OPPOSITION No B 2 764 085

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

Henan Lotus Health Industry Limited by Share Ltd, No. 18, Lianhua Boulevard, Xiangcheng City, Henan, People’s Republic of China (applicant), represented by Casas Asin S.L., Av. San Francisco Javier 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 085 is upheld for all the contested goods.

2.        European Union trade mark application No 15 489 231 is rejected in its entirety.

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 15 489 231. The opposition is based on German trade mark registration No 39 643 885. 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 29:         Meat; fish; poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams; eggs; milk and milk products; edible oils and fats; preserves of meat, fish, vegetables and fruits.

Class 30:         Salad dressings; flour and preparations made from cereals, bread, pastry; ices, yeast, baking-powder, salt, mustard, vinegar, sauces (excepting salad dressings), spices, sugar, rice, pasta, pasta dishes.

After a restriction of the goods and services requested by the applicant on 05/09/2016, which was accepted by the Office on 22/11/2016 and duly communicated to the opponent, the contested goods are the following:

Class 29:         Sesame oil; edible fats; rape oil for food; colza oil for food; maize oil; edible oils; olive oil for food; linseed oil for culinary purposes; sunflower oil for food; peanut butter; jams; marmalade; apple purée; cranberry sauce [compote]; tahini [sesame seed paste].

Class 30:         Coffee flavourings; coffee; vinegar; beer vinegar; soya sauce; spices; meal; glucose for culinary purposes; chutneys [condiments]; sauces [condiments]; relish [condiment].

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

Edible fats; edible oils are identically contained in both lists of goods.

Jams are identically contained in both lists of goods.

The contested sesame oil; rape oil for food; colza oil for food; maize oil; olive oil for food; linseed oil for culinary purposes; sunflower oil for food are included in the broad category of the opponent’s edible oils and fats. Therefore, they are identical.

Marmalade generally refers to a fruit preserve made from the juice and peel of citrus fruits boiled with sugar and water. However, the term ‘marmalade’ is used as a generic term for preserves of all fruits. Consequently, the contested marmalade is included in the broad category of the opponent’s preserves of fruits. Therefore, they are identical.

The contested apple purée; cranberry sauce [compote] are included in the broad category of the opponent’s preserves of fruits. Therefore, they are identical.

The contested peanut butter has the same purpose as the opponent’s edible fats. They can have the same relevant public. Furthermore, they are in competition. Therefore, they are similar.

Tahini [sesame seed paste] is an oily paste that is made from toasted and ground hulled sesame seeds. It may be served as a dip on its own or as a major component of other dishes, such as hummus, halva, etc. It has the same purpose as the opponent’s edible fats and they have the same relevant public. Furthermore, they are in competition. Therefore, they are similar.

Contested goods in Class 30

Vinegar; spices are identically contained in both lists of goods.

The contested beer vinegar is included in the broad category of the opponent’s vinegar. Therefore, they are identical.

The contested soya sauce is included in the broad category of the opponent’s sauces (excepting salad dressings). Therefore, they are identical.

The contested sauces [condiments] overlap with the opponent’s sauces (excepting salad dressings). Therefore, they are identical.

The contested glucose for culinary purposes overlaps with the opponent’s sugar. Therefore, they are identical.

Chutney is ‘a spicy condiment made of fruits or vegetables with vinegar, spices and sugar, originating in India’ (information extracted from Oxford Dictionaries on 11/07/2017 at https://en.oxforddictionaries.com/definition/us/chutney). Relish is ‘a sauce or pickle that you eat with other food to give the other food more flavour’ (information extracted from Collins Dictionary on 11/07/2017 at https://www.collinsdictionary.com/dictionary/english/relish). The main purpose of chutney and relish is to add flavour to food. Therefore, the contested chutneys [condiments]; relish [condiment] have the same purpose as the opponent’s sauces (excepting salad dressings). Furthermore, they can have the same producers, relevant public and distribution channels. Therefore, they are similar.

