OPPOSITION No B 2 705 773

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, 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

Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi, Küçükçamlıca Cumhuriyet Mah. Libadiye Cad. No:37 İç Kapı No:3 Üsküdar, Istanbul, Republic of Turkey (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto, 41, 20052 Monza (MI), Italy, (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 773 is upheld for all the contested goods.

2.        European Union trade mark application No 15 090 591 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 15 090 591. The opposition is based on, inter alia, European Union trade mark registration No 2 071 728. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 071 728.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder, salt, mustard; vinegar; sauces; spices; ice.  

Class 31:        Agricultural, horticultural and forestry products as well as grains (as far as contained in class 31); live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar; sauces (condiments); spices; ice.

Class 31:        Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Contested goods in Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar; sauces (condiments); spices; ice are identically contained in both lists of goods (including synonyms).

Contested goods in Class 31

Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt are identically contained in both lists of goods (including synonyms).

Contested goods in Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).

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 are directed at the public at large.

The degree of attention is considered average.

3. The signs

ALDI
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 is a word mark consisting of the sole word ‘ALDI’ whereas the contested sign is a figurative mark composed of the word ‘ALSI’, depicted in upper case red letters. The words ‘ALDI’ and ‘ALSI’ have no meaning in relation to the goods at issue. Therefore, they are distinctive.

The contested sign also contains the word ‘COLA’, which will be understood (by the majority of the relevant public) as descriptive for some beverages in Class 32, but also as descriptive for the flavour of various goods in Classes 30, 31 and 32 (e.g. pastries, confectionaries and food stuffs). Moreover, it will be understood as weak and/or descriptive for goods in close relation to these goods (e.g. coffee, tea and bread), since it cannot be excluded that such goods may have cola flavour. ‘COLA’ is also the name of a plant and is descriptive for natural plants in Class 31. Although ‘COLA’ has normal distinctiveness for some of the goods (e.g. live animals in Class 31), it has a secondary position in the contested sign, making ‘ALSI’ to be the dominant element of the sign. The figurative elements of the contested sign, that is, a logo in white and dark blue and a tiny blue figure placed above ‘ALSI’, will merely be perceived as decorative and therefore, weak. The tiny blue figurative element is negligible in the sign, due to its size and position, and is likely to be disregarded by the relevant public.  

Visually, the signs coincide in that the dominant element of the contested sign, ‘ALSI’, share three out of four letters with the earlier mark, ‘ALDI’, having same beginnings and endings. These word elements only differ in their penultimate letters (‘D’ and ‘S’). The contested sign’s remaining elements are either non-distinctive and/or secondary in the sign (‘COLA’), negligible or decorative and weak (for the reasons explained above). Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in that ‘ALDI’ and ‘ALSI’ share the same amount of letters, syllables and that their initial syllable (‘/al/’) is identical. Moreover, their second (and final) syllable shares the same vowel and final letter (‘I’). The additional word element ‘COLA’ may not be pronounced in the contested sign due to its non-distinctiveness or weak character for part of the goods, and/or to its secondary position in the mark. Therefore, the signs are aurally highly similar.

Conceptually, ‘ALDI’ and ‘ALSI’ have no meaning whereas the majority of public in the relevant territory will perceive ‘COLA’ as descriptive or weak for a significant part of the relevant goods. For the goods for which ‘COLA’ is descriptive, the conceptual aspect does not influence on the comparison of signs, since ‘ALDI’ and ‘ALSI’ do not convey any concepts as the remaining elements of the contested sign. However, for the goods for which ‘COLA’ is weak, the element has minimal, but some, impact on the conceptual comparison of the signs, which makes the signs conceptually not similar overall.

Furthermore, for the goods for which ‘COLA’ has normal distinctiveness, the signs are also conceptually not similar, since ‘COLA’ will be understood as, for example, a beverage or a flavour, but as having no meaning in relation to the goods.    

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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’).

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 (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks 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 identical. The signs are visually similar to an average degree, aurally highly similar and the conceptual aspect does not influence on the comparison of signs for the goods for which ‘COLA’ is non-distinctive. It is true that the signs are conceptually not similar for the remaining goods (for which ‘COLA’ is either distinctive or weak). However, for these goods the Opposition Division makes reference to the principle of interdependence (as mentioned above) and finds that a conceptual dissimilarity cannot outweigh the signs’ visual and aural similarities and the fact that the conflicting goods are identical. Account is also 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 071 728. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Benoit VLEMINCQ

Christian RUUD

Frédérique SULPICE

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.