Bonjour French Food | Decision 2269010 – VAASAN Sverige AB v. Bonjour French Food

OPPOSITION No B 2 269 010

Vaasan Sverige AB, Box 47619, 117 94 Stockholm, Sweden (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Bonjour French Food, 38 rue Servan, 75544 Paris Cedex 11, France (applicant).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 269 010 is partially upheld, namely for the following contested goods:

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; Preserved garlic; Ajvar [preserved peppers]; Albumen for culinary purposes; Aloe vera prepared for human consumption; Almonds, ground; Anchovy; Peanuts, processed; Potato fritters; Butter; Peanut butter; Cocoa butter; Coconut butter; White of eggs; Milk beverages, milk predominating; Black pudding; Broth; Prawns, not live; Caviar; Mushrooms, preserved; Charcuterie; Fruit chips; Low-fat potato chips; Sauerkraut; Silkworm chrysalis, for human consumption; Cranberry sauce [compote]; Apple purée; Compotes; Broth concentrates; Jams; Fruits, tinned [canned (Am.)]; Vegetables, tinned [canned (Am.)]; Fish, tinned [canned (Am.)]; Meat, tinned [canned (Am.)]; Shellfish, not live; Gherkins; Buttercream; Whipped cream; Cream [dairy products]; Shrimps, not live; Croquettes; Crustaceans, not live; Dates; Crayfish, not live; Fruit-based snack food; Seaweed extracts for food; Meat extracts; Fish meal for human consumption; Milk ferments for culinary purposes; Beans, preserved; Fish fillets; Potato flakes; Liver; Cheese; Nuts, prepared; Frosted fruits; Frozen fruits; Fruit, preserved; Fruit preserved in alcohol; Fruit, stewed; Gelatine; Jellies for food; Fruit jellies; Meat jellies; Game, not live; Ginger jam; Soya beans, preserved, for food; Processed sunflower seeds; Processed seeds; Coconut fat; Edible fats; Herrings; Sea-cucumbers, not live; Lobsters, not live; Hummus [chickpea paste]; Olive oil for food; Bone oil, edible; Coconut oil; Rape oil for food; Linseed oil for culinary purposes; Corn oil; Palm kernel oil for food; Palm oil for food; Sesame oil; Sunflower oil for food; Edible oils; Oysters, not live; Isinglass for food; Ham; Yolk of eggs; Vegetable soup preparations; Tomato juice for cooking; Vegetable juices for cooking; Kefir [milk beverage]; Kimchi [fermented vegetable dish]; Kumys [kumyss] [milk beverage]; Milk; Albumin milk; Curd; Condensed milk; Non-alcoholic egg nog; Soya milk [milk substitute]; Spiny lobsters, not live; Bacon; Vegetables, preserved; Vegetables, cooked; Vegetables, dried; Lentils, preserved; Margarine; Marmalade; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices; Foods prepared from fish; Milk shakes; Animal marrow for food; Mussels, not live; Vegetable mousses; Fish mousses; Coconut, desiccated; Eggs; Snail eggs for consumption; Processed fish spawn; Powdered eggs; Onions, preserved; Olives, preserved; Clams [not live]; Liver pâté; Whey; Piccalilli; Pickles; Peas, preserved; Fish, not live; Fish, preserved; Salted fish; Pollen prepared as foodstuff; Potato chips; Soups; Preparations for making bouillon; Preparations for making soup; Milk products; Prostokvasha [soured milk]; Fruit pulp; Tomato purée; Raisins; Ryazhenka [fermented baked milk]; Lard for food; Fruit salads; Vegetable salads; Salted meats; Sardines; Sausages; Sausages in batter; Salmon; Smetana [sour cream]; Suet for food; Tahini [sesame seed paste]; Tuna fish; Tofu; Tripe; Truffles, preserved; Toasted laver; Meat; Meat, preserved; Pork; Poultry, not live; Yogurt; Fruit peel.

