OPPOSITION DIVISION
OPPOSITION No B 2 751 421
Hunajainen SAM Oy – Finnish Honey Company Ltd, Viikinkaari 6, 00790 Helsinki,
Finland (opponent), represented by Boco IP Oy AB, Itämerenkatu 5, 00180 Helsinki,
Finland (professional representative)
a g a i n s t
De Wijndragers BV, Paxtonstraat 5 A, 8013 RP Zwolle, Netherlands (applicant),
represented by Antonius den Herder, Vierhuysen 30, 1111 SC Diemen, Netherlands
(professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 751 421 is partially upheld, namely for the following
contested goods and services:
Class 30: Mustard; salt, spices; Vinegar; Sauces (including salad
dressings and barbecue sauces); Compotes, sauces
(condiments); Seasoning mixes, including for sauces, salad
dressings, barbecue sauces and dressings.
Class 35: Retailing and wholesaling in relation to mustard, salt, spices,
vinegar, sauces (including salad dressings and barbecue
sauces), fruit coulis (sauces), sauces (condiments).
2. European Union trade mark application No 14 786 371 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 786 371, , namely
against all the goods and services in Classes 30 and 35. The opposition is based on
Finnish trade mark registration No 262 741, . The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 751 421 page: 2 of 7
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour
and flour preparations made from cereals; Ices; Sugar, honey, treacle;
Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments);
Spices; Ice; Honey; Sorbets; Tea-based beverages; Coffee-based
beverages; Cocoa-based beverages; Chocolate-based beverages;
Sweeteners (Natural -); Flavoured honey products.
The contested goods and services are the following:
Class 30: Mustard; salt, spices; Vinegar; Sauces (including salad dressings and
barbecue sauces); Compotes, sauces (condiments); Seasoning
mixes, including for sauces, salad dressings, barbecue sauces and
dressings.
Class 35: Advertising; Business management; Retailing and wholesaling in
relation to mustard, salt, spices, vinegar, sauces (including salad
dressings and barbecue sauces), fruit coulis (sauces), sauces
(condiments), seasoning mixes, including for sauces, salad dressings,
barbecue sauces and dressings.
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 30
As a preliminary remark, the translated list of the contested goods in Class 30 does
not reflect the original list in Dutch (Dutch being the first language of the contested
mark). In particular, as regards the English term compotes of the contested goods in
Class 30, the Opposition Division notes that the original term refers to
Decision on Opposition No B 2 751 421 page: 3 of 7
vruchtensausen, which should be understood as fruits sauces. Consequently,
considering that fruits sauces should be the equivalent of the original Dutch term, the
Opposition Division will interpret the English term ‘compotes’ with this meaning.
Mustard; salt, spices; vinegar; sauces (condiments) are identically contained in both
lists of goods.
The contested sauces (including salad dressings and barbecue sauces); compotes
are included in the broad category of, or overlap with, the opponent’s vinegar, sauces
(condiments). Therefore, they are identical.
The contested seasoning mixes, including for sauces, salad dressings, barbecue
sauces and dressings are similar to the opponent’s sauces (condiments). These
goods have the same distribution channels, target the same public and can be
manufactured by the same type of undertakings.
Contested services in Class 35
Retail and/or wholesale services concerning the sale of particular goods are similar
to a low degree to those particular goods. Although the nature, purpose and method
of use of these goods and services are not the same, they have some similarities, as
they are complementary and the services are generally offered in the same places
where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retailing and wholesaling in relation to mustard, salt, spices,
vinegar, sauces (including salad dressings and barbecue sauces), fruit coulis
(sauces), sauces (condiments) are similar to a low degree to the opponent’s
mustard; salt, spices; vinegar, sauces (condiments).
As regards the contested retailing and wholesaling in relation to seasoning mixes,
including for sauces, salad dressings, barbecue sauces and dressings, they are
dissimilar to the opponent’s goods. Similarity between retail/wholesale services of
specific goods covered by one mark and specific goods covered by another mark can
only be found where the goods involved in the retail/wholesale services and the
specific goods covered by the other mark are identical. This condition is not fulfilled in
the present case since the goods at issue are only similar.
Advertising services consist of providing others with assistance in the sale of their
goods and services by promoting their launch and/or sale, or of reinforcing the
client’s position in the market and acquiring competitive advantage through publicity.
In order to achieve this aim, many different means and products might be used.
These services are provided by specialised companies which study their client’s
needs and provide all the necessary information and advice for the marketing of their
products and services, and create a personalised strategy regarding the advertising
of their goods and services through newspapers, web sites, videos, the internet, etc.
The nature and purpose of advertising services are fundamentally different from the
manufacture of goods or from the provision of many other services. The mere fact
that some goods or services may appear in advertisements is insufficient for finding a
similarity. Therefore, advertising is dissimilar to the goods being advertised.
For the above reasons, the contested advertising is not similar to the opponent’s
goods in Class 30. They have different natures and purposes, are not usually
expected to be manufactured/provided by the same undertaking or related
undertakings, have different distribution channels and are not complementary to or in
competition with each other.
