OPPOSITION No B 2 805 458

Distribucion Europea De Dietetica S.L., Polígono La Pedrosa Parcela 9, 08783 Masquefa (Barcelona), Spain (opponent), represented by Isern Patentes Y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain  (professional representative)

a g a i n s t

Pro Natura, 754 avenue Pierre Grand Entrée 5 Hall du MIN, 84300 Cavaillon, France (applicant), represented by Cabinet Beau De Lomenie, 232 avenue du Prado, 13008 Marseille, France (professional representative)

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 805 458 is upheld for all the contested goods.

2.        European Union trade mark application No 15 702 194 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 15 702 194:

 

The opposition is based on European Union trade mark registration No 5 596 457:  

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 and services

The goods and services on which the opposition is based are the following:

Class 5: Foods and dietetic substances adapted for medical use; food for babies; mineral waters for medicinal purposes; dietetic beverages adapted for medical purposes; vitamin preparations; pharmaceutical and veterinary preparations.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour (dishes); preparations made from cereals, bread, pastry and confectionery, biscuits, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; oat-based food; tea, coffee and cocoa based beverages; condiments and seasonings; natural sweeteners; farinaceous foods; semolina, tapioca.

Class 35: Import and export, business mediation and commercial retailing and wholesaling and selling via electronic channels of foodstuffs, dietetic-medicinal products, cosmetics and medicinal products; sales promotion (for others); advertising; business management; business administration; office functions; distribution (dissemination) of samples; demonstration of goods; market studies; business management assistance or industrial or commercial business functions; organisation of trade fairs and exhibitions for commercial or advertising purposes; database management.

The contested goods are the following:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; all the aforesaid goods being produced organically or made from goods produced organically.

Class 31: Fresh fruits and vegetables; citrus fruit, fresh; all the aforesaid goods being produced organically or made from goods produced organically.

Class 32: Juices; vegetable juice; all the aforesaid goods being produced organically or made from goods produced organically.

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 opponent´s retail of foodstuffs refers to the business of selling any material, substance, etc., that can be used as food in relatively small quantities for consumption.

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. As indicated above the opponent’s services relate, amongst others, to the retail of foodstuffs. All the contested goods in Classes 29, 31 and 32 fall under the naturel meaning of foodstuffs (being any material or substance that can be used as food).

Consequently, all of the contested goods are considered to be similar to a low degree to these services of the opponent.

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 assumed to be similar to a low degree are directed at the public at large. The degree of attention is considered to be 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). 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.

The common element ‘Campesina’ is meaningful in certain territories, for example, in in Spain as it refers to ‘a person that works the land’. In those territories this element may, therefore, be considered weak in relation to some of the relevant goods (those ‘coming from the land’). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which the element ‘Campesina’ is meaningless.

The earlier mark is figurative mark composed of the words ‘La Campesina’ in special script beneath the image of a woman holding some plants on the background of a landscape placed in a circle. A part of the relevant public may recognize “La” as the Latin article, meaning “the”, whereas the element ‘Campesina’ is meaningless. There are no elements that are visually more eye-catching then others. Taking into account some of the relevant goods, such as preparations made from cereals, the figurative elements in the earlier mark of a woman holding some plants is considered weak for these goods. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign is a figurative mark composed of the words ‘Campesina’ and ‘Bio’ in a standard white typeface placed on a simple orange roundish shape. On the top right side of the orange shape an element is placed which may be recognized by part of the public as a purple head of chicken. Another element placed at the bottom may be recognized as the chicken’s legs The element ‘Campesina’ has no meaning, whereas ‘Bio’ will be – in relation to the relevant goods – understood as referring to biological food, which is produced by methods that comply with the standards of organic farming. Therefore, contrary to the other elements of the contested sign, ‘bio’ is considered a non-distinctive element and its impact in the assessment on the likelihood of confusion will be limited. The words ‘Campesina’ and ’Bio’ on the orange background are, due to their size and colour, visually most eye-catching.

Visually, the signs coincide in their distinctive element ‘Campesina’, which plays a dominant role in the contested sign. They differ in the letters ‘LA’ of the earlier mark and the abbreviation ‘Bio’ in the contested sign plus their figurative elements and colours.

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).

Despite the visual differences, in the light of the identical and most distinctive element of the signs and their role in the overall composition, the signs are similar to a low degree.  

Aurally, the pronunciation of the signs coincides in the word ‘Campesina’, present identically in both signs. The pronunciation differs in the sound of the letters ‘LA’ of the earlier mark and the abbreviation ‘Bio’ of the contested sign, which – as described above – will receive no or less attention. Given that the entire verbal element ‘Campesina’ is reproduced in the contested sign, the signs must be considered aurally similar to a high degree.  

Conceptually, as explained above, the coinciding distinctive element ‘Campesina’ will not be associated with a meaning. Bearing in mind the presence of additional elements in the marks albeit (some of them) of limited distinctiveness or not dominant, it is concluded that the signs are conceptually dissimilar.

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

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).

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 covered are from the same undertaking or economically linked undertakings.

The goods in question are similar to a low degree and the distinctiveness of the earlier mark is normal. The marks are visually similar to a low degree and aurally to a high degree. Although the relevant public will not ignore the existing differences between the marks, the coinciding distinctive element ‘Campesina’ could still lead them to believe that the relevant goods came from the same undertaking or economically linked undertakings. In fact, the coincidence in the meaningless term ‘Campesina’ in combination with ‘Bio’, could even lead consumers to believe that the contested sign is a sub-brand of the earlier mark, more specifically, a sub-brand that is used, for example, for a line of organic products. Moreover, account should be taken of the fact that the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public due to the similarities of the signs, and even if the goods are found to be similar to a low degree. 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 5 596 457. 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

Ferenc GAZDA

Cynthia DEN DEKKER

Ioana MOISESCU

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.