Class 30: Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Gluten additives for culinary purposes; Culinary herbs; Oat-based food; Starch for food; Star aniseed; Aniseed; Flavourings, other than essential oils; Flavourings, other than essential oils, for cakes; Spices; Oats (Crushed -); Oats (Crushed -); Cereal bars; High-protein cereal bars; Stick liquorice [confectionery]; Baking soda [bicarbonate of soda for baking purposes]; Rusks; Cake dough; Cake dough; Candy *; Candy mints; Gruel, with a milk base, for food; Grits; Buns; Cinnamon [spice]; Capers; Caramels; Curry [spice]; Breadcrumbs; Cheeseburgers [sandwiches]; Chow-chow [condiment]; Chutneys [condiments]; Cloves [spice]; Condiments; Almond confectionery; Peanut confectionery; Maize flakes; Fruit sauces; Couscous [semolina]; Crackers; Puddings; Cream of tartar for culinary purposes; Ices and ice creams; Pancakes; Turmeric *; Mousses (Dessert -) [confectionery]; Sea water for cooking; Sweeteners (Natural -); Cereal-based snack food; Rice-based snack food; Thickening agents for cooking foodstuffs; Spices; Essences for foodstuffs, except etheric essences and essential oils; Malt for human consumption; Barley meal; Wheat flour; Bean meal; Maize flour; Mustard meal; Potato flour *; Soya flour; Tapioca flour *; Meal; Ferments for pastes; Oats (Crushed -); Chips [cereal products]; Fondants; Cake dough; Rice cakes; Waffles; Royal jelly; Wheat germ for human consumption; Ginger [spice]; Frosting [icing] (Cake -); Ice; Ice, natural or artificial; Ices and ice creams; Glucose for culinary purposes; Gluten prepared as foodstuff; Chewing gum; Flaxseed for human consumption; Oats (Crushed -); Groats for human food; Halvah; Garden herbs, preserved [seasonings]; Meat gravies; Ketchup [sauce]; Sour dough; Yeast; Ice cream (Binding agents for -); Sausage binding materials; Macaroni; Macaroons [pastry]; Maize, roasted; Popcorn; Maize, milled; Malt for human consumption; Maltose; Marinades; Marzipan; Mayonnaise; Syrups and treacles; Mint for confectionery; Farinaceous foods; Honey; Mousses (Chocolate -); Mustard; Muesli; Nutmeg; Ribbon vermicelli; Barley (Crushed -); Husked barley; Bread; Unleavened bread; Gingerbread; Lozenges [confectionery]; Dough; Almond paste; Paste (Soya bean -) [condiment]; Cake dough; Meat pies; Farinaceous food pastes; Fruit jellies [confectionery]; Pasties; Pesto [sauce]; Petit-beurre biscuits; Petits fours [cakes]; Baps; Peppers [seasonings]; Pizza; Pepper; Puddings; Baking powder; Cake mixtures; Powders for ice cream; Pralines; Aromatic preparations for food; Ham glaze; Cereals; Flour-milling products; Cake dough; Meat tenderizers, for household purposes; Whipped cream (Preparations for stiffening -); Bee glue; Allspice; Quiches; Ravioli; Liquorice [confectionery]; Relishes; Noodle-based prepared meals; Rice; Spring rolls; Saffron [seasoning]; Sago; Sandwiches; Soya sauce; Tomato sauce; Dressings for salad; Sauces [condiments]; Sauces for use with pasta; Celery salt; Cooking salt; Salt for preserving foodstuffs; Semolina; Grits; Syrups and treacles; Sherbets [ices]; Spaghetti; Sugar; Candy; Palm sugar; Candy *; Confectionery for decorating Christmas trees; Sushi; Tabbouleh; Tacos; Tapioca; Tarts; Tortillas; Pies; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Ribbon vermicelli; Beer vinegar; Vinegar; Yoghurt (Frozen -) [confectionery ices].

