OPPOSITION No B 2 757 196

Nutralab Europe LLC., 10917th St. Suite 80, Cheyenne Wyoming 82001, United States of America (opponent), represented by Hortis Legal, Veraartlaan 8, 2288 GM Rijswijk ZH, The Netherlands (professional representative)

a g a i n s t

Jesús Puente Rubio, Bendición de Campos 8 bis, 2º 28036 Madrid, Spain (applicant).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 757 196 is upheld for all the contested goods.

2.        European Union trade mark application No 15 485 774 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 15 485 774. The opposition is based on European Union trade mark registration No 12 509 006. 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

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 preparations made from cereals; bread, pastry; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice, ice creams, frozen yogurts and sorbets; Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Ready to eat savory snack foods made from maize meal formed by extrusion; Canned pasta foods; Extruded wheat snacks; Prepared foodstuffs in the form of sauces; Prepared savory foodstuffs made from potato flour; Snack foods made from corn; Snack foods made from wheat; Sesame snacks; Snack foods consisting principally of extruded cereals; Crisps made of cereals; Cereal snack foods flavoured with cheese; Puffed corn snacks; Cheese flavored puffed corn snacks; Tortilla snacks; Snack foods made from corn and in the form of puffs; Snack foods made from corn and in the form of rings; Snack foods made of whole wheat; Snack foods prepared from maize; Snack foods consisting principally of bread; Sweet rice with nuts and jujubes (yaksik); Rice mixed with vegetables and beef [bibimbap]; Stir-fried rice; Filled baguettes; Baozi [stuffed buns]; Chocolate-based ready-to-eat food bars; Shrimp dumplings; Pineapple fritters; Banana fritters; Calzones; Canapes; Chalupas; Chimichanga; Wonton chips; Rice dumplings dressed with sweet bean jam (ankoro); Burritos; Brioches; Bean jam buns; Steamed buns stuffed with minced meat (niku-manjuh); Puffed cheese balls [corn snacks]; Rice dumplings; Chinese steamed dumplings (shumai, cooked); Sandwiches; Filled bread rolls; Sandwiches containing fish fillet; Sandwiches containing salad; Sandwiches containing fish; Sandwiches containing meat; Pizza crust; Pizza bases; Sandwiches containing minced beef; Vegetable pies; Egg pies; Frozen pastry stuffed with vegetables; Frozen pastry stuffed with meat and vegetables; Frozen pastry stuffed with meat; Pork pies; Poultry and game meat pies; Meat pies [prepared]; Pies [sweet or savoury]; Crumble; Crepes; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Tortilla chips; Chow mein [noodle-based dishes]; Chow mein; Prepared pizza meals; Boxed lunches consisting of rice, with added meat, fish or vegetables; Rice-based prepared meals; Noodle-based prepared meals; Pasta-based prepared meals; Prepared meals in the form of pizzas; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Prepared meals containing [principally] pasta; Meals consisting primarily of pasta; Meals consisting primarily of rice; Onion biscuits; Stir fried rice cake [topokki]; Pellet-shaped rice crackers (arare); Rice biscuits; Pumpkin porridge (Hobak-juk); Fajitas; Spaghetti and meatballs; Corn chips; Pasta salad; Canned spaghetti in tomato sauce; Rice salad; Macaroni salad; enchiladas; pastries consisting of vegetables and fish; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and meat; Chinese stuffed dumplings (gyoza, cooked); Pot pies; Pies containing vegetables; Pies containing fish; Pies containing game; Pies containing meat; Pies containing poultry; Fresh pies; Pies; Corn, roasted; Processed unpopped popcorn; Fried corn; Empanadas; Flaky pastry containing ham; Macaroni with cheese; Lasagne; Jiaozi [stuffed dumplings]; Buckwheat jelly (Memilmuk); Chips [cereal products]; Hamburgers contained in bread rolls; Cheeseburgers [sandwiches]; Corn kernels being toasted; Hamburgers being cooked and contained in a bread roll; Crackers filled with cheese; Gimbap [Korean rice dish]; Crackers made of prepared cereals; Rice crackers [senbei]; Rice crackers; Crackers flavoured with vegetables; Crackers flavoured with cheese; Crackers flavoured with herbs; Crackers flavoured with spices; Crackers flavoured with meat; Soft pretzels; Vegetable flavoured corn chips; Rice crisps; Seaweed flavoured corn chips; Rice cakes; Flapjacks; Savory pastries; Mincemeat pies; Millet cakes; Meat pies; Sticky rice cakes (Chapsalttock); Korean traditional rice cake [injeolmi]; Glutinous pounded rice cake coated with bean powder (injeolmi); Pasta containing stuffings; Mung bean pancakes (bindaetteok); Kimchi pancakes (kimchijeon); Pancakes; Prawn crackers; Caramel coated popcorn with candied nuts; Microwave popcorn; Caramel coated popcorn; Candy coated popcorn; Flavoured popcorn; Okonomiyaki [Japanese savory pancakes]; Nachos; Pre-baked pizzas crusts; Snack food products consisting of cereal products; Snack food products made from potato flour; Snack food products made from maize flour; Snack food products made from rusk flour; Snack food products made from cereal starch; Snack food products made from soya flour; Snack food products made from rice flour; Snack food products made from cereal flour; Pretzels; Prepared meals containing [principally] rice; Dry and liquid ready-to-serve meals, mainly consisting of rice; Ready-made dishes containing pasta; Pasta dishes; Prepared rice dishes; Rice based dishes; Chilled pizzas; Preserved pizzas; Uncooked pizzas; Pizzas [prepared]; Pizzas; Frozen pizzas; Hot dogs (prepared); Fresh pizza; Wholewheat crisps; Grain-based chips; Tabbouleh; Toasted sandwiches; Frankfurter sandwiches; Sandwiches containing chicken; Hot dog sandwiches; Toasted cheese sandwich; Toasted cheese sandwich with ham; Sushi; Korean-style pasta soup [sujebi]; Samosas; Hot sausage and ketchup in cut open bread rolls; Popcorn; Sausage rolls; Fresh sausage rolls; Spring rolls; Egg rolls; Cheese curls [snacks]; Risotto; Cereal-based snack food; Rice-based snack food; Ravioli [prepared]; Ravioli; Ramen [Japanese noodle-based dish]; Quiches; Quesadillas; Wrap [sandwich]; Wontons; French toast; Green onion pancake [pajeon]; Tortillas; Salted tarts; Snacks manufactured from muesli; Tamales; Stir-fried noodles with vegetables (Japchae); Tacos; taco chips.

