OPPOSITION No B 2 724 949

Mantequerias Arias SA, C/ Pedro Texeira, num. 8-9, 28020 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid Spain (professional representative)

a g a i n s t

Sinan Karacayli, 79 Dollis Hill Lane, Neasden, London  NW2 6JH, United Kingdom (applicant), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative).

On 08/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 949 is upheld for all the contested goods, namely: 

Class 29: Meat, fish, poultry and game; processed meat products; prepared meat; sliced meat; sausages; salami; preserved, frozen, dried and cooked fruits and vegetables; processed olives; preserved olives; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; cheese; cheese products; mozzarella; dairy produce; dairy products and dairy substitutes; yoghurt; yoghurt drinks; butter; butter preparations; margarine; tinned fruit or vegetables; baked beans; pickles, chutney; prepared peanuts; processed peanuts; coated peanuts, namely, processed peanuts coated and flavoured with spices; roasted and salted peanuts; prepared nuts, processed nuts, spiced nuts, seasoned nuts, edible nuts, roasted nuts; edible seeds, processed seeds, prepared seeds; dips; hummus; hummus chick pea paste; tzatziki; tarama (dip); desserts made from milk products; dairy desserts; fruit desserts; yoghurt desserts.

Class 30: Flour and preparations made from cereals, bread, pastry and confectionery, ices; bread and pastry food products; cookies and biscuits; sauces (condiments); spices; seasonings; food seasonings; cooking sauces; ice; snack foods in this class; pasta; coffee, tea, cocoa, sugar, rice; foodstuffs made of rice; prepared rice; wholemeal rice; rice mixes; instant rice; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; tortillas; tortilla snacks; prepared meals containing [principally] rice; frozen prepared rice with seasonings; natural rice [processed] for food for human consumption; salts, seasonings, flavourings and condiments; noodles; asian noodles; rice noodles; dried and fresh pastas, noodles and dumplings; chocolate or chocolate covered confectionary; baked goods, confectionery, chocolate and desserts; puddings for use as desserts; prepared desserts in this class; ice cream desserts.

2.        European Union trade mark application No 15 118 995 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 118 995, namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 3 491 578. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR 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 3 491 578.

1. The goods

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

Class 29: Milk and milk products; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and dairy products; edible oils and fats.

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 (condiments); spices; ice; beverages based on cocoa and chocolate, natural sweetener, ketchup, pasta, sandwiches, cooked meals in which flour predominates.

The contested goods are the following:

Class 29: Meat, fish, poultry and game; processed meat products; prepared meat; sliced meat; sausages; salami; preserved, frozen, dried and cooked fruits and vegetables; processed olives; preserved olives; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; cheese; cheese products; mozzarella; dairy produce; dairy products and dairy substitutes; yoghurt; yoghurt drinks; butter; butter preparations; margarine; tinned fruit or vegetables; baked beans; pickles, chutney; prepared peanuts; processed peanuts; coated peanuts, namely, processed peanuts coated and flavoured with spices; roasted and salted peanuts; prepared nuts, processed nuts, spiced nuts, seasoned nuts, edible nuts, roasted nuts; edible seeds, processed seeds, prepared seeds; dips; hummus; hummus chick pea paste; tzatziki; tarama (dip); desserts made from milk products; dairy desserts; fruit desserts; yoghurt desserts.

Class 30: Flour and preparations made from cereals, bread, pastry and confectionery, ices; bread and pastry food products; cookies and biscuits; sauces (condiments); spices; seasonings; food seasonings; cooking sauces; ice; snack foods in this class; pasta; coffee, tea, cocoa, sugar, rice; foodstuffs made of rice; prepared rice; wholemeal rice; rice mixes; instant rice; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; tortillas; tortilla snacks; prepared meals containing [principally] rice; frozen prepared rice with seasonings; natural rice [processed] for food for human consumption; salts, seasonings, flavourings and condiments; noodles; asian noodles; rice noodles; dried and fresh pastas, noodles and dumplings; chocolate or chocolate covered confectionary; baked goods, confectionery, chocolate and desserts; puddings for use as desserts; prepared desserts in this class; ice cream desserts.

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

Meat, fish, poultry and game, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs; milk and milk products, edible oils and fats identically appear on both lists (including synonyms).

Frozen fruits and vegetables fall into the broad category of the opponent’s preserved fruits and vegetables. Therefore, they are identical.

Processed meat products; prepared meat; sliced meat; sausages; salami are included in or overlap with the opponent’s broader category of meat. Therefore, they are identical.

Cheese; cheese products; mozzarella; dairy produce; dairy products; yoghurt; yoghurt drinks; butter; butter preparations; desserts made from milk products; dairy desserts; yoghurt desserts are included in the opponent’s broader category dairy products. Therefore, they are identical.