2. European Union trade mark application No 12 026 811 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 all the goods and services of European Union trade mark application No 12 026 811. The opposition is based on, inter alia, Finnish trade mark registration No 214 693. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

On 03/12/2014 the Opposition Division rejected the opposition in its entirety on the grounds or Rules 19(1) and 20(1) EUTMIR.

On 25/02/2016 in decision R0163/2015-1 the Boards of Appeal annulled the opposition decision insofar as it rejected the opposition based on earlier Swedish trade mark No 149 249, Danish trade mark No VR 1999 01557 and Finnish trade mark No 214 693, rejected the appeal insofar as it concerns earlier Swedish trade mark No 263 469 and remitted the case to the Opposition Division for further prosecution.

Consequently, the three earlier rights Swedish trade mark No 149 249, Danish trade mark No VR 1999 01557 and Finnish trade mark No 214 693 are considered to be substantiated as ordered by the decision of the Boards of Appeal. The Opposition Division re-opened and completed the opposition proceedings.

Furthermore, in the Notice of Opposition the opponent opposed all the goods and services of the contested application, namely all the goods and services in Classes 29, 30 and 35. In subsequent submissions the opponent refers to the contested Classes as being Classes 29 and 30. However, the opponent did not submit an explicit limitation of the scope of the opposition to remove Class 35. In the absence of such an instruction, the Opposition Division must consider Class 35 to remain part of the scope of the opposition.

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 Finnish trade mark registration No 214 693.

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 and hermetically sealed, dried and cooked fruits and vegetables; edible oils and fats, mixtures containing fat and fat-based products for bread, pastries and dough as well as for products made thereof; milk, skimmed milk, milk powder, milk products, cream, cheese and cheese products; potato products; salads and dressings; soups; snacks and ready meals, yogurts; jelly; desserts.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread and bread products, bread rolls, unleavened bread, buns, pastries and candies, confectioneries, croissants, cakes, cake decorations, biscuits, gingerbread, tarts and pies, cookies, preparations for the manufacturing of all aforementioned products; ice creams; honey, syrup; yeast, baking powder; salt, mustard; vinegar, sauces (condiment); spices; ice.

Class 42: Meal services; restaurant, cafe, self-service cafe, canteen and fast food services.