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 sugars; coffee, teas and cocoa; yeasts; ice; ice creams, salts; seasonings, condiments are identically contained in both lists of goods (including synonyms).

The contested stir-fried rice; stir fried rice cake [topokk]; rice cakes; flapjacks; sticky rice cakes (Chapsalttock); Korean traditional rice cake [injeolmi]; glutinous pounded rice cake coated with bean powder (injeolmi); rice biscuits  is included in the broad category of the opponent’s rice. Therefore, they are identical.

The contested bee products form a broad category that includes the opponent’s honey. The Office cannot dissect ex-officio the broad category of the applicant’s goods. Therefore, they are considered identical.

The contested pineapple fritters; banana fritters;frozen pastry stuffed with vegetables; frozen pastry stuffed with meat and vegetables; frozen pastry stuffed with meat; pork pies; poultry and game meat pies; meat pies [prepared]; pies [sweet or savoury]; crumble; crepes; pastries consisting of vegetables and fish; pastries consisting of vegetables and poultry; pastries consisting of vegetables and meat; Chinese stuffed dumplings (gyoza, cooked); pot pies; pies containing vegetables; pies containing fish; pies containing game; pies containing meat; pies containing poultry; fresh pies; pies; flaky pastry containing ham; savory pastries; mincemeat pies;meat pies vegetable pies; egg pies; quiches; wontons; green onion pancake [pajeon]; mung bean pancakes (bindaetteok); kimchi pancakes (kimchijeon); pancakes; okonomiyaki [Japanese savory pancakes];salted tarts; tamales; onion biscuits; brioches are included in the broad category of the opponent’s pastry in Class 30. Therefore, they are identical.

The contested prepared foodstuffs in the form of sauces overlap with the opponent’s sauces. Therefore, they are identical.

