OPPOSITION No B 2 762 287

Victor Lupu, 85 CPT Juverdeanu ST, Bucharest (Sector 2), Romania (opponent), represented by Ráducu Turtoi, Splaiul Independentei no. 3, Bl. 17, 3rd floor, ap.7, District 5, 040011 Bucharest, Romania (professional representative)

a g a i n s t

Et Djili Soy- Dzhihangir Ibryam, 16 Pliska Str., 7650 Dulovo, Bulgaria (applicant), represented by Mariana Iorgulescu, str.Fagetului 144 bl.ST2,sc.B,ap.46, 900075 Constantza, Romania (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 287 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 497 662, namely against all the goods in Class 29. The opposition is based on inter alia, Romanian trade mark registration No 113 018. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Romanian trade mark registration No 113 018.

According to Rule 22(1) EUTMIR, a request for proof of use pursuant to Article 42(2) or (3) EUTMR will be admissible only if the applicant submits such a request within the period set by the Office for the applicant to file its observations in reply to the notice of opposition and to all the supporting facts, evidence and arguments submitted by the opponent.

On 21/09/2016, the Office invited the applicant, to submit its observations. The time limit expired on 26/03/2017. The applicant requested a suspension of the proceedings on 21/03/2017 that was refused. However, for reasons of equity, the applicant was given until 17/04/2017 to submit observations in reply of the facts, evidences and arguments submitted by the opponent. The applicant’s request for proof of use was submitted on 21/04/2017 that is after the expiry of the time limit.

Therefore, the request for proof of use is not admissible pursuant to Rule 22(1) EUTMIR.

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, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats including seeds and roasted peanut

 

The contested goods are the following:

Class 29: Jellies, jams, compotes, fruit and vegetable spreads; Ground nuts; Broad beans; Potato chips; Dried edible mushrooms; Fruit preserves; Vegetables, tinned [canned (Am.)]; Dates; Beans; Prepared pistachio; Prepared walnuts; Processed pumpkin seeds; Edible sunflower seeds; Sunflower seeds, prepared; Seeds, prepared; Dried figs.

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 jellies, jams, compotes are identically contained in both lists of goods.

The contested fruit and vegetable spreads; broad beans; potato chips; dried edible mushrooms; fruit preserves; vegetables tinned [canned (Am.)]; dates; beans; dried figs are included or overlap with the opponent’s broader category of dried and cooked fruits and vegetables. Therefore, they are identical.

The contested processed pumpkin seeds; edible sunflower seeds; sunflower seeds, prepared; seeds prepared are included or overlap with the opponent´s edible oils and fats including seeds and roasted peanut. Therefore, they are identical.

The contested ground nuts; prepared pistachio; prepared walnuts are highly similar to the opponent’s dried and cooked fruits and vegetables. All of these goods may be consumed as snacks or used as ingredients for preparing cakes, meals etc. Hence they coincide in their purpose, producers, and end consumers, method of use and distribution channels. Furthermore, they may be 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 are directed at the public at large, having an average level of attention.

3. The signs

Gilly
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Both ‘Gilly’ and ‘Djili’ are meaningless in the relevant territory and are, therefore, distinctive.

The contested sign has no element that could be considered clearly more dominant (eye catching) than others.

Visually, the signs only coincide in the presence of letters ‘L’ and ‘I’ notwithstanding the fact that the latter is placed differently throughout the signs, namely second position in the earlier mark versus third position in the contested mark. However, the signs clearly differ in colour and stylisation of the contested mark and the different beginnings and ending of the signs, ‘Gi**y’ versus ‘Dj**i’.

Even though it is true that it is not sufficient to preclude likelihood of confusion merely because the signs differ in their initial parts, the Office can still take into consideration that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

For all the above reasons, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘/il*y/’ that are positioned in the final syllable of both signs. The pronunciation differs at the beginning of the signs, namely in the sound of the syllable ‘/Gi/’ of the earlier mark versus the two consonants together ‘/Dj/’ (followed by the vowel ‘i’ ‘of the contested sign). Moreover, even though the signs have a similar length, the differing sounds are found at the initial parts of the signs and any similarity that could be considered as regards the pronunciation of the signs is weakened because of the existence of the additional sound of the consonants ‘/Dj/’ in the contested sign. At this regard, it has to be noted, that the sound ‘Dj’ in the beginning of a word is unusual in the Romanian language. Therefore, the signs are aurally similar to at most, an average degree.

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.

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.

e)        Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The signs are similar insofar as they have their last sound in common. However, as explained in detail in section c), this commonality is only of such a nature as to lead to a finding of a low degree of visual similarity and, at most an average degree of aural similarity.

Furthermore, the goods themselves are fairly ordinary consumer products. The degree of aural similarity between the two marks is of less importance for goods that are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually, as is the case for the goods at issue that have been considered identical or highly similar. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Consequently, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion.

Having regard to the fact that the marks under comparison are rather short signs, the considerable visual differences between the signs caused by their different first two letters are particularly relevant when assessing the likelihood of confusion between them. Consequently, it can be concluded that the differences between the two marks are clearly perceptible and eclipse the similarities, to the extent that a likelihood of confusion on the part of the public, even considering their average degree of attention and bearing in mind that the goods are identical or highly similar, can safely be excluded.

The Opposition Division is of the view that the relevant public will be able to clearly distinguish the marks in dispute and will perceive them as coming from different undertakings, even with regard to identical goods. Therefore, the opposition must be rejected.

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

Carlos MATEO PÉREZ

Alexandra APOSTOLAKIS

Richard BIANCHI

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.