OPPOSITION No B 2 550 583

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

Société de Participations Financières de Profession Libérale, Altij Corp, 40, rue du Japan, 31400 Toulouse, France (applicant), represented by Selas Altij, 40 rue du Japan, 31400 Toulouse, France (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 550 583 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 846 134. The opposition is based on, inter alia, European Union trade mark registration No 10 609 287. 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 10 609 287.

1. The goods and services

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

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.

Class 2: Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants; Mordants; Raw natural resins; Metals in foil and powder form for painters, decorators, printers and artists.

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores.

Class 8: Hand tools and implements (hand-operated); Cutlery; Side arms; Razors.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; Apparatus for locomotion by land, air or water.

Class 13: Firearms; Ammunition and projectiles; Explosives; Fireworks.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.

Class 15: Musical instruments.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile).

Class 37: Building construction; Repair; Installation services.

Class 44: Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services.

Class 45: Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals.

The contested goods and services are the following:

Class 16: Printed matter; Instructional and teaching material and media, including instructional and teaching material and media relating to law; Stationery, printed publications, flyers, books, handbooks, brochures, periodicals, newspapers and/or newsletters, advertising leaflets and posters, including stationery, printed publications, flyers, books, handbooks, brochures, periodicals, newspapers and/or newsletters, advertising leaflets and posters relating to the field of law.

Class 35: Assistance for private individuals and for individual and/or commercial businesses in the conduct of their affairs; Business consultancy, information or enquiries; Consultancy, information or business inquiries in the legal and judicial field, including consultancy, information or business inquiries relating to public law, private law, contract law, social law, commercial law, tax law, corporate law, company law, and intellectual property and advanced technology law.

Class 41: Providing of training, including providing of training in the legal field; Publication of books, Including publication of legal books; Electronic publication of magazines and periodicals online, Including online publication of periodicals and magazines in the legal field; Arranging and conducting of colloquiums, congresses, conferences and seminars, including arranging and conducting of colloquiums, congresses, conferences and seminars in the legal field; Arranging and conducting of workshops, Including arranging and conducting of training workshops in the legal field; Teaching, including teaching in the legal field; Arranging of work placements, including arranging of work placements in the legal field.

Class 42: Development, design, installation, maintenance and updating of computer software (recorded programs), websites and software applications for smartphones and tablets for the organisation and conducting of virtual professional social networks; Development, design, installation, maintenance and updating of computer software (recorded programs), websites and software applications for smartphones and tablets for the organisation and conducting of virtual professional networks intended for legal professionals and private individuals; Design, development, installation, updating and maintenance of computer software (recorded programs), websites and software applications for smartphones and tablets for the organisation and conducting of virtual professional networks; Computer services, in particular creation of virtual communities for registered users enabling the organisation of groups and events, participation in discussions, and professional networking.

Class 45: Legal services and solicitors services; Legal assistance and representation, including services of lawyers; Drafting of legal documents and contracts and legal advice; Legal and judicial guidance; Legal assistance and representation; Legal research; Legal information research services; Legal services and advice, including legal services and advice relating to public law, private law, contract law, social law, commercial law, tax law, corporate law, company law, and intellectual property and advanced technology law; Litigation and dispute resolution; Arbitration and mediation services; Legal assistance, information and advice, assistance and/or guidance in legal or technical expert opinions (whether or not resulting from a court decision) in all the aforesaid fields; Social and professional networking, networking and creation of contacts whether intra-professional or between professionals or non-professionals, not relating to the conduct of affairs, including social and professional networking, networking and creation of contacts whether intra-professional or between professionals or non-professionals, in the legal field; Providing of legal services and advice on a global computer network or online using databases or services in the internet.

Some of the contested goods and services are identical to goods and services on which the opposition is based. 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 and services were identical to those 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 and services assumed to be identical are directed at the public at large and at professionals. The relevant public’s degree of attention towards the goods and services is likely to vary according to the category of goods and services in question, ranging from average to high depending on the nature and the price of the goods and services.

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 composed of four letters and the contested sign is a figurative mark containing the letters ‘Alti’ in white colour and ‘j’ in orange on a dark blue background. Underneath there are the wording ‘Société d'avocats Toulouse-Bordeaux’.

Neither ALDI nor ALTIJ will be understood in the EU. As regards the wording ‘Société d'avocats Toulouse-Bordeaux’, it will be understood by the French speaking part of the public as law firm based in two French cities (Toulouse and Bordeaux). This element is descriptive for some services as regards the French-speaking part of the public.

For others, the names of the cities will be understood, the same with ‘société’ as it has equivalents in other languages (“sociedad” in Spanish, “society” in English, etc).

This wording is written in very small characters in a lighter blue, therefore, the letters ‘Altij’ clearly dominate the visual impression of the contested sign.

