OPPOSITION No B 2 701 715

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Nordic Fortuna, Auster Salonger, Karl Johans gate 20, 0159 Oslo, Norway (applicant), represented by Bull & Co. Advokatfirma AS, Observatoriegaten 1B, 0203 Oslo, Norway (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 715 is upheld for all the contested goods, namely:

Class 29:        Dairy products and dairy substitutes; artificial milk based desserts; desserts made from milk products; yoghurt desserts.

2.        European Union trade mark application No 15 141 609 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 15 141 609, namely against some of the goods in Class 29. The opposition is based on, inter alia, international trade mark registration No 1 211 554 designating Ireland. 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 international trade mark registration No 1 211 554 designating Ireland.

1. The goods

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

Class 29:        Coffee creamers.

The contested goods are the following:

Class 29:        Dairy products and dairy substitutes; artificial milk based desserts; desserts made from milk products; yoghurt 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.

The contested dairy products and dairy substitutes include, as a broader category, the opponent’s coffee creamers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested artificial milk based desserts; desserts made from milk products; yoghurt desserts are similar to a low degree to the opponent’s coffee creamers, as they have the same nature, target the same public and may be produced by the same companies.

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 to a low degree are directed at the public at large, whose degree of attention is average.

3. The signs

NATURAL BLISS	BELLYBLISS
Earlier trade mark	Contested sign

The relevant territory is Ireland.

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).

In the present case, the marks have no elements that are more distinctive or dominant than others, since both are word marks that will be perceived as fanciful expressions. The earlier mark is a word mark consisting of the verbal elements ‘NATURAL’ and ‘BLISS’. The mark, as a whole, conveys the meaning that the product gives happiness coming from a natural source. The contested sign is a word mark that consists of the conjoined words ‘BELLY’ and ‘BLISS’. The mark, as a whole, conveys the message that the relevant goods make one’s belly very happy.

Although these messages may be somewhat laudatory in the sense that they allude to the positive effect of the goods on one’s body, the combination of their constituent elements is rather unusual, since bliss cannot be natural and bellies cannot be blissful. Therefore, the distinctiveness of both signs is normal.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, namely relating to happiness, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the sequence of letters ‘BLISS’, which constitute an element of the earlier mark and a component of the contested sign. However, they differ in the element ‘NATURAL’ of the earlier mark and in the sequence of letters ‘BELLY’, which forms the first component of the contested sign. Therefore, the signs are visually and aurally similar to an average degree.

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.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘BLISS’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘BLISS’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to a previous national decision to support its arguments about the low degree of distinctiveness of the earlier mark. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when a decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings because the extract submitted by the applicant does not mention anything about the low degree of distinctive character of international trade mark registration No 1 211 554 designating Ireland. Therefore, the applicant’s argument about the low degree of distinctive character of the earlier mark must be set aside.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the distinctiveness of the earlier mark is normal, since bliss cannot be natural and therefore the mark ‘NATURAL BLISS’ will be perceived by the relevant Irish public as a fanciful term. 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 (recital 8 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).

As concluded above, the relevant goods are partly identical and partly similar to a low degree. They target the public at large, whose degree of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. The signs are visually, aurally and conceptually similar to an average degree, since they have the word ‘BLISS’ in common and have the same structure, in that each starts with a meaningful adjective and ends with the word ‘BLISS’. Although some of the goods have only a low degree of similarity, both sets are foodstuffs. Consequently, consumers may legitimately believe that the contested sign is a new version or a brand variation of the earlier mark originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting goods.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 211 554 designating Ireland. It follows that the contested trade mark must be rejected for all the contested goods (including the contested goods found to be similar to a low degree).

As the earlier right international trade mark registration No 1 211 554 designating Ireland 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).

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

Anna BAKALARZ

Alexandra APOSTOLAKIS

Adriana VAN ROODEN

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.