Decision on Opposition No B 2 751 421 page: 4 of 7
Business management refers to activities associated with running a company, such
as controlling, leading, monitoring, organising and planning. These services are
usually rendered by specialised companies such as business consultants. These
companies gather information and provide tools and expertise to enable their
customers to carry out their business or provide businesses with the necessary
support to acquire develop and expand market share. The services involve activities
such as business research and appraisals, cost price analysis and organisation
consultancy. These services also include any ‘consultancy’, ‘advisory’ and
‘assistance’ activity that may be useful in the ‘management of a business’, such as
how to efficiently allocate financial and human resources, how to improve
productivity, how to increase market share, how to deal with competitors, how to
reduce tax bills, how to develop new products, how to communicate with the public,
how to do marketing, how to research consumer trends, how to launch new products,
how to create a corporate identity or offer database compilation services, etc. This is
not the purpose of the opponent’s goods in Class 30. Apart from being different in
nature, given that services are intangible whereas goods are tangible, the goods and
services in question serve different needs. Furthermore, the origins and methods of
use of those goods and services are different. They are neither in competition nor
complementary. Therefore, the contested business management is dissimilar to all
the opponent’s goods.
b) 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 in question are directed at the public at
large. The degree of attention is considered average.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Finland.
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
Decision on Opposition No B 2 751 421 page: 5 of 7
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 that consists of the word element ‘SAM’ in white,
fairly standard, lower case letters on a figurative element in form of a black shape,
which could be perceived as a stylised inkblot. The word element could be
understood by the relevant public as a fanciful term with no particular meaning.
Alternatively, it could be associated with the given name ‘Sam’. In any case, as it is
not descriptive, allusive or otherwise weak for the relevant goods and services, it is
distinctive. On the other hand, the figurative element has a rather decorative nature.
As regards the contested sign, it is composed of the distinctive verbal element ‘BIG
SAM’S’ and some less distinctive figurative elements (some wavy lines and a small
black star), which have a purely decorative nature. Since the general public in
northern European countries, such as Finland, is familiar with English, it will
understand the word element ‘BIG’ as an adjective referring to size or extent. The
word element ‘SAM’S’ represents the genitive form in English and it therefore evokes
the concept of a given name even more, as explained above. Overall, the verbal
elements are more distinctive than the figurative elements.
The marks have no elements that could be considered clearly more dominant (eye-
catching) than other elements.
Visually, the signs coincide in the word element ‘SAM’. They differ in the word
element ‘BIG’ and the final letter ‘S’ with the apostrophe of the contested sign, which
have no counterparts in the earlier mark. Visual differences also result from the less
distinctive figurative elements in both marks. When signs consist of both verbal and
figurative components, in principle, the verbal component of the sign usually has a
stronger impact on the consumer than the figurative component. This is because the
public does not tend to analyse signs and will more easily refer to the signs in
question by their verbal element than by describing their figurative elements
(14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011,
R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5,
Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, considering that the
signs have the distinctive word element ‘SAM’ in common, they are visually similar, at
least to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SAM’,
present identically in both signs. The pronunciation differs in the sound of the letters
‛BIG’ and ‘S’ of the contested mark. Considering too that the figurative elements will
not be pronounced, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the word element ‘SAM’, included identically in both signs, will
be associated with the meaning explained above. To that extent, the signs are
conceptually highly similar. The word element ‘BIG’, present in the contested sign, is
an adjective and as such will describe or intensify the meaning of the word element
‘SAM’. The figurative elements do not convey any concept.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 751 421 page: 6 of 7
d) 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 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.
e) 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.
The contested goods and services are partially identical, partially similar to varying
degrees and partially dissimilar to the opponent’s goods. The visual, aural and
conceptual aspects have been examined.
The earlier sign and the contested sign are similar to the extent that they have the
word element ‘SAM’ in common. The additional word element, ‘BIG’, of the contested
sign will be seen as an intensifier and the additional letter ‘S’ at the end of the
contested sign will be somewhat overlooked due to its placement and the fact that
the more distinctive part of the marks, ‘SAM’, is identical. The remaining figurative
elements in both marks are considered of less distinctive value and therefore will not
play an important role for the consumer.
In addition, account should also be 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).
Considering the relevant public, the dissimilarities will go unnoticed. The relevant
public could therefore believe that the contested sign is a modification of the earlier
mark based on the core element ‘SAM’. Based on the principle of imperfect
recollection, the established similarities between the signs are sufficient to cause the
public in the relevant territory to believe that the conflicting goods come from the
same undertaking or from economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Finnish public and therefore the opposition is partly well
founded on the basis of the opponent’s Finnish trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar to varying degrees to those of the
earlier trade mark.
Decision on Opposition No B 2 751 421 page: 7 of 7
Some of the contested services in Class 35 are dissimilar. As similarity of goods and
services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this Article and directed at these services cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) EUTMR, where each party succeeds on some heads and fails on
others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Loreto URRACA LUQUE Arkadiusz GORNY Judit NÉMETH
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.