OPPOSITION No B 2 722 448

Tugba Kuruyemissekerleme Gida Mesrubat Insaat Turizm Yerli Urunleriimalat Sanayi Ticaret Ithalat Ve Ihracaat Limited Sirketi, Kurtulus Mahallesi, Adnan Menderes Bulvari No. 62, Aydin, Turkey (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative)

a g a i n s t

Mondial Distribution, 36 rue de l'avenir, 69740 Genas, France (applicant), represented by Decouvertes & Droit, 30 rue Jean Broquin, 69006 Lyon, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 448 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 15 167 381 , namely against all the goods in Classes 29 and 30. The opposition is based on international trade mark registration No 983 854 designating Romania, Bulgaria, Benelux, Germany and France. 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 and services

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

Class 29: Dried fruits, namely dried chickpeas, pistachio nuts, pine nuts, hazelnuts, almonds, roasted chickpeas, sun dried flower seeds.

Class 30: Almond confectionery.

Class 35: Retail sale services; bringing together for the benefit of others of a wide variety of goods (excluding the transport thereof) enabling them to view and purchase those goods.

The contested goods after the applicant’s limitations of 23/12/2016 and 13/01/2017 are the following:

Class 29:        Oils and fats; fish, seafood and molluscs; dairy products and dairy substitutes; poultry eggs and egg products; chilled foods consisting predominately of fish; frozen appetizers consisting primarily of seafood; frozen appetizers consisting primarily of chicken; fritters; potato fritters; fish crackers; bisques; white pudding; beef bouillon; spicy beef broth (yukgaejang); vegetable stock; chicken stock; stock [prepared]; ox bone based broth (seolleongtang); stock; broth [soup]; fish stock; potato-based dumplings; chicken balls; meatballs; potato sticks; desserts made from milk products; artificial milk based desserts; soup cubes; stock cubes; chicken croquettes; faggots [food]; fish cakes; coconut shrimp; croquettes; puffed pork rind; canned pork and beans; soups; condensed tomatoes; soup concentrates; broth concentrates; chop suey; chili con carne; chile con queso; chowder; chicharron; caponata; french fries; frozen french fries; veal stock; potato flakes; stuffed cabbage rolls; falafel; extracts for soups; prepared snails [escargot]; roast beef flavoured extract; meat-based snack foods; tofu-based snacks; soy-based snack foods; potato-based snack foods; vegetable-based snack foods; dolmas; yoghurt desserts; dairy puddings; chilled dairy desserts; olives stuffed with feta cheese in sunflower oil; olives stuffed with red peppers and almonds; olives stuffed with red peppers; olives stuffed with pesto in sunflower oil; edible birds' nests; mixes for making soup; mixes for making broths; bottled vegetables; powdered milk for food purposes; radish cubed kimchi (kkakdugi); clam juice; vegetable soup preparations; shepherd's pie; corned beef hash; steamed or toasted cakes of fish paste (kamaboko); steamed cakes of smashed fish and yam (hampen); gumbo; potato-based gnocchi; potato pancakes; scotch eggs; soup pastes; eggplant paste; vegetable marrow paste; prepared meals made from poultry [poultry predominating]; prepared meals made from meat [meat predominating]; prepared meat dishes; prepared meals consisting primarily of meat substitutes; prepared meals consisting principally of game; prepared dishes consisting primarily of fishcakes, vegetables, boiled eggs, and broth (oden); pre-packaged dinners consisting primarily of seafood; cooked meat dishes; cooked dish consisting primarily of chicken and ginseng (samgyetang); cooked meals consisting principally of fish; ready cooked meals consisting wholly or substantially wholly of meat; ready cooked meals consisting wholly or substantially wholly of poultry; ready cooked meals consisting wholly or substantially wholly of game; cooked dish consisting primarily of rich soybean paste and tofu (cheonggukjang-jjigae); cooked dish consisting primarily of soybean paste and tofu (doenjang-jjigae); cooked dish consisting primarily of stir-fried chicken and fermented hot pepper paste (dak-galbi); cooked dish consisting primarily of fermented vegetable, pork and tofu (kimchi-jjigae); cooked dish based predominantly on sautéed beef and fermented soy sauce (sogalbi); omelets; chile rellenos; breaded and fried jalapeno peppers; pre-cooked curry stew; beef stew; quenelles; mashed potato; soup (preparations for making -); preparations for making bouillon; instant soup; hash brown potatoes; filled potato skins; stewed apples; pollen prepared as foodstuff; fish with chips; fish jellies; fish in olive oil; frozen cooked fish; chilled meals made from fish; frozen prepared meals consisting principally of vegetables; prepared dishes consisting principally of meat; prepared meals containing [principally] chicken; prepared meals containing [principally] bacon; prepared meals consisting substantially of seafood; frozen pre-packaged entrees consisting primarily of seafood; vegetable-based entrees; prepared meals based mainly on eggs; soy burger patties; pre-cooked soup; pre-cooked miso soup; instant miso soup; soup powders; canned soups; matzo ball soup; soya [prepared]; bologna; vegetarian sausages; sausages in batter; fish sausages; prepared salads; legume salads; antipasto salads; chicken salad; potato salad; caesar salad; rosti [fried grated potato cakes]; onion rings; pre-packaged dinners consisting primarily of game; casseroles [food]; instant stew; stews; tofu burger patties; vegetable burgers; tofu; dips; dairy-based dips; tzatziki; meat boiled down in soy sauce (tsukudani meat); dried beef; custard style yoghurts.

