OPPOSITION No B 2 712 019

Future Worxx Verwaltungs GmbH & Co KG, Gutenbergring 60, 22848 Norderstedt, Germany (opponent), represented by Claudia Böckmann, Stadthausbrücke 1-3, 20355 Hamburg, Germany (professional representative)

a g a i n s t

SC Activ Vab SRL, 1, Baia de Arama street, 30th flat, 5th floor, 2nd district, Bucharest

Romania (applicant), represented by Haagsch Octrooibureau B.V., Breitnerlaan 146,

2596 HG The Hague, the Netherlands (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 019 is partially upheld, namely for the following contested goods:

Class 29:         Processed fruits, (including nuts and pulses).

Class 30:         Crackers; pies and tarts; baked goods, confectionery, chocolate and desserts; ice creams, frozen yogurts and sorbets; processed cereals.

2.        European Union trade mark application No 15 166 762 is rejected for all the above goods. 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 15 166 762, namely against some of the goods in Classes 29, 30 and 32. The opposition is based on German trade mark registration No 30 661 494. 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:        Sweets.

The contested goods, following a limitation on 27/07/2016, are the following:

Class 29:         Dairy products and dairy substitutes; processed fruits, (including nuts and pulses).

Class 30:         Crackers; pies and tarts; baked goods, confectionery, chocolate and desserts; sugars, natural sweeteners, sweet coatings and fillings; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed cereals.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 29

The contested processed fruits (including nuts and pulses) include, inter alia, candied nuts and these goods and the opponent’s sweets coincide in producer, relevant public and distribution channels. Furthermore they are in competition. Therefore, they are similar

The contested dairy products and dairy substitutes and the opponent’s sweets in Class 30 do not coincide in nature, in producer or in relevant public. Furthermore, the goods will be sold from completely different sections in supermarkets, as the contested goods usually will be sold from refrigerated counters or sections very close to these, whereas the opponent’s goods normally has a section dedicated to sweets. The goods are not in competition nor are they complementary. Therefore, they are considered dissimilar.

Contrary to the opponent’s argument, sweets are small shaped pieces of confectionery made with sugar (Oxford Dictionary), and therefore do not include food like ‘kinder Milchsnitte’ as referred to by the opponent. The Opposition Division does not agree that sweets are usually found in the refrigerated counters next to dairy products and even if milk can be used in the production of sweets, this is not sufficient to find similarity between the goods. 

Contested goods in Class 30

The contested confectionery includes as a broader category the opponent’s sweets. Therefore, they are identical.

The contested chocolate is included in, or overlaps with, the opponent’s sweets. Therefore, they are identical.

The contested crackers and the opponent’s sweets coincide in producer, relevant public and distribution channels. Furthermore they are in competition. Therefore, they are similar.

The contested pies and tarts, baked goods and desserts, processed cereals have the same purpose as the opponent’s sweets. Furthermore, coincide in producer, relevant public and distribution channels. They are also in competition. Therefore, they are similar.

The contested ice creams, frozen yogurts and sorbets and the opponent’s sweets coincide in relevant public and in purpose. Furthermore, they can be in competition. Therefore, they are similar to a low degree.

The contested sugars, natural sweeteners, sweet coatings and fillings; ice; coffee, teas and cocoa and substitutes therefor are dissimilar to the opponent’s sweets for the following reasons:

The contested sugars and natural sweeteners are products that might be used in the production of sweets, however, these goods are not in competition or complementary with sweets, neither do they share manufactures. Their purpose and nature is different and so is the relevant public. The fact that they might have the same distribution channels is not enough to find similarity between these goods.

The purpose of the contested sweet coating and fillings is to be used in combination with other foodstuff, e.g. to coat or fill cakes, and the purpose is therefore very different from the purpose of sweets, which usually is to be consumed without any further preparations. These goods do not coincide in relevant public or manufacturer. Their nature differs and they are not in competition nor are they complementary. As stated above, the fact that they might have the same distribution channels is not enough to find similarity between these goods.

It can be mentioned that the Opposition Division disagrees with the opponent and finds that the main purpose of sugars, natural sweeteners, sweet coatings and fillings are to be used in combination with other foodstuff and not to be consumed on their own.

The contested ice is to be understood as ‘cooling ice’ and therefore, the purpose, the relevant public, the manufacture and the distribution channels are different from the opponent’s sweets as is their nature. Furthermore, they are neither in competition nor complementary.

Finally, the contested coffee, teas and cocoa and substitutes therefor and the opponent’s sweets differ in nature, purpose, relevant public and manufacture. They are not in competition, nor are they complementary. The fact that they might coincide in distribution channels can, as explained above, not affect the outcome. 