The contested goods and services 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; Preserved garlic; Ajvar [preserved peppers]; Albumen for culinary purposes; Alginates for culinary purposes; Aloe vera prepared for human consumption; Almonds, ground; Anchovy; Peanuts, processed; Potato fritters; Butter; Peanut butter; Cocoa butter; Coconut butter; White of eggs; Milk beverages, milk predominating; Black pudding; Broth; Prawns, not live; Caviar; Mushrooms, preserved; Charcuterie; Fruit chips; Low-fat potato chips; Sauerkraut; Silkworm chrysalis, for human consumption; Cranberry sauce [compote]; Apple purée; Compotes; Broth concentrates; Jams; Fruits, tinned [canned (Am.)]; Vegetables, tinned [canned (Am.)]; Fish, tinned [canned (Am.)]; Meat, tinned [canned (Am.)]; Shellfish, not live; Gherkins; Buttercream; Whipped cream; Cream [dairy products]; Shrimps, not live; Croquettes; Crustaceans, not live; Dates; Crayfish, not live; Fruit-based snack food; Seaweed extracts for food; Meat extracts; Fish meal for human consumption; Milk ferments for culinary purposes; Beans, preserved; Fish fillets; Potato flakes; Liver; Cheese; Nuts, prepared; Frosted fruits; Frozen fruits; Fruit, preserved; Fruit preserved in alcohol; Fruit, stewed; Gelatine; Jellies for food; Fruit jellies; Meat jellies; Game, not live; Ginger jam; Soya beans, preserved, for food; Processed sunflower seeds; Processed seeds; Coconut fat; Edible fats; Herrings; Sea-cucumbers, not live; Lobsters, not live; Hummus [chickpea paste]; Olive oil for food; Bone oil, edible; Coconut oil; Rape oil for food; Linseed oil for culinary purposes; Corn oil; Palm kernel oil for food; Palm oil for food; Sesame oil; Sunflower oil for food; Edible oils; Oysters, not live; Isinglass for food; Ham; Yolk of eggs; Vegetable soup preparations; Tomato juice for cooking; Vegetable juices for cooking; Kefir [milk beverage]; Kimchi [fermented vegetable dish]; Kumys [kumyss] [milk beverage]; Milk; Albumin milk; Curd; Condensed milk; Non-alcoholic egg nog; Soya milk [milk substitute]; Spiny lobsters, not live; Bacon; Lecithin for culinary purposes; Vegetables, preserved; Vegetables, cooked; Vegetables, dried; Lentils, preserved; Margarine; Marmalade; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices; Foods prepared from fish; Milk shakes; Animal marrow for food; Mussels, not live; Vegetable mousses; Fish mousses; Edible birds' nests; Coconut, desiccated; Eggs; Snail eggs for consumption; Processed fish spawn; Powdered eggs; Onions, preserved; Olives, preserved; Clams [not live]; Liver pâté; Pectin for culinary purposes; Whey; Piccalilli; Pickles; Peas, preserved; Fish, not live; Fish, preserved; Salted fish; Pollen prepared as foodstuff; Potato chips; Soups; Preparations for making bouillon; Preparations for making soup; Rennet; Milk products; Prostokvasha [soured milk]; Fruit pulp; Tomato purée; Raisins; Ryazhenka [fermented baked milk]; Lard for food; Fruit salads; Vegetable salads; Salted meats; Sardines; Sausages; Sausages in batter; Salmon; Smetana [sour cream]; Suet for food; Tahini [sesame seed paste]; Tuna fish; Tofu; Tripe; Truffles, preserved; Toasted laver; Meat; Meat, preserved; Pork; Poultry, not live; Yogurt; Fruit peel.

Class 35: Advertising; Business management; Business administration; Office functions; Commercial administration of the licensing of the goods and services of others; Bill-posting; Import-export agencies; Commercial information agencies; Publicity agencies; Commercial or industrial management assistance; Business management assistance; Cost price analysis; Business auditing; Employment agencies; Accounting; Business organization consultancy; Business management and organization consultancy; Business management consultancy; Personnel management consultancy; Professional business consultancy; Publicity columns preparation; Shop window dressing; Demonstration of goods; Dissemination of advertising matter; Direct mail advertising; Distribution of samples; Business management of performing artists; Business appraisals; Tax preparation; Drawing up of statements of accounts; Compilation of statistics; Marketing studies; Invoicing; Business management of hotels; Business management of sports people; Computerized file management; Business information; Commercial information and advice for consumers [consumer advice shop]; Business investigations; Rental of advertising space; Rental of vending machines; Office machines and equipment rental; Publicity material rental; Rental of photocopying machines; Rental of advertising time on communication media; Marketing; Updating of advertising material; Layout services for advertising purposes; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Payroll preparation; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Sales promotion for others; Publication of publicity texts; Publicity; On-line advertising on a computer network; Advertising by mail order; Radio advertising; Television advertising; Marketing research; Sponsorship search; Data search in computer files for others; Business research; Personnel recruitment; Compilation of information into computer databases; Writing of publicity texts; Public relations; Business inquiries; Document reproduction; Psychological testing for the selection of personnel; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Procurement services for others [purchasing goods and services for other businesses]; Business efficiency expert services; Price comparison services; Advisory services for business management; Typing; Modelling for advertising or sales promotion; Photocopying services; Relocation services for businesses; Telephone answering for unavailable subscribers; News clipping services; Secretarial services; Outsourcing services [business assistance]; Shorthand; Telemarketing services; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Opinion polling; Systemization of information into computer databases; Administrative processing of purchase orders; Word processing; Transcription; Auctioneering.

