OPPOSITION No B 2 732 264

Aldi Einkauf Gmbh & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Mediapost Spain, Av. Majuelo, 19 (P.I. La Postura), 28343 Valdemoro, Spain (applicant), represented by José Luis Donoso Romero, Avenida Isabel de Farnesio 30 A, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 264 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 and services of European Union trade mark application No 15 219 306. The opposition is based on German trade mark registration No 65 048. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of German trade mark registration No 65 048 on which the opposition is based.

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’).

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 on which the opposition is based are the following:

Class 34: Smoking-, chewing- and smokeless tobacco, cigarettes and cigarette papers.

After a limitation received by the Office on 19/07/2016, the contested goods and services are the following:

Class 34: Articles for use with tobacco; matches; tobacco and tobacco products (including substitutes); personal vaporisers and electronic cigarettes, and flavourings and solutions therefor.

Class 35: Commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; wholesaling, retailing and sale via global computer networks of tobacco and tobacco goods (including substitutes therefor), articles for use with tobacco, personal vaporisers, electronic cigarettes and flavourings; services provided by a franchiser, namely assistance in the operation or management of industrial or commercial companies, none of the aforesaid services being for use in connection with urine analysis or medical or scientific laboratory equipment.

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 34

The contested articles for use with tobacco include, as a broader category, or overlap with the opponent’s cigarette papers. 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 contested tobacco includes, as a broader category, or overlaps with the opponent’s smoking-, chewing- and smokeless tobacco. 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 contested tobacco products (including substitutes) include, as a broader category, or overlap with the opponent’s cigarettes. 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 contested personal vaporisers and electronic cigarettes are related to the opponent’s cigarettes. These goods have the same purpose. In addition, they can coincide in their end users and are in competition. In view of all the foregoing, these goods are deemed similar.

The contested matches are small sticks of wood or strips of cardboard coated at one end with a compound that ignites when scratched against a rough or chemically treated surface. These goods have some points in common with the opponent’s cigarettes. In fact, in spite of their different natures and purposes, these goods may have the same end users (smokers) and distribution channels, and they can be used together (as cigarettes can be lit with a match instead of with a lighter). Therefore, these goods are similar to a low degree.

The contested flavourings and solutions therefor [personal vaporisers and electronic cigarettes] are also related to the opponent’s cigarettes. These goods have different purposes and natures. They are also neither complementary nor in competition. However, they can coincide in their end users and can have the same origin. In view of all the foregoing, they are deemed similar to a low degree.

Contested services in Class 35

The contested commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; services provided by a franchiser, namely assistance in the operation or management of industrial or commercial companies, none of the aforesaid services being for use in connection with urine analysis or medical or scientific laboratory equipment do not have anything in common, under the relevant Canon criteria, with the opponent’s goods in Class 34.

All of the abovementioned contested services are intended to support or help other businesses carry out or improve their business.

Commercial trading and consumer information services are usually rendered by companies specialised in the specific field of business consultancy. They mainly involve business support services, such as processing orders, advisory services relating to the purchase of goods and services and arranging commercial contracts. They also involve ‘consultancy’, ‘advisory’ and ‘assistance’ activities that may be useful in the management of a business. The contested consumer information services also include services such as a consumer advice shop or the provision online of information to the public at large relating to specific goods and/or services.

Business assistance and management services and business analysis, research and information services are usually rendered by companies specialised in this specific field, such as business consultants. Such companies gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. They involve activities such as business research and appraisals, cost–price analysis and organisational consultancy. Business administration services consist of organising people and resources efficiently to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation.

Advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

Services provided by a franchiser, namely assistance in the operation or management of industrial or commercial companies, none of the aforesaid services being for use in connection with urine analysis or medical or scientific laboratory equipment can be understood as business assistance and management services provided not by a third party but by a franchiser. Therefore, the description above relating to business assistance and management services and business analysis, research and information services applies similarly in this case.

Clearly, all of these contested services have different natures, purposes and methods of use from the opponent’s goods in Class 34. Furthermore, the contested services are neither complementary to nor interchangeable with the opponent’s goods, and their commercial origins and distribution channels are also distinct. Therefore, all of the contested services are found to be dissimilar to the opponent’s goods.

Wholesale, retail services and sale via global computer networks concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesaling, retailing and sale via global computer networks of tobacco and tobacco goods (including substitutes therefor) are similar to a low degree to the opponent’s smoking-, chewing- and smokeless tobacco.