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 considered average.

3. The signs

Bob’s
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a word mark consisting of the verbal element ’Bob’s’ which will be perceived as, inter alia, a male given name in the genitive form; even though the apostrophe is not grammatically correct in German, it must be seen as a common way of indicating the genitive form and it can reasonable be assumed that it will be perceived as such. This element has an average degree of distinctiveness in relation to the goods.

The contested sign is a figurative sign consisting of the verbal elements ‘BOB’ and ‘foods’ written in a green slightly stylised font; ‘BOB’ written in upper case letters and ‘foods’ written in lower case letters. The verbal element ‘BOB’ is placed above the verbal element ‘foods’, and a figurative device depicting a green leaf and what is likely to be perceived as a sun behind the leaf, is placed inside the letter ‘O’ of the verbal element ‘BOB’.

Even though the figurative element is placed inside the letter ‘O’, it can reasonably be assumed that consumers will see the letter ‘O’, and perceive this element as the male given name ‘BOB’. Therefore, in relation to the goods in question this element has an average degree of distinctiveness. The element ‘foods’ is a very basic English word, which will be understood by consumers in Germany as meaning any nutritious substances that people eat or drink in order to maintain life and growth (Oxford Dictionaries). In relation to the relevant goods the element ‘foods’ will therefore be descriptive as it merely indicates the kind of the goods, namely that these are foods. Furthermore, this element is considered less dominant than the element ‘BOB’ and the figurative device, due to its smaller size. The figurative element will be weak in relation to the relevant goods as it will be associated with nature, and therefore merely be perceived as indicating that the foods in question contain naturally ingredients.

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).

Visually, the signs coincide in the element ‘BOB**’ which almost makes up the entire earlier mark and makes up the most distinctive element of the contested sign. The signs differ in the apostrophe and the letter ‘s’ of the earlier mark. The signs also differ in the verbal element ‘foods’ in the contested sign which however is descriptive and non-dominant. Furthermore they differ in the figurative element of the contested sign, which however is weak. Both these differentiating elements in the contested sign therefore have a very limited, if even any, impact on the overall impression produced by the contested sign. The signs also differ in the stylisation of the verbal elements in the contested sign, however the elements can only be seen as slightly stylised.

Therefore, and taking into account the stronger impact of the verbal elements rather than the figurative, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BOB**’, constituting almost the entire earlier mark and the only distinctive verbal element in the contested sign. The signs differ in the apostrophe and the letter ‘s’ of the earlier mark, which however will not have a significant impact on the pronunciation the earlier mark. The signs also differ in the verbal element ‘foods’ in the contested sign which however is descriptive.

Therefore, the signs are aurally highly similar.

Conceptually, the earlier mark and part of the contested sign will be perceived as conveying the concept of the male given name ‘BOB’. The apostrophe and the letter ‘s’ in the earlier mark will not effect this concept, as it will merely be perceived as indicating the genitive form of the name. As the element ‘foods’ in the contested sign is descriptive it will not influence the conceptual comparison in a relevant matter. The figurative element in the contested sign, conveying the meaning explained above, is weak, and therefore only has a limited impact on the conceptual comparison of the signs.

Therefore, the signs are conceptual similar to a high 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.

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 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a 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).

In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark has a normal degree of distinctiveness and the relevant consumers’ degree of attention is average.

As explained above under section c) of this decision, both signs contain the male given name, and they differ only in the genitive form of the earlier mark, a descriptive verbal element and a weak figurative element in the contested sign. The average consumer normally pays less attention to those elements in a trade mark that are non-distinctive and furthermore, the verbal elements have a stronger impact than figurative elements. Consequently, consumers will focus on the coinciding element ‘BOB(‘s)’. The genitive form of the earlier mark will only have a limited impact on the overall impression produced by the earlier mark as it, in relation to the goods, will be perceived merely as indicating that the goods “comes” from ‘BOB’.  Taking into account consumers’ imperfect recollection, the Opposition Division has found that the differences between the signs are clearly not sufficient to outweigh the high degree of aural and conceptual similarity and the average degree of visual similarity between them and to exclude a likelihood of confusion. Taking the interdependence principle into consideration, this also applies to the contested goods found to be similar to a low degree with the opponent’s.

In that regard, it has to be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant public, which rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have ‘BOB’ in common, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are identical or similar to various degrees.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration No 30 661 494.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Cecilie Leth BOCKHOFF

Andrea VALISA

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.