The contested processed grains, starches, and goods made thereof; baking preparations; baked goods; ready to eat savory snack foods made from maize meal formed by extrusion; extruded wheat snacks; prepared savory foodstuffs made from potato flour; snack foods made from corn; snack foods made from wheat; sesame snacks; snack foods consisting principally of extruded cereals; crisps made of cereals; cereal snack foods flavoured with cheese; puffed corn snacks; cheese flavored puffed corn snacks; tortilla snacks; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; snack foods made of whole wheat; snack foods prepared from maize; snack food products consisting of cereal products; snack food products made from potato flour; snack food products made from maize flour; snack food products made from rusk flour; snack food products made from cereal starch; snack food products made from soya flour; snack food products made from rice flour; snack food products made from cereal flour; processed unpopped popcorn; caramel coated popcorn with candied nuts; microwave popcorn; caramel coated popcorn; candy coated popcorn; flavoured popcorn; popcorn; snacks manufactured from muesli; puffed cheese balls [corn snacks]; cheese curls [snacks]; pellet-shaped rice crackers (arare); pumpkin porridge (Hobak-juk); fajitas; corn chips; rice salad; enchiladas; corn, roasted;  fried corn; empanadas; jiaozi [stuffed dumplings]; buckwheat jelly (Memilmuk); chips [cereal products];  corn kernels being toasted; crackers filled with cheese; crackers made of prepared cereals; rice crackers [senbei]; rice crackers; crackers flavoured with vegetables; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with spices; crackers flavoured with meat; soft pretzels; vegetable flavoured corn chips; rice crisps; seaweed flavoured corn chips; prawn crackers; nachos; pretzels; wholewheat crisps; grain-based chips; cereal-based snack food; rice-based snack food; ravioli; chalupas; chimichanga; quesadillas; milled cakes; wonton chips; tortillas; burritos; tacos; bean jam buns; Tortilla chips; taco chips are included in the broad category of the opponent’s preparations made from cereals in Class 30. Therefore, they are identical.

The contested substitutes therefor [Coffee, teas and cocoa] are similar to a high degree to, respectively, coffee and artificial coffee, tea, cocoa and in Class 30, as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

The contested chocolate is similar to cocoa as they have the same nature. They can coincide in producer, end user and distribution channels.

When an ingredient can be considered as being the main ingredient of the prepared dish, a similarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use. There is a similarity between a particular foodstuff and ‘prepared meals’ consisting of the same particular foodstuff (see 04/05/2011, T-129/09, Apetito, EU:T:2011:193).

Consequently, the contested snack foods consisting principally of bread; filled baguettes; baozi [stuffed buns]; sandwiches; sandwiches containing fish fillet; sandwiches containing salad; sandwiches containing fish; sandwiches containing meat; sandwiches containing minced beef; cheeseburgers [sandwiches];  toasted sandwiches; frankfurter sandwiches; sandwiches containing chicken; hot dog sandwiches; toasted cheese sandwich; toasted cheese sandwich with ham; hot sausage and ketchup in cut open bread rolls; wrap [sandwich]; French toast; filled bread rolls; hamburgers contained in bread rolls; hamburgers being cooked and contained in a bread roll; hot dogs (prepared) are similar to the opponent’s bread in Class 30. All these goods have the same nature, can coincide in end user and distribution channels and can be produced by the same kind of undertakings.

In the same manner, the contested sushi (which refers to a Japanese dish consisting of small balls or rolls of vinegar-flavoured cold rice served with a garnish of vegetables, egg, or raw seafood); sweet rice with nuts and jujubes (yaksik); rice mixed with vegetables and beef [bibimbap]; risotto; prepared meals containing [principally] rice; dry and liquid ready-to-serve meals, mainly consisting of rice; prepared rice dishes; rice based dishes; rice dumplings dressed with sweet bean jam (ankoro); rice-based prepared meals; meals consisting primarily of rice; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; rice dumplings; gimbap [Korean rice dish; boxed lunches consisting of rice, with added meat, fish or vegetables are rice-based prepared meals. As such, their main component is rice. They are similar to the opponent’s rice as they can coincide in end user and distribution channels. Furthermore they are in competition.

Again, following the above reasoning of “main ingredient”, the contested sausage rolls; fresh sausage rolls; are similar to pastry. They can coincide in end user and distribution channels. Furthermore they are in competition.

The contested chocolate-based ready-to-eat food bars have chocolate as their main ingredient. They are similar to the opponent’s cocoa as they can coincide in end user and distribution channels. Furthermore they are in competition.

The contested natural sweeteners, sweet coatings and fillings are similar to sugar as they can coincide in end user and distribution channels. Furthermore they are in competition.

The contested confectionery is similar to the opponent’s preparations made from cereals as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested desserts; frozen yogurts and sorbets are similar to a low degree to the opponent’s edible ices as they can coincide in end user and distribution channels. Furthermore they are in competition.