Visually, the signs coincide in the sequence of their first two letters ‘AL’ and in their fourth letter ‘I’. However, they differ in their third letter, namely ‘D’ in the earlier mark and ‘T’ in the contested sign, and in the last letter of the contested sign, ‘J’, which is not present in the earlier mark. The marks also differ in the additional wording which is placed in a secondary position in the contested sign and descriptive for the French-part of the public.

Therefore, the signs are 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 sounds of the first syllable, /al/, whereas their second syllables are pronounced differently, namely as /di/ in the earlier mark and /tij/ in the contested sign. In countries such as Spain, the pronunciation of the signs’ third letters, /d/ versus /t/, will be even more different. The wording ‘Société d'avocats Toulouse-Bordeaux’ is likely not to be pronounced due to its position and size.

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

The conceptual examination of the compared signs leads to three possible conclusions that depend on whether the relevant public has any knowledge of the meaning of the signs in conflict.

For a part of the public, in which ‘Société d'avocats Toulouse-Bordeaux’ will not be understood, 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.

For other, as such the French-speaking part of the public, only ‘Société d'avocats Toulouse-Bordeaux’ will be understood, therefore, the conceptual comparison remains neutral.

For others, only the names of the cities will be understood, therefore, the comparison remains neutral as well.

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 trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with the ‘good quality of the products at reasonable prices’.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Two studies by the Market Research Institute A.C. Nielsen GmbH, comparing the results of representative surveys in Germany in 1996 and 1997. According to these surveys, the mark ‘ALDI’ seems to have been known by 100% of the public in Germany in 1996.

• An extract from an article titled ‘Aldi avanciert zur Topmarke’, dated 17/09/2004, in which it is stated that Aldi is the fourth most popular trade mark for woman aged between 30 and 49 years.

• An extract from a newspaper dated 15/11/2004, written in German (and translated into English), in which it states that ALDI is the company with the second best reputation in Germany after Porsche.

• A decision from the Appeal Court in Hamm of 01/04/2003, in which it is ascertained that an outstanding reputation is ascribed to ‘ALDI’ as a trade mark in Germany.

• An article from the website www.tagesschau.de, dated 15/11/2004, stating that ‘Germany’s most successful company is the discounter chain ALDI’ because of ‘its reputation as a low-priced supplier’.

• Results of the Reader’s Digest ‘Most Trusted Brand 2005’ survey, AC Nielsen’s Shopper Trends 2004 and EXBA 2003, all of which confirm that ‘ALDI’ is the strongest trade mark in Germany.

• Printouts from Wikipedia.com regarding the history of ALDI.

• A copy of an article dated 8 April 2014 entitled ‘Best Retail Brands: ALDI bleibt starkste deutsch Marke’ in Marknartukl-Magazin.de.

• A copy of an article dated 26 January 2016 entitled ‘Best Retail Brands: “most popular chain store” ’ in Marknartukl-Magazin.de.

• A printout from an article dated 27/05/2015 stating that ‘Aldi overtakes Tesco in Brandz Top 100 global brand value ranking’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for the opponent’s goods and services in question.

The indications on the services for which the earlier mark has become recognised by consumers demonstrate that retail services are the opponent’s services that are offered and provided under the mark ‘ALDI’. The evidence concerns retail services (in general) in Class 35, and no reference is made to the relevant goods and services.

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 and services 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 the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison ‘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).

The opponent has claimed that the earlier mark on which the opposition is based have an enhanced degree of distinctiveness as a result of the use that has been made of the mark. However, for the reasons stated below, the opponent has not satisfied the conditions for the application of those arguments and the assessment of a likelihood of confusion must, therefore, be based on the inherent distinctiveness of the mark in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Although the conflicting signs have some letters in common, such as their first two letters and their fourth letter, they also have significant dissimilarities as a result of the differences in the letters ‘DI’ versus ‘TIJ’ and figurative elements and additional wording of the contested sign. Since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35), the striking dissimilarities present outweigh the signs’ similarities and, consequently, cause a rather different overall impression.

Taking into account that the similarities of the conflicting signs are outweighed by the dissimilar endings, namely ‘DI’ and ‘TIJ, these differences between the marks are clearly perceptible. Confusion would be even less likely considering that, for some goods and services, the relevant public is knowledgeable and attentive.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on earlier EU trade mark No 12 749 578 for the word mark ‘ALDI’, which is identical to the one that has been compared here. Although this earlier mark additionally also contains services in Class 35, the result would be the same even if this earlier mark enjoyed enhanced distinctiveness for these services.

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

Julie GOUTARD

José Antonio GARRIDO OTALOA

Francesca CANGERI SERRANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.