The earlier Finnish trade mark registration No 214 693 is registered for the entire class heading of Class 30 of the Nice Classification. It was filed on 17/11/1997. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the seventh edition.

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.

Some of the contested goods appear more than once, for example meat extracts and milk products appear twice, spices and sugar appear three times, and cake dough appears five times. These identically listed contested items will be compared just once.

Contested goods in Class 29

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; milk and milk products; edible oils and fats; cheese are identically contained in both lists of goods. Furthermore, the contested jellies are covered by the earlier right’s singular version jelly, therefore, they are also identical.

The contested frozen fruits and vegetables are included in the broad category of the opponent’s preserved fruits and vegetables. Therefore, they are identical.

The contested black pudding; charcuterie; silkworm chrysalis, for human consumption; meat, tinned [canned (Am.)]; liver; meat jellies; ham; bacon; animal marrow for food; liver pâté; salted meats; sausages; sausages in batter; tripe; meat; meat, preserved; pork are included in, or overlap with, the broad categories of the opponent’s meat. Therefore, they are identical.

The contested anchovy; prawns, not live; caviar; fish, tinned [canned (Am.)]; shellfish, not live; shrimps, not live; crustaceans, not live; crayfish, not live; fish meal for human consumption; fish fillets; herrings; sea-cucumbers, not live; lobsters, not live; oysters, not live; isinglass for food; spiny lobsters, not live; foods prepared from fish; mussels, not live; fish mousses; processed fish spawn; clams [not live]; fish, not live; fish, preserved; salted fish; sardines; salmon; tuna fish are included in, or overlap with, the broad category of the opponent’s fish. Therefore, they are identical.

The contested poultry, not live are included in the broad category of the opponent’s poultry. Therefore, they are identical.

The contested game, not live are included in the broad category of the opponent’s game. Therefore, they are identical.

The contested jams, compotes; fruit chips; cranberry sauce [compote]; apple purée; fruits, tinned [canned (Am.)]; dates; fruit-based snack food; frosted fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; fruit jellies; ginger jam; fruit pulp; raisins; fruit salads; fruit peel; marmalade; coconut, desiccated are included in, or overlap with, the broad category of the opponent’s preserved, dried and cooked fruits. Therefore, they are identical.

The contested preserved garlic; ajvar [preserved peppers]; aloe vera prepared for human consumption; almonds, ground; peanuts, processed; potato fritters; peanut butter; mushrooms, preserved; low-fat potato chips; sauerkraut; vegetables, tinned [canned (Am.)]; gherkins; croquettes; beans, preserved; potato flakes; nuts, prepared; soya beans, preserved, for food; processed sunflower seeds; processed seeds; hummus [chickpea paste]; vegetable soup preparations; tomato juice for cooking; vegetable juices for cooking; kimchi [fermented vegetable dish]; vegetables, preserved; vegetables, cooked; vegetables, dried; lentils, preserved; vegetable mousses; onions, preserved; olives, preserved; piccalilli; pickles; peas, preserved; potato chips; tomato purée; vegetable salads; tahini [sesame seed paste]; tofu; truffles, preserved; toasted laver are included in, or overlap with, the broad categories of the opponent’s preserved, dried and cooked vegetables. Therefore, they are identical.

The contested butter; milk beverages, milk predominating; buttercream; whipped cream; cream [dairy products]; milk ferments for culinary purposes; kefir [milk beverage]; kumys [kumyss] [milk beverage]; milk; albumin milk; curd; condensed milk; soya milk [milk substitute]; milk shakes; whey; prostokvasha [soured milk]; ryazhenka [fermented baked milk]; smetana [sour cream]; yogurt are included in, or overlap with, the broad categories of the opponent’s milk, skimmed milk, milk powder, milk products, cream. Therefore, they are identical.