Tinned vegetables, baked beans; pickles belong to the opponent’s broad category of preserved vegetables. Therefore, they are identical.

Tinned fruit is included in the opponent’s preserved fruits. Therefore, they are identical.

Fruit desserts are similar to the opponent’s preserved fruits. They can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

Margarine, dairy substitutes, dips; tzatziki; tarama (dip) are similar to the opponent’s dairy products as they have the same purpose as far as the opponent’s broad category also includes goods such as butter and cream cheese which can be used as a spread. They can coincide in end user, distribution channels and method of use. Furthermore they are in competition.

Processed olives; preserved olives; prepared peanuts; processed peanuts; coated peanuts, namely, processed peanuts coated and flavoured with spices; roasted and salted peanuts; prepared nuts, processed nuts, spiced nuts, seasoned nuts, edible nuts, roasted nuts; edible seeds, processed seeds, prepared seeds, chutney; hummus; hummus chick pea paste are similar to the opponent’s preserved vegetables. They can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

Contested goods in Class 30

Flour and preparations made from cereals, bread, pastry and confectionery, ices; bread and pastry [food products], sauces (condiments); spices; ice; pasta; coffee, tea, cocoa, sugar, rice; honey, treacle; yeast, baking-powder; salt, mustard; vinegar  identically appear in both lists (including synonyms).

Cookies, biscuits, foodstuffs made of rice; tortillas; tortilla snacks; prepared meals containing [principally] rice; frozen prepared rice with seasonings; natural rice [processed] for food for human consumption; baked goods, prepared rice; wholemeal rice; rice mixes; instant rice all fall under the broad category of preparations made from cereals covered by the earlier right and thus the goods are identical.

Cooking sauces are included in the opponent’s sauces (condiments). Therefore, the goods are identical.

Seasonings; food seasonings; flavourings are synonymous and thus identical to the opponent’s spices.

Ice cream desserts fall into the broad category of ices covered by the earlier sign; thus there is identity between these goods.

Noodles; asian noodles; rice noodles; dried and fresh pastas, noodles and dumplings are included in or overlap with the opponent’s broader category pasta. Therefore, the goods are identical.

Chocolate or chocolate covered confectionary, chocolate and desserts; puddings for use as desserts fall into the broad category of the opponent’s confectionery. Therefore, the goods are identical.

Snack foods in this class, prepared desserts in this class are broad categories which overlap with the opponent’s confectionery. Since the Opposition Division cannot dissect ex office the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 general foodstuff for everyday consumption and are directed at the public at large. Products like flour, milk, rice, sugar, etc., are inexpensive basic food items that are bought regularly and out of habit, thus the consumers tend to pay less attention when browsing in stores and making purchases. Nevertheless, as for confectionery items, pastries, ice cream, etc., the mere fact that the relevant public makes an impulse purchase of sweets does not mean that the level of that public’s attention is lower than average (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 34).

Therefore, the degree of attention of the relevant public will range from average to low.

3. The signs

ARIAS	ARYA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs are probably pronounced identically in French although this public might also recognise the ending ‘S’ sound in spite of existing grammatical rules. In Czech, Hungarian and Estonian their pronunciation is /arias/ and /aria/, and thus it only differs in the sound of the earlier sign’s final ‘S’ letter.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French, Czech, Hungarian and Estonian-speaking part of the public.

Visually, the signs coincide in their first, second and fourth letters AR*A and they differ in the signs’ third letters ‘I’/’Y’ and the last letter ‘S’ of the earlier sign.

Therefore, the signs are visually similar to an average degree.

Aurally, as explained above, the signs are either identical (for the majority of the French-speaking public) or highly similar, only differing in one final ‘S’ sound (for the Czech, Hungarian and Estonian-speaking part of the public).

Conceptually, in principle, 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.

It cannot be excluded that part of the French-speaking public associate the contested sign with the word ‘aria’ meaning a long accompanied song for a solo voice, typically one in an opera or oratorio. However, a significant part of the public will not recognise this meaning, especially out of the context (i.e. opera or literature). In any event, in such a case the earlier mark would be also understood as the plural form of ‘aria’, and thus the signs would be conceptually highly 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

In the present case, the signs are aurally highly similar or even, for part of the relevant public, identical. Furthermore, they are also visually similar to an average degree. For a significant part of the public none of the signs carries a concept which would set them apart, and even if some recognise a concept in the signs, this would make them conceptually highly similar.

Therefore, when confronted with a sign phonetically replicating the opponent’s trade mark, even with an additional final sound, the reasonably well informed and reasonably observant and circumspect consumers, and especially the less attentive ones, will readily assume that the identical or similar goods come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the French, Czech, Hungarian and Estonian-speaking-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration invoked by the opponent 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Ferenc GAZDA

Marianna KONDÁS

Julie GOUTARD

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.