Class 30: Coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; starches and goods made thereof, baking preparations and yeasts; bakery goods; salts, seasonings, flavourings and condiments; beekeeping products; prepared foodstuffs in the form of sauces; prepared savory foodstuffs made from potato flour; filled baguettes; baozi [stuffed buns]; pizza bases; rice biscuits; crackers flavoured with herbs; crackers flavoured with spices; crackers flavoured with meat; rice crackers; crackers flavoured with vegetables; crackers filled with cheese; crackers flavoured with cheese; crackers made of prepared cereals; rice crackers [senbei]; pellet-shaped rice crackers (arare); onion biscuits; puffed cheese balls [corn snacks]; rice dumplings; rice dumplings dressed with sweet bean jam (ankoro); pretzels; soft pretzels; empanadas; snack food products made from cereal starch; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; green onion pancake [pajeon]; chow mein [noodle-based dishes]; chow mein; wholewheat crisps; crisps made of cereals; tortilla chips; wonton chips; rice crisps; vegetable flavoured corn chips; seaweed flavoured corn chips; corn chips; prawn crackers; chimichanga; cheeseburgers [sandwiches]; chalupas; canapes; burritos; calzones; puffed corn snacks; cheese flavored puffed corn snacks; cereal snack foods flavoured with cheese; snack foods consisting principally of bread; ready to eat savory snack foods made from maize meal formed by extrusion; enchiladas; fajitas; flapjacks; pizza crust; fresh sausage rolls; sausage rolls; grain-based chips; kimchi pancakes (kimchijeon); mung bean pancakes (bindaetteok); stir fried rice cake [topokki]; corn kernels being toasted; chinese stuffed dumplings (gyoza, cooked); buckwheat jelly (memilmuk); hot dogs (prepared); jiaozi [stuffed dumplings]; lasagne; macaroni with cheese; nachos; stir-fried noodles with vegetables (japchae); okonomiyaki [japanese savory pancakes]; filled bread rolls; french toast; bean jam buns; steamed buns stuffed with minced meat (niku-manjuh); hot dog sandwiches; pizza; preserved pizzas; glutinous pounded rice cake coated with bean powder (injeolmi); flaky pastry containing ham; frozen pastry stuffed with meat and vegetables; pasta containing stuffings; canned pasta foods; pre-baked pizzas crusts; pastries consisting of vegetables and meat; pastries consisting of vegetables and fish; frozen pastry stuffed with vegetables; frozen pastry stuffed with meat; pastries consisting of vegetables and poultry; savory pastries; egg rolls; pork pies; fresh pizza; uncooked pizzas; pizzas [prepared]; chilled pizzas; frozen pizzas; dry and liquid ready-to-serve meals, mainly consisting of pasta; dry and liquid ready-to-serve meals, mainly consisting of rice; ready-made dishes containing pasta; pasta dishes; prepared rice dishes; prepared meals containing [principally] rice; prepared meals containing [principally] pasta; meals consisting primarily of pasta; meals consisting primarily of rice; prepared meals in the form of pizzas; prepared pizza meals; rice based dishes; pumpkin porridge (hobak-juk); quesadillas; quiches; ramen [japanese noodle-based dish]; ravioli; ravioli [prepared]; shrimp dumplings; boxed lunches consisting of rice, with added meat, fish or vegetables; noodle-based prepared meals; pasta-based prepared meals; rice-based prepared meals; risotto; sweet rice with nuts and jujubes (yaksik); bibimbap : rice mixed with vegetables and beef; stir-fried rice; gimbap [korean rice dish]; spring rolls; macaroni salad; pasta salad; rice salad; samosas; sandwiches; sandwiches containing minced beef; sandwiches containing fish; sandwiches containing meat; sandwiches containing fish fillet; frankfurter sandwiches; toasted cheese sandwich with ham; toasted cheese sandwich; sandwiches containing salad; sandwiches containing chicken; toasted sandwiches; hot sausage and ketchup in cut open bread rolls; chinese steamed dumplings (shumai, cooked); cheese curls [snacks]; korean-style pasta soup [sujebi]; canned spaghetti in tomato sauce; spaghetti and meatballs; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; sushi; tabbouleh; tacos; tamales; mincemeat pies; salted tarts; tortillas; taco chips; pies; poultry and game meat pies; vegetable pies; meat pies; meat pies [prepared]; pies containing meat; pies containing poultry; pies containing vegetables; pies containing game; pies containing fish; pot pies; fresh pies; pies [sweet or savoury]; wontons; wrap [sandwich].

