OPPOSITION No B 2 596 040
Manuel Ambres e Hijos S.L., Avda. Real de Pinto 79, 28021 Madrid, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)
a g a i n s t
Mond-Star-Pastirma Schinkenproduktions GmbH, Max-Planck-Ring 31, 65205 Wiesbaden, Germany (applicant), represented by Dr. Meyer-Dulheuer & Partners LLP, Franklinstr. 46-48, 60486 Frankfurt am Main, Germany (professional representative).
On 02/03/2017, the Opposition Division takes the following
1. Opposition No B 2 596 040 is partially upheld, namely for the following contested goods:
Class 29: Cheese products; cheese spreads; processed cheese with cured beef; ham; air-dried ham; air-dried ham from kayseri; fried beef; meat; meat, fish, poultry and game.
2. European Union trade mark application No 14 265 839 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 265 839. The opposition is based on Spanish trade mark registration No 3 017 501. 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 goods
In the notice of opposition, the opponent indicated that the goods on which the opposition is based are jams, cheeses, cold cuts in Class 29. To substantiate the earlier right, the opponent submitted (together with the notice of opposition) an extract in Spanish from the official database SITADEX, followed on 23/03/2016 by a translation into English. However, although it can be seen from the original document that the list of goods of Class 29 contains three indications (jamones, quesos y embutidos), the translation submitted by the opponent indicates only two, namely, cheese and cold cuts.
Furthermore, in its previous observations of 21/10/2015, the opponent indicated that the goods were wrongly translated in the notice of opposition and that the goods on which the opposition is based should be hams, cheeses, cold cuts.
According to Rule 19(2) EUTMIR to substantiate an earlier trade mark registration which is not a European Union trade mark, the opponent must provide the Office with evidence of the existence, validity and scope of protection of this earlier mark. According to Rule 19(3) EUTMIR this information and evidence should be in the language of the proceedings or accompanied by a translation. If no translation or an insufficient translation has been submitted within the time limit set by the Office, the evidence will not be taken into account. Moreover, the Office does not consider that information already given in the language of the proceedings in the notice of opposition or in documents submitted later amounts to a valid translation of a registration document, such as a registration certificate, even where such indications have been accepted for admissibility purposes. The translation has to be on a stand-alone basis and cannot be assembled from fragments taken from other documents.
Since the only translation of the extract from SITADEX submitted by the opponent within the time limit set for it to substantiate the opposition indicates cheese and cold cuts in Class 29 and bearing in mind that only the goods on which the opposition is validly based are pertinent, only these goods shall be taken into consideration for the purpose of the further examination of the opposition.
Therefore, the goods on which the opposition is based are the following:
Class 29: Cheese and cold cuts.
The contested goods are the following:
Class 29: Cheese products; cheese spreads; processed cheese with cured beef; ham; air-dried ham; air-dried ham from kayseri; fried beef; meat; tripe; meat, fish, poultry and game; meat extracts.
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 cheese products; cheese spreads and processed cheese with cured beef are included in the opponent’s cheese. Therefore, they are identical.
The contested ham; air-dried ham; air-dried ham from Kayseri and fried beef are included in the broad category of the opponent’s cold cuts, which refer to precooked or cured meats, such as salami, bologna, ham, roast beef, etc., that are sliced and served cold or hot. Therefore, they are considered identical.
The contested meat (included twice in the specification of the contested mark) covers, as a broad category, the opponent’s cold cuts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
The contested fish; poultry and game all are different kind of fish and meats used as food and overlap with the opponent’s cold cuts. Therefore, they are considered identical.
The contested meat extracts is highly concentrated meat stock, which is made from meat and usually used to add meat flavour in cooking and to make broth for drinking. It has a different nature and purpose from the opponent’s cheese and cold cuts. Moreover, they are neither interchangeable nor necessarily complementary. Therefore, they are considered dissimilar.
The contested tripe refers to a type of edible lining found in the stomachs of various farm animals. The mere fact that it is used as an ingredient in many dishes is too weak a link to find a similarity with the opponent’s cheese and cold cuts. The goods have different natures and purposes. Furthermore, they are not in competition and are not necessarily complementary. They are therefore considered dissimilar.
- 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.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 figurative mark consisting of the following elements: the word ‘ASLE’ with large, black, slightly stylised upper case letters ‘A’, ‘L’ and ‘E’ and the larger, red, stylised ‘S’ whose bottom part contains black and red horizontal lines; and the much smaller verbal elements, ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’, depicted in a black, slightly stylised typeface and arranged one above the other just above the letters ‘LE’ of the word ‘ASLE’.
The word ‘ASLE’ does not exist in Spanish and is considered distinctive in relation to the relevant goods. The verbal elements ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’ will be perceived by the relevant Spanish-speaking consumers as referring to ‘hams, cheeses and cold cuts’. Bearing in mind that the relevant goods are cheese and cold cuts, these elements do not have the ability to indicate the commercial origin in relation to the respective goods they describe. The red and black horizontal lines at the bottom of the letter ‘S’ are of a decorative nature and will not retain consumers’ attention, who will instead focus on the word ‘ASLE’ itself.
