OPPOSITION No B 2 458 217

Usina Sao Francisco, S.A., Fazenda Sao Francisco s/nº, Zona Rural, Sertaozinho, Sao Paulo, Brazil (opponent), represented by Raquel Cuba Martins, Rua D. Francisco Manuel de Melo, 21, 1070-085 Lisboa, Portugal (professional representative)

a g a i n s t

Jose Luis Montosa, S.L., Finca El Molino s/n, 29792 Valle-Niza (Málaga), Spain (applicant), represented by Rubén Ariza Recio, Finca el Molino s/n, 29792 Valle Niza, Spain (employee representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 458 217 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 157 987. The opposition is based on European Union trade mark registration No 1 467 984. The opponent invoked Article 8(1)(a) and (b) EUTMR.

Earlier trade mark	Contested sign

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: Sugar and coffee.

The contested goods are the following:

Class 29: Guacamole

Class 31: Fresh avocados; unprocessed avocados; unprocessed avocados; fresh avocados.

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

Guacamole is a cold prepared dish from Mexico made of crushed avocados and other ingredients, such as tomatoes and chillies.

The contested guacamole is dissimilar to the goods covered by the earlier mark. In particular, although these contested goods and the opponent’s sugar and coffee all fall under the broad category of foodstuffs, the fact remains that their specific natures and purposes are different. Moreover, they are not distributed through the same channels and they are not found on the same or on nearby shelves of general outlets. Their producers and methods of use also differ and they are neither in competition with each other nor complementary to each other. Moreover, the opponent’s sugar and coffee cannot be considered as being the main ingredient of the prepared dish or even an ingredient that would be needed for the preparation of the contested guacamole.

Contested goods in Class 31

The contested fresh avocados (listed twice); unprocessed avocados (listed twice), which are fresh and unprocessed vegetables, are dissimilar to the opponent’s sugar and coffee in Class 30. These goods do not have the same nature, usual origin, distribution channels or end users, and they are neither in competition with each other nor complementary to each other. The mere fact that they belong to the broad category of foodstuffs is not sufficient for a finding of similarity.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 because the goods 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.

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

Francesca DINU

Julie GOUTARD

Loreto URRACA LUQUE

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.