The contested wholesaling, retailing and sale via global computer networks of articles for use with tobacco are similar to a low degree to the opponent’s cigarette papers.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. Therefore, the contested wholesaling, retailing and sale via global computer networks of personal vaporisers, electronic cigarettes and flavourings are dissimilar to all of the opponent’s goods in Class 34. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 and services found to be identical or similar to various degrees are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary, depending on the nature of the goods. For instance, the public will pay an average degree of attention to goods such as matches or articles for use with tobacco.

In contrast, the public may show a higher degree of attention with respect to goods for which brand loyalty might have been developed. In principle, this cannot be excluded for at least some of the goods in question, for example tobacco and tobacco products, in relation to which users are considered particularly careful and selective about the brand, so a higher degree of brand loyalty and attention is assumed when these kinds of products are involved. Therefore, it may require a higher degree of similarity between the signs for confusion to occur. See, by analogy, several Boards of Appeal decisions (26/02/2010, R 1562/2008-2, victory slims, in which it was stated that the consumers of goods in Class 34 are generally very attentive and brand loyal; and 25/04/2006, R 0061/2005-2, Granducato).

3. The signs

Kora
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark, ‘Kora’. In word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is depicted in upper or lower case characters or a combination thereof. Bearing in mind the relevant territory, ‘Kora’ will be perceived as a first name so it is considered distinctive for the goods in question.

The contested sign is a figurative mark consisting of a highly stylised word written in red upper case letters, which will be perceived, by part of the relevant public, as the word ‘KOV’ (with an additional arm extending downwards from the letter ‘V’ to the right), ‘KON’ (with a reversed letter ‘N’ at an angle), ‘KOW’ or ‘KOM’ (with a missing arm on either the right- or the left-hand side of the final letter). On the other hand, part of the public might perceive this element as the word ‘KOVA’ written in a highly stylised manner, with the first two letters, ‘KO’, connected to each other and the second two letters, ‘VA’, also connected to each other. Considering the various possible perceptions of the contested sign, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that will perceive the contested sign as portraying the stylised upper case letters ‘KOVA’ partly connected to each other. This part of the relevant public would be more likely to confuse the signs and this therefore constitutes the opponent’s best-case scenario.

The degree of distinctiveness of the element ‘KOVA’ in the contested sign is average, since it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way.

Visually, the signs are similar to the extent that they coincide in the letters ‘KO*A’. The marks differ in the graphic depiction of the contested sign (as described above) and in the differing letters, namely ‘R’ versus ‘V’.

According to established practice, when figurative marks containing verbal elements and word marks are compared visually, two factors should be taken into account: first, whether or not the signs have in common a significant number of letters in the same order and, second, whether or not the verbal element in the figurative sign is highly stylised. In the present case, the highly stylised nature of the contested sign will create significant differences between the marks, even considering that the signs have in common three out of four letters. Account also has to be taken of the fact that the signs are relatively short and, according to established practice, in short signs even small differences may lead to different visual impressions, since the public is able to easily perceive all of their individual elements.

Considering all the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier mark. Therefore, the signs are considered visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘KO*A’. The pronunciation differs in the sound of the differing letters, namely ‘R’ versus ‘V’. Similarly to the visual comparison, a difference in one letter in relatively short signs will create a noticeable aural difference in the pronunciation of the marks and, therefore, the signs are considered aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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

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/or 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 and services are partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s goods and they target both the public at large and professionals; the public’s degree of attention varies from average to high.

The earlier mark and the contested sign are visually similar to a low degree, aurally similar to an average degree and conceptually not similar.

The earlier mark and the contested sign are similar insofar as they have the letters ‘KO*A’ in common. However, the way in which these letters appear in each sign is an important factor. As explained in detail in section c), the manner in which these letters are depicted in the contested sign is different from such letters in the earlier mark to such an extent that the signs are visually similar to only a low degree. Moreover, the earlier mark has a clear concept, referring to a name, while the contested sign is meaningless. These differences are clearly perceptible and are sufficient to exclude any likelihood of confusion, even in relation to identical goods.

Given that the depictions of the signs differ in significant ways, there is no risk that the relevant consumers will be misled, even if they are unable to compare the trade marks directly (22/03/2011, T-486/07, CA, EU:T:2011:104, § 95).

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

For the sake of completeness, the Opposition Division points out that there is no need to compare the signs from the perspective of the part of the public that does not perceive the contested sign as ‘KOVA’, since the outcome would not be different. Indeed, if there is no likelihood of confusion for those consumers who perceive the contested sign as ‘KOVA’, a fortiori, there is no likelihood of confusion for those consumers who will perceive it in other ways, since, for these consumers, the signs under comparison will be 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

Katarzyna ZANIECKA

Begoña URIARTE VALIENTE

Benoit 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.

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.