The contested cocoa butter; coconut butter; coconut fat; edible fats; olive oil for food; bone oil, edible; coconut oil; rape oil for food; linseed oil for culinary purposes; corn oil; palm kernel oil for food; palm oil for food; sesame oil; sunflower oil for food; edible oils; margarine; fatty substances for the manufacture of edible fats; fat-containing mixtures for bread slices; lard for food; suet for food are included in, or overlap with, the broad categories of the opponent’s edible oils and fats, mixtures containing fat and fat-based products for bread. Therefore, they are identical.

The contested gelatine; jellies for food are included in, or overlap with, the broad category of the opponent’s jelly. Therefore, they are identical.

The contested broth concentrates; preparations for making soup; preparations for making bouillon and broth are highly similar to the opponent’s meat extracts which are highly concentrated meat stock. These goods have the same nature and purpose and are intended for the same public. Furthermore, they are sold in the same stores and produced by the same undertakings. They target the same end users and may be in competition with one another.

The contested soups are considered similar to the opponent’s meat extracts and/or preserved, dried and cooked fruits and vegetables in that they can have the same methods of use, distribution channels, end users and producers.

The contested snail eggs for consumption refer to a type of caviar that consists of fresh or processed eggs of land snails. They are considered to be similar to the opponent’s meat, fish. They are goods which could be provided by similar manufacturers, have the same purpose, target the same consumers via the same outlets and are in competition with one another.

The contested seaweed extracts for food is similar to the opponent’s spices in Class 30 as they have the same purpose, and they can coincide in producer, end user and distribution channels. Furthermore, they are in competition.

The contested pollen prepared as foodstuff is pollen collected by bees and then prepared for human consumption. It is similar to the opponent’s honey in Class 30, as they can coincide in producer, end user and distribution channels.

The contested non-alcoholic egg nog is a sweet creamy dairy-based beverage traditionally made with milk, cream, sugar, whipped egg whites and egg yolks. It is considered to be similar to a low degree to the opponent’s milk and milk products as they can coincide in nature, producer and end user.

The contested eggs; white of eggs; yolk of eggs; albumen for culinary purposes; powdered eggs are similar to a low degree to the opponent’s poultry as they can coincide in producer, end user and distribution channels.

The contested alginates for culinary purposes; rennet; lecithin for culinary purposes; pectin for culinary purposes are not everyday goods, and have a specific nature and purpose. Alginates are salts or esters of alginic acid, used for dehydrating foods, as a gelling agent and for thickening drinks, soups, jellies, etc. Rennet is a substance containing the enzyme rennin, prepared using the stomachs of calves and used for curdling milk when making cheese and junket. Lecithin is used as an emulsifier to stabilise a mixture and ensure consistency. As an emulsifier, the lecithin prevents water and oil from separating. Pectin is a soluble gelatinous polysaccharide present in ripe fruits and used as a setting agent in jams and jellies. These contested goods are usually addressed to highly specialized end users such as producers of foodstuff, whereas the opponent’s foodstuffs in Classes 29 and 30 and meal and food preparation services in Class 42 target the general public. The goods and services under comparison are not complementary or in competition with each other and differ in their distribution channels and usual origin; they must therefore be considered dissimilar.

The contested edible birds' nests are among the most expensive animal products consumed by humans. The nests have been used in Chinese cooking for over 400 years, most often as bird's nest soup. The nests are harvested, and to this end the company creates build structures where the nests can be built in order to attract the birds. Given the peculiarity of these contested goods they are dissimilar to the opponent’s foodstuffs in Classes 29 and 30 and meal and food preparation services in Class 42, as they have a completely different nature and purpose and are not complementary or in competition with each other and differ in their distribution channels and usual origin.

Contested goods in Class 30

Rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, syrup; treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; unleavened bread; candy; gingerbread; tarts; pies; ice, natural or artificial; ice creams are identically contained in both lists of goods (including synonyms).

