OPPOSITION No B 2 731 852

Felix Solis, S.L., Autovía de Andalucía Km. 199, 13300 Valdepeñas (Ciudad Real), Spain (opponent), represented by José María Sánchez Wolff, Avda/ Cantabria 48, 3ºa, 28042 Madrid, Spain (professional representative)

a g a i n s t

Moulins Joseph Nicot, 1 chemin du Moulin de la Ville, 71150 Chagny, France (applicant), represented by Cabinet Vittoz, 26 rue du Quatre-Septembre, 75002 Paris, France (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.       Opposition No B 2 731 852 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 15 239 791 ‘AUX MOULINS DE JOSEPH’. The opposition is based on European Union trade mark registration No 13 083 423 ‘LOS MOLINOS’. 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.

1. The goods and services

The goods and services on which the opposition is based are 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 and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 43:         Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 29:         Prepared (or cooked) meals made from vegetables, meat, fish, poultry or game; meat, fish, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; potato crisps; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; edible fats; butter; charcuterie; salted meats; crustaceans (not live); meat and fish preserves; soups; cheese products; milk beverages, milk predominating; dairy desserts, yoghurts, yoghurt beverages, milkshakes, cream cheese, petit-suisse; milk drinks containing fruits; fruit salads; fruit-based snack food.

Class 30:         Prepared or cooked dishes based on pastry, pasta or rice; non-medicinal infusions, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, cookies, rusks, buns, gingerbread, flour-milling products, cakes, pastry and confectionery, viennoiserie; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces (condiments); spices; herbs (preserved); chocolate; beverages on the basis of chocolate, cocoa, coffee or tea; sweet creams, crèmes brûlées, crème caramel, egg creams, custard; dessert mousses (confectionery), floating islands, chocolate desserts, sweet and savoury tarts; flans, waffles, pancakes; rice cakes; semolina cakes; rice puddings, rice-based snack food, cereal-based snack food; sweets (desserts), chilled desserts, edible ices, ice cream, sherbets (ices), frozen yoghurt (confectionery ices), flavoured water ices; coulis (fruit) [sauces], pizza, sandwiches, farinaceous food pastes; savoury flaky pastries.

Class 43:         Services for providing food and drink; tea rooms; brasseries, cafes, bars, cafeterias; catering; temporary accommodation; hotel services; rental of rooms for receptions, conferences, conventions, exhibitions, seminars and meetings; preparation of takeaway meals.

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 deemed to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

LOS MOLINOS	AUX MOULINS DE JOSEPH
Earlier 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 right consists of the Spanish words ‘LOS MOLINOS’ which mean “The Mills” which are buildings equipped with machinery for grinding grain into flour. The sign will be understood as such by the Spanish-speaking part of the relevant territory. However, for the other part of the public where Spanish is not understood it has no meaning. In any case, as it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The contested sign consists of the words ‘AUX MOULINS DE JOSEPH’, the last word ‘JOSEPH’ being a common French name. Therefore, the contested sign will be understood as “To the Mills of Joseph” by the French-speaking part of the relevant public. However, for the other part of the public where French is not understood the first three words have no meaning. As for the name ‘JOSEPH’, since it is a well-known name, it is likely to be understood by the relevant territory as referring to a person with that name. In any case, the sign or any part of its elements is not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

Visually, the signs coincide in 6 letters ‘MO’ ‘LIN’ ‘S’ which are part of the second verbal elements, namely ‘MOLINOS’ in the earlier right and ‘MOULINS’ in the contested sign, and as stated above they are distinctive. However, they differ in the beginning of both signs, ‘LOS’ in the earlier right and ‘AUX’ in the contested sign, as well as in the last two words of the contested sign ‘DE JOSEPH’ which have no counterparts in the earlier right, and as stated above are also distinctive. The structure of the signs also differs knowing that the earlier mark is made up of two words and the contested of four.

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

Aurally, the pronunciation of the signs in some parts of the relevant territory, for example in the Spanish-speaking part, coincide in the sound of the syllables ‘MO’ ‘LIN’ and the sound of the letter ‘S’, present identically in the second word of both signs. However, they differ in the sound of the vowels of such word in other parts of the relevant territory, for example the French-speaking part, specifically in the syllables ‘MO’ in the earlier right and ‘MOU’ in the contested sign as well as ‘LIN’ in both words; also in the ‘S’ in the end of both words, since in the contested sign it would not be pronounced.

Additionally, they differ in their syllabic structure and in the beginning of the signs ‘LOS’ in the earlier right and ‘AUX’ in the contested sign, as well as in the last two words in the contested sign ‘DE JOSEPH’, which have no counterpart in the earlier right.  

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘MOLINOS’ in the earlier right, and ‘MOULINS’ in the contested sign will be associated with the meaning explained above in some parts of the relevant territory that understand ‘MOLINOS’ or ‘MOULINS’.

For the Spanish-speaking part of the relevant territory that will understand the earlier mark and only ‘DE JOSEPH’ in the contested sign, both marks convey very different concepts. The earlier right refers to the general term of mills and the contested sign to something belonging to a person.

For the French-speaking part of the general public that do not understand the earlier mark but only understands the contested sign, the additional ‘DE JOSEPH’ is an added specifying concept that provides a sense of belonging for the general term of ‘MOULINS’. Consequently, the contested mark will be perceived as designating a specific mill belonging to a person named ‘JOSEPH’. Therefore, a conceptual comparison cannot be made in this case.

Also, for the reasons explained above, there are parts of the relevant territory that will only understand the name ‘JOSEPH’ in the contested mark, but will not understand the beginning of it and neither the earlier mark. Other parts of the relevant territory will not understand both marks as a whole. Therefore, in both cases, a conceptual comparison is not possible either.

 

Consequently, the signs are conceptually dissimilar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness by stating that is generally known by the consumers, but did not file any evidence in order to prove such a claim.

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

In the present case, the goods and services where deemed to be identical. The degree of attention of the relevant public is of an average degree. The signs were found visually and aurally similar to a low degree and conceptually dissimilar. Also, it has been established that both signs have a normal degree of distinctiveness.

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).

Consequently, even assuming that the goods are identical, the signs lowly coincide visually and aurally as explained above, only because of their second word, ‘MOLINOS’ in the earlier right and ‘MOULINS’ in the contested sign, and this is not enough to establish a likelihood of confusion. This is also because, the conceptual comparison was possible only for the part of the public for which the whole earlier mark and the name ‘JOSEPH’ in the contested sign would be understood, that is Spanish-speaking public. This comparison resulted in dissimilarity between the signs.

Furthermore, it is important to note that in the comparison of signs, the example of the labels of an undefined product provided by the opponent cannot be taken into account. This is because the signs in conflict are word marks without any specific graphical element, and as such protection offered by registration applies to the words in the application. Consequently, as it is not actual confusion or infringement that is been analysed, this speculation of a possible or actual use in the market of the conflicting signs, as a matter of principle, does not have an impact on the assessment of the likelihood of confusion.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on within the meaning of Article 8(1)(b). Therefore, the opposition must be rejected.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. This is because the outcome will depend on specific criteria applicable to the facts of that particular case, including, for example, the goods and services and in this specific case, the signs in question.

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

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

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.