OPPOSITION No B 2 765 017

ASDA Stores Limited, Asda House, Southbank, Great Wilson Street, Leeds  LS11 5AD, United Kingdom (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (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 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 765 017 is upheld for all the contested goods.

2.        European Union trade mark application No 15 424 591 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 15 424 591 of the word mark ‘ASYA’. The opposition is based on:

1. European Union  trade mark registration No 9 260 019, of the word mark ‘ASDA’,
2. United Kingdom trade mark registration No1 583 337 of the word mark ‘ASDA’,
3. United Kingdom trade mark registration No 1 284 407 of the word mark ‘ASDA’,
4. United Kingdom trade mark registration No 2 253 828 of the figurative mark  ,
5. United Kingdom trade mark registration No 2 553 821 of the figurative mark  and
6. Non-registered trade mark ‘ASDA’ used in the course of trade in the United Kingdom.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to earlier marks 1-5 and Article 8(4) EUTMR in relation to the earlier right 6.

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 9 260 019.

1. The goods

As a preliminary remark it must be noted that the opponent has filed a declaration under Article 28(8) EUTMR in respect of its earlier European Union trade mark registration No 9 260 019 which is registered for the entire class heading of, inter alia, Classes 29 and 30.

Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of EU trade marks applied for before 22 June 2012, and registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.

By letter of 16/09/2016 the opponent submitted such a declaration requesting the inclusion of various goods of, inter alia, the contested goods in Classes 29 and 30. This declaration has not been processed yet by the Office. However, whether all these goods will be covered by the earlier mark or not is irrelevant for the outcome of this case. Therefore, the Opposition Division will proceed on the basis of the goods for which the mark is currently registered.

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk 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.

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.   

Class 30: Flour and preparations made from cereals, bread, pastry and confectionery, ices; bread and pastry food products; sauces (condiments); spices; cooking sauces; ice; pasta; coffee, tea, cocoa, sugar, rice; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; tortillas; tortilla snacks; chutney; biscuits, cookies.

Contested goods in Class 29

Meat, fish, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats are identically contained in both lists of goods.

The contested processed meat products; prepared meat; sliced meat; sausages; salami are included in the broad category of the opponent’s meat. Therefore, they are identical.

The contested processed olives; preserved olives; tinned fruit or vegetables; baked beans; pickles are included in the broad category of the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

The contested cheese; cheese products; mozzarella; dairy produce; dairy products; yoghurt; yoghurt drinks; butter; butter preparations are included in the broad category of the opponent’s milk and milk products. Therefore, they are identical.

The contested dairy substitutes; margarine are highly similar to the opponent’s milk and milk products since they have the same method of use, are in competition, target the same public, are sold next to each other in the same shops and quite often are produced by the same undertakings. Moreover, the contested margarine has the same purpose as certain milk products.

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; coffee, tea, cocoa, sugar, rice; honey, treacle; yeast, baking-powder; salt, mustard; vinegar are identically contained in both lists of goods (including synonyms).

The contested cooking sauces; chutney are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested pasta; tortillas; tortilla snacks; biscuits, cookies are included in, or overlap with the broad category of the opponent’s preparations made from cereals. 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 highly similar are directed at the public at large. The degree of attention is at most average.

3. The signs

ASDA	ASYA
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).

Visually, the marks have the same length, both word marks consisting of four letters of which three are placed in the same order, i.e. ‘AS*A’, except for their respective third letter being a ‘D’ in the earlier mark and a ‘Y’ in the contested sign. Although it must be observed that the marks are not particularly long so that the public can more easily perceive all of their single elements, the mere difference of one letter in the middle of the marks is not sufficiently outstanding to counterbalance the visual similarities caused by the signs’ more striking shared identical beginnings and endings. Consequently, overall the marks must be considered visually similar to an average degree.

 

Aurally, in a significant part of the relevant territory the combination of the letters ‘Y’ and ‘A’ in the contested sign will be contracted so that both signs will be pronounced in two syllables as [AS-DA] and [AS-HA] of which the first syllables sound identical and the second similar due to the shared A-sound at their end. The marks differ in the sound of the first letter of the signs’ second syllable. However, in terms of their global impression, this difference cannot dispel the similarity arising out of the identity of the rest of the letters, especially considering that the remarkable hissing S-sound of their identical syllable, [AS], is located at the more important beginning of the marks. Consequently, the marks are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the majority of 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.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the signs are visually and aurally similar to an average degree while the conceptual aspect does not influence the assessment of the similarity of the signs. The goods were found identical and highly similar and must be assessed from the point of view of the public whose degree of attention is at most average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection and the identity and high similarity of the goods, it must be held that the differences in the middle part of the signs are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could reasonably believe that the contested goods come from the same undertaking or from economically-linked undertakings.

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 9 260 019. 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 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 European Union trade mark registration No 9 260 019 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 grounds of the opposition, namely Article 8(4) and 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

Boyana NAYDENOVA

Adriana VAN ROODEN

Pedro JURADO

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.