OPPOSITION No B 2 703 448

Hofmeister Vermögensverwaltungs GmbH & Co. KG, Kemptener Str. 17 – 24, 87493 Lauben, Germany (opponent), represented by Rechts- und Patentanwaltskanzlei Lewinsky & Kollegen, Bahnhofstr. 7, 82166 Gräfelfing, Germany (professional representative)

a g a i n s t

Borges Branded Foods, SLU,  Avda. Josep Trepat s/n, 25300 Tàrrega (Lleida), Spain (holder), represented by Aricha, Calle Emilio Vargas 1, 28043 Madrid, Spain (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 703 448 is upheld for all the contested goods, namely

Class 29:        Edible oils.

2.        International registration No 1 259 897 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of international trade mark registration No 1 259 897 designating the European Union. The opposition is based on international trade mark registration No 797 235 designating the European Union. 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 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; nutritional supplements and dietetic foodstuffs not adapted for medical use, namely foodstuffs with a protein base. 

The contested goods are the following:

Class 29:        Edible oils.

Edible oils are identically contained in both lists of goods.

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 are directed at the public at large. The degree of attention will be average.

3. The signs

Cremieur
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the verbal elements ‘Cremieur’, ‘BORGES’ and ‘Cremière’ have no meaning.

The earlier mark is a word mark made up of a single word ‘Cremieur’. As this word is meaningless for the relevant public as defined above, it is distinctive.

The IR holder claims that the earlier mark will be associated with the French town Crèmieu. Considering that Crèmieu is a small town in south-eastern France with no more than local significance nor with a noticeable commercial position on the European Union market, the Opposition Division finds it highly unlikely, that the relevant public will associate the word ‘Cremieur’ with the place Crèmieu in France.

The contested sign is a figurative sign composed of two elements arranged in two lines. In the top line the verbal element ‘BORGES’ appears, placed in the frame, on a red background with small decorative elements at the beginning and end. Below this is the stylised word element ‘Cremière’. It is written in a larger font than ‘BORGES’. Neither of the verbal elements included in the contested sign has a meaning for the relevant public and both of them are, therefore, distinctive in relation to the relevant goods. The figurative element and colour in the contested sign, on which the word ‘BORGES’ is displayed, will be perceived as merely decorative.  Therefore, since it is not unusual or uncommon, it has no distinctiveness on its own.

Since the word ‘Cremière’ in the contested sign is larger and the most eye-catching it is considered to be the dominant element.

Visually, the signs coincide in the string of letters ‘CREMIE’ and the letter ‘R’ being placed as either the last or penultimate letter. They differ in the additional verbal element ‘BORGES’ in the contested sign and in the seventh and eighth letters ‘U’ and ‘E’ included in both signs respectively. Account is taken of the fact that the signs coincide in seven out of eight letters of the dominant and distinctive element of the contested sign and of the fact that the common part ‘CREMIE’ is placed at the beginning of the signs. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, the dominant element of the contested sign, namely ‘Cremière’, and the whole earlier mark, have the same number of letters and despite the minor differences in their endings (‘RE’ and ‘UR’), these elements will be pronounced almost identically by the relevant English-speaking public. It is also taken into consideration that the contested sign differs insofar that it includes the additional word ‘BORGES’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods are identical. At the same time, the signs are visually and aurally similar to an average degree along with no conceptual meaning to the relevant English-speaking public.

Account is taken of the facts that the earlier mark enjoys an average degree of distinctiveness, the degree of attention of the relevant public is average and that 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). Therefore, the fact of coincidence of the earlier mark in seven out of eight letters, with the dominant element of the contested sign is being of greater importance.

In its observations, the holder argues that it owns several EUTM registrations including the word ‘BORGES’. It claims that ‘BORGES’ is the distinctive element of the contested sign since it is a recognised trade mark in its own right and, moreover, the second element, ‘Cremière’, is generic and not distinctive. However, as already mentioned above, the term ‘Cremière’ will be perceived as meaningless by the English-speaking part of the public and, as such, is of average distinctiveness and not descriptive or generic. Moreover, the holder did not support its claim of enhanced distinctiveness of the term ‘BORGES’ by any evidence and there is no reason to consider that ‘the weight of the composition falls upon the term BORGES’ as claimed by the holder. As explained above, the two verbal elements of the contested sign are equally distinctive and on account of its size, it is in fact the word ‘Cremière’ that will attract more the consumer’s attention. 

Furthermore, the fact that the holder owns other marks that include the word ‘BORGES’ is irrelevant for these proceedings as it is only the contested mark and the mark on which the opposition is based that are compared. The right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the holder must be rejected as unfounded.

Considering all of the above, there is a likelihood of confusion on the part of the 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 international trade mark registration No 797 235 designating the European Union. It follows that the contested trade mark must be rejected for all of 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 holder 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

Michaela SIMANDLOVA

José Antonio GARRIDO OTAOLA

Carmen SÁNCHEZ PALOMARES

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.