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’ and ‘excluding’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed goods and services.

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.

Although the goods and services in question are not identical, it is clear that some of the contested goods are similar to goods on which the opposition is based (both, the opponent’s goods and some of the contested goods may be consumed as snacks and are in competition with each other). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were similar to goods and services of the earlier mark.

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 in question (foodstuffs) assumed to be similar to the opponents goods and services are directed at the public at large.

In the present case, since the goods and services in question are daily purchases and inexpensive products, the degree of attention is considered to be average or even below average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory are Romania, Bulgaria, Benelux, Germany and France, namely the Member States designated by international trade mark registration No 983 854.

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 trade mark includes the word elements ‘Tuqba KURU YEMIS’ written with accents as presented above. It should be mentioned that these elements refer to  Turkish words, namely the element ‘Tuqba’ to ‘Tuğba’ even though the letter ‘q’ does not exist in Turkish alphabet (‘Tuğba’ means: ‘1. Beauty, kindness. 2. A tree believed to be existed in Heaven’) and the elements ‘KURU YEMIS’ refer to ‘Kuruyemiş’ (which is a common name used for dried fruit). Nevertheless, as these words are meaningless from the perspective of the European Union public, including the relevant territories, these word elements are therefore distinctive for the goods in question. The word element ‘Tuqba’ is written in bold upper case letters, below which are placed the remaining word elements ‘KURU YEMIS’ that are significantly smaller in size and written in upper case (all with accents as seen above). Moreover, these word elements are divided by the descender of the letter ‘q’ in the ‘Tuqba’ word element placed above. All of these elements are in black and are within an irregular rectangular shape which has curved symmetrical upper and lower lines. This rather simple arrangement of the word elements included in a curved frame can be considered as a type of the labelling in perception of the consumers.

The earlier mark has no elements that could be considered clearly more dominant than the other elements due to the way in which the ‘q’ element in ‘Tuqba’ is also  incorporated in the word elements ‘KURU/YEMIS’.

The contested sign includes the word element ‘TUBÂ’ which is meaningless for part of the relevant public, for instance the Romanian-speaking part, as this word written as such does not exist and the Romanian-speaking part of the public will pay attention to the ‘Â’ letter existing as such in their language (‘Â’ letter in Romanian has a different sound than the letter ‘A’, which is not a case e.g. in French).