Meal is ‘a rough powder made of crushed grain’ (information extracted from Collins Dictionary on 11/07/2017 at https://www.collinsdictionary.com/dictionary/english/meal_1). The contested meal and the opponent’s flour can have the same producers, distribution channels, relevant public and methods of use. Furthermore, they may be in competition. Therefore, they are similar.

The contested coffee and the opponent’s milk products can have the same producers, end users and distribution channels. Furthermore, they are in competition with each other. Therefore, they are similar.

Coffee flavourings may be substances added to foodstuffs or beverages to give them the flavour of coffee. However, coffee flavourings may also be substances added to coffee to give it an additional flavour or taste, such as the flavour of caramel, vanilla, hazelnut, gingerbread, etc. Coffee flavourings that are used to add flavour to coffee may be in powdered or liquid form. On the market, they are commonly found in the form of syrups and target companies operating in the food and beverage industry as well as the general public. Therefore, the contested coffee flavourings and the opponent’s sugar have the same purpose, namely to alter taste. They may have the same relevant public and may also have the same distribution channels. Furthermore, they may be in competition. Therefore, they are similar to a low degree.

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 various degrees are directed at the public at large.

The degree of attention is considered average.

3. The signs

LA VILLA
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 consisting of the verbal elements ‘LA’ and ‘VILLA’. The verbal element ‘LA’ will be perceived by the relevant public as an article in a foreign language. It qualifies the meaning of the word ‘VILLA’ and is, therefore, of limited distinctiveness. The word ‘VILLA’ will be perceived by the relevant public as referring to a large and luxurious house or mansion and it is distinctive in relation to the goods at issue.

The contested sign is a figurative sign that comprises the word ‘Villa’ depicted in a stylised typeface. The relevant public will perceive it as having the same meaning as the verbal element ‘VILLA’ in the earlier trade mark. It is distinctive in relation to the goods at issue.

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

Visually, the signs coincide in the word ‘VILLA’, which is distinctive in relation to the relevant goods, as stated above. It is the only verbal element in the contested sign and the second verbal element in the earlier sign. However, the signs differ in the verbal element ‘LA’ in the earlier sign, which was found to be of limited distinctiveness, and in the stylisation of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VI-LLA’, present identically in both signs. The pronunciation differs in the element ‘LA’, which is of limited distinctiveness. The contested sign and the earlier mark contain five letters and seven letters respectively, and they have the letters ‘VILLA’ in common; therefore, their rhythms and intonations are similar.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The differing verbal element ‘LA’ will be perceived by the relevant public as an article that qualifies the meaning of the word ‘VILLA’ and is of limited distinctiveness, as stated above.

Therefore, the signs are conceptually highly similar on account of the coinciding distinctive element ‘VILLA’.

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 less distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical or similar to various degrees. They target the public at large. The degree of attention is average. The distinctiveness of the earlier trade mark is normal.

The signs are visually, aurally and conceptually similar to a high degree.

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 the signs differ in the stylisation of the contested sign and in the verbal element ‘LA’ in the earlier trade mark, the word ‘VILLA’ is included in both signs. It constitutes the entire contested sign and it is the main and more distinctive component of the earlier trade mark.

It follows that the relevant public would be likely to believe that goods sold under the contested sign ‘VILLA’ came from the undertaking that owns the earlier word mark ‘LA VILLA’, or that goods sold under these signs came from economically linked undertakings. As a consequence, there is a likelihood of confusion between the signs for the goods found to be identical or similar.

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).

As regards the goods that have been found to be similar to a low degree, it is considered that the high degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between the goods, and there is a likelihood of confusion also in relation to those goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 643 885. It follows that the contested trade mark must be rejected for all the contested goods.

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

Carmen SÁNCHEZ PALOMARES

Biruté SATAITE-GONZALEZ

Michaela SIMANDLOVA

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.