 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 or similar to different degrees are directed at the public at large. As many of the goods are cheap mass consumption goods such as sugar, the degree of attention may vary from low to average.

3. The signs

INPA
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 consists of the word mark ‘INPA’.

The contested mark is a figurative mark with the word element ‘INTA’, which is depicted in black and dominates the visual impression. The figurative element placed above will be perceived by consumers will merely see it as a decorative element.

Due to the word (‘INTA’) being prominent in the overall impression of the mark and the fact that it has no concrete meaning in relation to the contested goods, the consumers’ attention will be primarily drawn towards the word. In this connection it is noted that as a rule, consumers refer to the dominant word elements in trade marks rather than the figurative elements (18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 35).

Visually, the signs coincide in the letters ‘IN-A’, placed in the same positions in both signs and differ in their third letter ‘P’ versus ‘T’, and the stylisation and figurative element of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the marks have the same length (four letters). They both consist of two syllables one of which is identical, namely ‘IN’. In addition, they share the strong sound of the vowel ‘A’ at the end of the marks. The differences in their third letter ‘P’ versus ‘T’ are not sufficient to differentiate the signs, and therefore, the signs aurally highly similar.

Conceptually, neither of the signs has a meaning for 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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

In the present case, the contested goods are identical and similar (to varying degrees) to the opponent’s goods.

Overall, the conflicting signs are visually similar to an average degree and aurally similar to a high degree. The average degree of attention of the relevant public and the tendency to rely upon an imperfect picture of trade marks must also be taken into account.

Their main elements coincide in three out of four letters, placed in the same positions in the signs, and the additional elements in the contested sign, as stated above, will not be sufficient to produce a greater difference.

It is also well established case-law that the average consumer normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52) and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (16/7/2014, T-324/13, Femivia, EU:T:2014:672, § 48).

The stylisation and additional figurative element, which are not particularly fanciful and memorable, are not striking enough to substantially modify the visual perception. Rather, the relevant public will tend to focus on the word elements, in accordance with established case-law (16/09/2013, T-569/11, Gitana, EU:T:2013:462, § 56; 06/09/2013, T-349/12, Revaro, EU:T:2013:412, § 23).

Taking into account the principle of imperfect recollection, the abovementioned similarities between the signs are likely to give rise to a likelihood of confusion if the marks at issue were to be used for the goods that are considered identical, or similar as the relevant public might think that these goods come from the same undertaking or economically-linked undertakings.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 590 878. It follows that the contested trade mark must be rejected for all the contested goods. This conclusion furthermore is the case for the contested goods which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 9 590 878 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Birgit FILTENBORG

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.

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.