The contested oat-based food; starch for food; star aniseed; aniseed; flavourings, other than essential oils; flavourings, other than essential oils, for cakes; oats (crushed -); oats (crushed -); stick liquorice [confectionery]; rusks; gruel, with a milk base, for food; buns; cinnamon [spice]; capers; caramels; curry [spice]; chow-chow [condiment]; cloves [spice]; condiments; almond confectionery; peanut confectionery; maize flakes; couscous [semolina]; crackers; puddings; pancakes; turmeric; sea water for cooking; sweeteners (natural -); thickening agents for cooking foodstuffs; essences for foodstuffs, except etheric essences and essential oils; barley meal; wheat flour; bean meal; maize flour; mustard meal; potato flour; soya flour; tapioca flour; meal; ferments for pastes; oats (crushed -); chips [cereal products]; fondants; rice cakes; waffles; royal jelly; ginger [spice]; glucose for culinary purposes; gluten prepared as foodstuff; chewing gum; oats (crushed -); groats for human food; ketchup [sauce]; ice cream (binding agents for -); sausage binding materials; macaroni; macaroons [pastry]; maize, roasted; popcorn; maize, milled; malt for human consumption; maltose; marzipan; mayonnaise; mint for confectionery; farinaceous foods; muesli; nutmeg; ribbon vermicelli; barley (crushed -); husked barley; lozenges [confectionery]; almond paste; meat pies; farinaceous food pastes; fruit jellies [confectionery]; petit-beurre biscuits; petits fours [cakes]; peppers [seasonings]; pizza; pepper; puddings; powders for ice cream; pralines; aromatic preparations for food; flour-milling products; meat tenderizers, for household purposes; whipped cream (preparations for stiffening -); bee glue; allspice; ravioli; liquorice [confectionery]; relishes; saffron [seasoning]; sandwiches; soya sauce; tomato sauce; celery salt; cooking salt; salt for preserving foodstuffs; semolina; sherbets [ices]; spaghetti; confectionery for decorating Christmas trees; sushi; vanilla [flavoring] [flavouring]; vanillin [vanilla substitute]; ribbon vermicelli; beer vinegar; yoghurt (frozen -) [confectionery ices] all appear in the alphabetical list of Class 30 of the seventh edition of the Nice Classification (including synonyms). Consequently, they are identical to the goods protected by the earlier right.

The contested gluten additives for culinary purposes; baking soda [bicarbonate of soda for baking purposes]; cake dough; cream of tartar for culinary purposes; sour dough; dough; cake mixtures are included in the broad category of the opponent’s preparations for the manufacturing of all aforementioned products [flour and preparations made from cereals, bread and bread products, bread rolls, unleavened bread, buns, pastries and candies, confectioneries, croissants, cakes, cake decorations, biscuits, gingerbread, tarts and pies, cookies]. Therefore, they are identical.

The contested cereal bars; high-protein cereal bars; grits; breadcrumbs; cereal-based snack food; rice-based snack food; malt for human consumption; wheat germ for human consumption; flaxseed for human consumption; pasties; baps; cereals; noodle-based prepared meals; tacos; tabbouleh; tortillas are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested candy mints; mousses (dessert -) [confectionery]; mousses (chocolate -); halvah are included in the broad category of the opponent’s confectioneries. Therefore, they are identical.

The contested frosting [icing] (cake -) is included in the broad category of the opponent’s cake decorations. Therefore, they are identical.

The contested culinary herbs; garden herbs, preserved [seasonings] are included in the broad category of the opponent’s seasonings which is included in the alphabetical list of Class 30 in the seventh edition of the Nice Classification and for which the earlier mark is protected. Therefore, they are identical.

The contested chutneys [condiments]; fruit sauces; meat gravies; marinades; paste (soya bean -) [condiment]; pesto [sauce]; ham glaze; dressings for salad; sauces for use with pasta are included in the broad category of the opponent’s sauces (condiment). Therefore, they are identical.