Although the letter ‘S’ in the middle of the word ‘ASLE’ is larger, of a different colour and more stylised than ‘A’, ‘L’ and ‘E’, the differences in size between these letters are not so great as to result in the clear dominance of the letter ‘S’.
Considering the particular configuration of the earlier mark, it is therefore the word ‘ASLE’ that will be attributed most trade mark significance by the relevant consumers. This is not only because ‘ASLE’ is the first element of the mark and is more visually outstanding in the overall composition of the sign, overshadowing the remaining components ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’ (written in a much smaller typeface), but also because these elements cannot function as a badge of origin for the goods they describe, as detailed above.
The contested sign is a word mark ‘ASLI’. This word is meaningless for the Spanish-speaking public and is considered distinctive in relation to the goods in question.
Visually, the signs are similar to the extent that they coincide in the first three letters, ‘ASL*’, of the words ‘ASLE’ and ‘ASLI’. They differ in the last letters of these elements (‘E’ in the earlier mark versus ‘I’ in the contested sign, respectively) and in the word elements ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’, as well as in the overall stylisation of the earlier mark.
In its observations of 01/06/2016, the applicant claims that due to its size, stylisation and colours, the letter ‘S’ is the most eye-caching and visually dominant element of the earlier mark and that, when compared with the word mark ‘ASLI’, which has no stylistic features, the signs under comparison are visually dissimilar.
According to established practice, when figurative marks with verbal elements and word marks are compared visually, two factors should be taken into account: first, whether or not the signs have in common a significant number of letters in the same order and, second, whether or not the verbal element in the figurative sign is highly stylised. In the present case, the contested sign and the dominant element of the earlier mark have in common three out of four letters placed in the same order, differing only in their last letter. Although the letter ‘S’ and the overall stylisation of the earlier mark create some visual differences between the two marks, the earlier mark will be perceived notwithstanding by the relevant public as consisting of the word ‘ASLE’, written in a stylised manner, together with the words ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’. Consequently, the stylisation of the letter ‘S’ does not prevent the relevant consumers from perceiving the word ‘ASLE’ nor distract their attention from it. Therefore, the marks are considered visually similar to at least an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the first three letters /ASL/, present identically in both marks. The pronunciation differs in the sound of the last letter /E/ of the dominant element, ‘ASLE’, of the earlier mark versus the last letter /I/ of the contested sign, ‘ASLI’. The pronunciation also differs in the sound of the letters /Jamones, Quesos y Embutidos/ of the earlier mark.
The applicant claims that since both ‘ASLE’ and ‘ASLI’ are very short and consist of only four letters, the public will easily perceive all individual elements of the words and focus on the difference in the last letters. The length of the signs may influence the effect of the differences between them. However, only marks consisting of three or fewer letters/numerals are considered short signs by the Office. In the present case, the dominant and distinctive element ‘ASLE’ of the earlier mark and the contested sign ‘ASLI’ consist of four letters and differ only in their last vowels, /E/ versus /I/. Although the letters /E/ and /I/ are not identical, their pronunciation will not result in any significant aural difference that could outweigh the similarities in the sounds of the preceding three letters ‘ASL*’.
Therefore and bearing in mind the weight attributed to the remaining verbal components of the earlier mark (as detailed above), the signs are aurally similar to at least an average degree.
Conceptually, neither ‘ASLE’ nor ‘ASLI’ has any meaning for the public in the relevant territory. ‘-Jamones’, ‘-Quesos y’ and ‘-Embutidos’ of the earlier mark will be perceived by the relevant consumers as described above. Considering the impact of these words in relation to the relevant goods, as explained above, it is considered that they will not contribute to a relevant conceptual difference between the signs. Taking this into account, it is concluded that the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, despite the presence of some descriptive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As concluded above, the contested goods are partly identical and partly dissimilar to the opponent’s goods, and they target the public at large.
The contested sign and the visually dominant and distinctive verbal element of the earlier mark have in common three out of four letters, which are placed in the same order; the marks differ in the last letters of the verbal elements ‘ASLE’ and ‘ASLI’ and in the remaining word elements, the stylisation and the overall graphic composition of the earlier mark. Therefore, as explained in section c), the signs are considered visually and aurally similar to at least an average degree.
The degree of distinctiveness of the earlier mark is average.
The Opposition Division agrees with the applicant that in relation to the ordinary consumer products, such as the relevant goods in Class 29, which are most commonly purchased in supermarkets, the visual similarity between signs can have an increased importance. However, it does not mean that even if these goods are normally examined visually prior to being purchased in self-service areas, the aural aspect should be excluded, since these products can also be ordered on the telephone or asked for orally in specialised shops or even in supermarkets by addressing a supermarket attendant.
Considering all the above and taking into account the abovementioned principle of interdependence, it must be concluded that the differences between the signs are not capable of counteracting the similarities between them. Taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public. Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 017 501.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
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 shall 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
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.