OPPOSITION No B 2 714 403

Plantas de Navarra S.A.U., Carretera  San Adrián Km. 1, 31514 Valtierra (Navarra) Spain (opponent), represented by Clarke, Modet y Cía. S.L.,
Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Adelina Gross, Volframgatan 5, 213 64 Malmö, Sweden.  

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 403 is partially upheld, namely for the following contested goods:

Class 29:    Ajvar [preserved peppers]; pickled peppers; olives stuffed with red peppers; extracts of vegetables [juices] for cooking; beans; dried beans; canned beans; baked beans.

Class 31:   Capsicums.

2.        European Union trade mark application No 15 090 616 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 090 616. The opposition is based on European Union trade mark registration No 13 684 791. 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

In 07/07/2016, B 2 521 253, the Opposition Division partially upheld the earlier mark.

Therefore, the goods on which the opposition is based are the following:

Class 31:   Aquacultural crops, horticulture and forestry products.

The contested goods are the following:

Class 29:   Ajvar [preserved peppers]; pickled peppers; olives stuffed with red peppers; extracts of vegetables [juices] for cooking; milk products; dairy products and dairy substitutes; powdered cream; sausages; preserved sausages; milk; dried milk; cheese products; chowder; beans; dried beans; canned beans; baked beans.

Class 30:   Peppers [seasonings]; biscotti; wafers; savory biscuits; salted biscuits; coffee; coffee in whole-bean form; black tea; flour.

Class 31:   Capsicums.

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 ajvar [preserved peppers]; pickled peppers; olives stuffed with red peppers; beans; dried beans; canned beans; baked beans in Class 29 are various processed vegetables. The opponent’s horticulture products in Class 31 include fruits, berries, nuts, vegetables etc. and, for example, fresh (unprocessed) peppers and beans. The contested goods are, therefore, similar to the opponent’s goods. These goods have the same nature (e.g. a pepper is a pepper whether it is fresh, preserved or pickled). Moreover, the conflicting goods in Classes 29 and 31 are in competition (pickled peppers may be chosen instead of fresh peppers for cooking or consumption purposes) and they target the same relevant public and are sold through the same distribution channels.

The contested extracts of vegetables [juices] for cooking are similar to a low degree to the opponent’s horticulture products in Class 31, since the opponent’s goods cover the vegetables that the contested goods are based on. These goods may therefore coincide in purpose (e.g. they are both used for cooking), they may be in competition, target the same relevant public and have the same distribution channels.

The contested milk products; dairy products and dairy substitutes; powdered cream; milk; dried milk; cheese products are dissimilar to the opponent’s aquacultural crops, horticulture and forestry products in Class 31 since the contested goods are dairy products that originate from cattle (cows), sheep or goats, while the opponent’s goods are, for example, seaweed, fresh fruits and vegetables and tree-based products. The conflicting goods have, therefore, a completely different nature, purpose, method of use and they are not in competition or complementary.

Furthermore, the contested chowder is a milk-based prepared soup or meal. Although such goods may contain fresh vegetables (covered by the opponent’s goods), they differ in nature, purpose and method of use to the opponent’s aquacultural crops, horticulture and forestry products in Class 31, which are, for example, seaweed, fresh fruits and vegetables and forestry products made of trees. Moreover, these goods are neither complementary or in competition. Therefore, they are dissimilar.

The contested sausages; preserved sausages are goods that originate from pigs, lamb, cows or even horses, whereas the opponent’s aquacultural crops, horticulture and forestry products in Class 31 are crops cultivated at sea and goods such as fresh vegetables and fruits and tree-based products. These goods have a different nature, purpose and method of use and are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 30

The contested peppers [seasonings] are based on peppers covered by the opponent’s broad category horticulture products in Class 31. Nevertheless, these goods have a different purpose; the contested goods are used for flavouring purposes in cooking, while fresh peppers are either consumed as such or used as ingredients in various meals. Furthermore, these goods have a different nature and method of use and they are not complementary or in competition. Therefore, they are dissimilar.

The contested biscotti; wafers; savory biscuits; salted biscuits; coffee; coffee in whole-bean form; black tea; flour have a different nature, purpose and method of use from the opponent’s aquacultural crops, horticulture and forestry products in Class 31. Moreover, these goods are not complementary or in competition. Therefore, these goods are dissimilar.

Contested goods in Class 31

The contested capsicums are included in the broad category of the opponent’s horticulture products. Therefore, they are identical.

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 to be average.

3. The signs

ADELITA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 (a word mark) ‘ADELITA’ will be perceived by a part of the public (e.g. by the Spanish-speaking part) as a female name deriving or denominating from ‘Adela’. For the part of the public that does not perceive ‘ADELITA’ as a name, it will be perceived as a fanciful word. Nevertheless, perceived as both a name or as merely fanciful, the earlier mark has no meaning in relation to the relevant goods and is distinctive.

The verbal element ‘ADELINA’ in the contested sign (a figurative mark), depicted in red upper case letters in the sign, will also be perceived as a female name by a part of the public, since it is a variant of Adeline, but can also be perceived as a variant of the names ‘Adela’ or ‘Adelia’. The remaining part of the public will perceive ‘ADELINA’ as a fanciful word. The word element ‘ADELINA’ is either way distinctive for the relevant goods (perceived as a name or not). Furthermore, the contested sign contains a depiction of a globe in red and white, placed inside a white frame against a red background. The globe is distinctive, but may be perceived as being less dominant as ‘ADELINA’, since it is placed in the background of the word element. The use of colour and a white frame will be perceived as decorative and weak elements in the sign.  

Visually, the signs coincide in the string of letters ‘ADELI*A’. Therefore, the earlier mark and the verbal element of the contested sign only differ in their penultimate letters (‘T’ and ‘N’). Moreover, the signs differ in the graphical elements of the contested sign (i.e. the distinctive globe and the sign’s decorative and less distinctive elements). However, 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). Therefore, the signs are visually highly similar.

Aurally, the signs differ in the pronunciation of their penultimate letters ‘T’ and ‘N’. However, this is hardly audible since this difference lies in their fourth and final syllable (‘/TA/’ and ‘/NA/’), whereas their three initial syllables are identical (‘/A/DE/LI/’). Therefore, the signs are aurally highly similar.  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the public, both signs will be perceived as containing a female first name and will by some even be perceived as containing names deriving from the same root (i.e. ‘Adela’). Nevertheless, the contested sign also contains the distinctive concept of a globe, which reduces the conceptual similarity between the signs (even for those that may perceive ‘ADELITA’ and ‘ADELINA’ as different versions of ‘Adela’).

Therefore, the signs are conceptually similar to a low degree for the part of the public that perceives the signs as containing two female first names, and conceptually not similar for the part that perceives  ‘ADELITA’ and ‘ADELINA’ as fantasy words, but will perceive the concept of a globe in the contested sign.

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

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). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the likelihood of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. Although they are conceptually not similar for a part of the public, this factor cannot counterbalance the fact that the signs are visually and aurally highly similar. Furthermore, for the remaining part of the public the signs are similar to a low degree conceptually. The earlier mark is also distinctive and the relevant public’s degree of attention is average. Bearing this in mind, the similarity between the signs is such that it is likely to lead consumers to confuse them even in relation to the goods found to be similar to a low degree. In this regard, account is 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).

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Begoña URIARTE VALIENTE

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.