However, for the remaining parts of the public it can be perceived as a meaningful word when the accent above the letter ‘Â’ is disregarded; it does not exist in some languages, e.g. Bulgarian and German, and will not influence on the perception of the letter ‘A’ as such. For instance, for the Bulgarian-speaking part it may be associated with: ‘a tube’, by the French-speaking public it can be associated with ‘a snorkel’, as well as, with ‘a large brass wind instrument of bass pitch, with three to six valves and a broad bell typically facing upwards’; to the latter meaning this word will be associated also by the German- and the Dutch-speaking part of the public.

As showed above, the ‘TUBÂ’ element, depending on the part of the relevant public, is either meaningless or meaningful, however as it has no connotation in relation to the relevant goods, it is distinctive.  

Apart from the word ‘TUBA’ written in green upper case letters with accent ‘^’ above the letter ‘A’, the earlier mark includes a green leaf device with red shading in the bottom part. This leaf device is a finishing point of the ellipse framing, which is red on the left-hand side and green on the right-hand side. The green lettering of the ‘TUBA’ element in the contested sign must be considered clearly more dominant than the other elements.

Since both signs are figurative marks it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. In the present case also the different length of the word elements in the signs is a significant factor. As regards the earlier trade mark, its word elements are placed one below another and in such case consumers tend to read the signs, as mentioned above, from left to the right side and from the top to the bottom. On the other hand, the contested sign contains only one dominant, and rather short four-letter element. Consequently, the length of the signs may influence the effect of the differences between them. Consumers at first sight will be able to more easily distinguish between the marks on the basis of their lengths.

Visually, the signs coincide in the letters ‘TU’ and ‘B(A)/(Â)’. However, they differ in the letter ‘q’ in the earlier mark with an accent ‘-’ above it, and its further word elements ‘KURU YEMIS’. Furthermore, the signs differ in their overall stylisation and as regards the contested sign, it contains a leaf device.    

Therefore, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘TU’ and ‘BA’ (however, inter alia, the Romanian-speaking part of the public can clearly differentiate between the letters ‘Â’ and ‘A’). The pronunciation differs in the sound of the letter ‘q’ of the earlier sign placed between the coinciding ‛TU-BA’ letters, and it the sound of the letters constituting the word elements ‘KURU/YEMIS’ in the earlier mark, which have no counterparts in the contested mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, some parts of the public in the relevant territories within the European Union, namely Romania, Bulgaria, Benelux, Germany and France may perceive in the contested sign the meaning(s), as explained above, and all the consumers will associate the leaf device included in this sign with a leaf itself, whereas, 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the earlier trade mark enjoys a normal degree of inherent distinctiveness. The degree of attentiveness of the public at large in relation to the relevant goods is considered average or below average. The contested goods assumed to be similar to the opponent’s goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T 488/07, Egléfruit, EU:T:2010:145).

Account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Therefore, in the present case an overall different visual aspect made by the signs on the relevant publics will play a significant role. The signs are considered visually similar to a low degree, since the sign’s stylisations differ in terms of their colouring, shape of the framing, and furthermore, a leaf device which further differentiates the signs on a conceptual level. The signs are not conceptually similar; remarks made above in this regard are referred hereto. The signs are considered to be visually and aurally similar to a low degree as they coincide only in the ‛TU(*)BA’ letters. They differ in all the remaining verbal elements, namely on the one hand, in the earlier sign the letter ‘q’ with an accent ‘-’ and the word elements ‘KURU/YEMIS’, and on the other hand, a leaf device in the contested sign.

To conclude, taking into consideration the general principle of a greater importance of the verbal elements over the figurative elements, the similarity pertained to these four coinciding letters (further differentiated by the accent ‘^’ above the letter ‘A’) of the contested sign appearing in the earlier trade mark, is insufficient to bring the contested sign to consumer’s mind when encountering the marks in question. The differing number of the earlier trade mark’s compounds, and consequently, visibly different length of the signs word elements, allow the consumers to distinguish between the marks upon purchasing the goods in question (foodstuffs).

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29), and in the present case, such a risk for the conflicting signs is by the Opposition Division excluded. Therefore, there is no likelihood of confusion on the part of the public and 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

Gregor SCHNEIDER

Birgit FILTENBORG

Gailé SAKALAITE

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.