The contested dry and liquid ready-to-serve meals, mainly consisting of pasta; ready-made dishes containing pasta; pasta dishes; tabbouleh; korean-style pasta soup [sujebi]; samosas; spring rolls; egg rolls; chow mein [noodle-based dishes]; chow mein; noodle-based prepared meals; pasta-based prepared meals; prepared meals in the form of pizzas; pasta salad; macaroni salad; prepared meals containing [principally] pasta; meals consisting primarily of pasta; Shrimp dumplings; stir-fried noodles with vegetables (Japchae); ramen [Japanese noodle-based dish]; spaghetti and meatballs; ravioli [prepared]; canapes; canned pasta foods; canned spaghetti in tomato sauce; lasagne; pasta containing stuffings; macaroni with cheese; steamed buns stuffed with minced meat (niku-manjuh); chinese steamed dumplings (shumai, cooked); calzones; pizza crust; pizza bases; pre-baked pizzas crusts; chilled pizzas; preserved pizzas; uncooked pizzas; pizzas [prepared]; pizzas; frozen pizzas; fresh pizza; prepared pizza meals are noodle/pasta/pizza-based prepared meals. They are similar to a low degree to the opponent’s preparations made from cereals as they can coincide in end user and distribution channels. Furthermore they are in competition.

The contested flavourings are similar to a low degree to coffee in as much as they can include coffee flavourings, for instance. They have the same purpose. They can coincide in method of use.

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 various degrees) are directed at the public at large. The degree of attention is average.

3. The signs

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is figurative and composed of a picture of a sunrise over meadows and the words ‘BIO LIFE’. The contested sign is also figurative and composed of the same words ‘BIO LIFE’ displayed one under the other in a black background as shown above.

The element ‘BIO’, present in the first place in both signs, will be associated with ‘biological, biology’. Bearing in mind that the relevant goods are foodstuffs, it is considered that this element is non-distinctive for all these goods. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘LIFE’, also shared and placed in second position in both cases, will be associated with ‘the existence of an individual human being or animal’ for part of the public, i.e. those with sufficient knowledge of English. Bearing in mind that the relevant goods are foodstuffs, it is considered that this element is non-distinctive for all these goods for the English speaking part of the territory that will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. For the rest of the relevant public, the element ‘LIFE’ has no meaning and is distinctive for the relevant goods.

The figurative element in the form of a landscape of the earlier mark, together with some main features, such as the sun and green meadows, in the middle of the verbal elements, will be associated with the relevant goods, such as the place where the products are produced. This figurative element could reinforce the term ‘BIO’ in the way that the products are not manufactured in factories, but that they rather come from biologically friendly companies. In this sense, these elements are weak.

For the sake of completeness, the present comparison will focus on the part of the relevant public for which the element ‘LIFE’ has no meaning and is distinctive for the relevant goods.

Visually, the signs coincide in the words ‘BIO LIFE’ with the only difference the slightly fancy typefaces in which these words are written.They differ in their respective figurative elements.

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). This is even more applicable in the case at hand with respect to the landscape of the earlier mark, which is weak, regarding the relevant goods, as pointed out above.

Regarding the slightly fancy typefaces in which the verbal elements of the marks are written, this stylisation must be considered not that elaborate or sophisticated and they will not lead the consumer’s attention away from the elements they seem to embellish.

Therefore, considering all the circumstances described above, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the words ‘BIO LIFE’. Therefore, the signs are phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The elements ‘BIO’ are understood, as seen above. The figurative element of the earlier mark is perceived as referring to a landscape where biologically friendly products come from and it could reinforce the element ‘BIO’. Although the coinciding word ‘BIO’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks.

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.

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, at least for part of the relevant public, in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute in Class 30 have been found partly identical and partly similar to various degrees. They are directed at the public at large, whose degree of attention in this case is expected to be average.

The signs are similar to an average degree from a visual perspective. Aurally identical and the marks are, from a conceptual point of view, similar. Nevertheless, this conceptual similarity is rather limited, as the elements creating the similarity are weak or non-distinctive.

Account is 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, § 26).

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.Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark ‘BIO LIFE’, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. In particular the aural identity of the signs outweighs the low similarity of these goods.

Considering all the above, there is a likelihood of confusion on the part of the non- English-speaking part of the public.

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 509 006. It follows that the contested trade mark must be rejected for all the contested goods.

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

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Vanessa PAGE

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.