The contested palm sugar is included in the broad category of the opponent’s sugar. Therefore, they are identical.

The contested quiches; spring rolls are prepared meals made of a cereal based outer layer and a filling made of vegetables and/or meat and/or fish and, in the case of quiches, eggs and/or milk and/or cheese. They are considered to be similar to the opponent’s pies (which it should be noted covers all types of pies, including both savoury and sweet ones) and which have a similar composition. They are goods which could be provided by similar manufacturers, have the same purpose, target the same consumers via the same outlets and are in competition with one another.

The contested cheeseburgers [sandwiches] are similar to the opponent’s bread as they have the same nature. They can coincide in producer, end user and distribution channels.

Contested services in Class 35

The contested services in Class 35 cover advertising, business management, business administration, office functions, retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies, auctioneering and rental of vending machines. These services have no points of contact with the opponent’s food items in Classes 29 and 30 nor with its meal and food preparation services in Class 42. These goods and services are related to items and services intended to provide nourishment and satisfy hunger, whilst the contested services are intended to promote goods or services, improve the operating of businesses or provide support in their daily operation, permit the selling of certain medical goods, auctioneering and rental of vending machines. Therefore, these goods and services have very different purposes, do not come from the same producers or providers, do not target the same consumers and are not available via the same distribution channels. Finally, they are not complementary or in competition with one another. Therefore, these services in Class 35 are dissimilar.

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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs

BONJOUR	Bonjour French Food
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 mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The earlier mark consists of, and the contested sign contains, a French word, ‘BONJOUR’, (English: hello). A part of the relevant public will not understand it but another part will, as it is a commonly used basic French word. Regardless of whether it is understood or not, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign also contains the English words ‘French Food’. The Court has confirmed that there is at least a basic understanding of the English language by the general public in certain countries including Finland (judgment of 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). Consequently, the Finnish public will understand these English words. These words are descriptive for the goods in Classes 29 and 30, which are the only goods found to be identical or similar (to various degrees), as they will indicate both the country of origin, France, and the nature of the goods, namely that they are foods, and these words are non-distinctive.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive word ‘BONJOUR’. They differ in the contested sign’s non-distinctive words ‘French Food’. The signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables /BON/JOUR/. They differ in the contested sign’s non-distinctive words ‘French Food’. The signs are aurally similar to a high degree.

Conceptually, for the part of the public that does not understand ‘BONJOUR’ then the earlier mark will have no meaning whilst the contested sign will have the meaning of French food. For this part of the public since one of the signs will have no meaning, the signs are conceptually not similar.

However, for another part of the relevant public the signs share the concept of hello and they differ in the concept of French food, although as this last concept is non-distinctive for the goods in question, then for this part of the public the signs are conceptually similar to a high degree.

As the signs have been found at least similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

Global assessment, other arguments and conclusion

The goods and services have been found to be partly identical, partly similar to various degrees and partly dissimilar. The signs share the distinctive element ‘BONJOUR’, which is the entirety of the earlier right, and differ only in the non-distinctive words ‘French Food’ of the contested sign. The signs have been found highly similar visually, aurally and, at least for a part of the relevant public which understands the French word ‘BONJOUR’, conceptually.

Therefore, for the contested goods which were found to be identical, highly similar, similar or similar to a low degree to those covered by the earlier trade mark and given the high degree of similarity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against these goods.

Therefore, the opposition is well founded on the basis of the opponent’s Finnish trade mark registration No 214 693. It follows that the contested trade mark must be rejected for all the contested goods found identical, similar and similar to a low degree.

The rest of the contested goods and services 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 this earlier right and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

Swedish trade mark No 149 249 for the word mark ‘BONJOUR’;

Danish trade mark No VR 1999 01557 for the word mark ‘BONJOUR’.

Since these marks are identical to the one which has been compared and cover a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 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

Chantal VAN RIEL

Ric WASLEY

Richard BIANCHI

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.

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