OPPOSITION No B 2 706 755

Sysco Corporation, 1390 Enclave Parkway, Houston, Texas 77077-1390, United States of America (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Gruppo Soldano SRL, Contrada La Storta SNC, 89844 Limbadi (VV), Italy (applicant), represented by Studio Rubino SRL, Via Lucrezia della Valle, 84, 88100 Catanzaro, Italy (professional representative).

On 17/07/2017the Opposition Division takes the following

DECISION:

1. Opposition No B 2 706 755 is partially upheld, namely for the following contested goods:

Class 30:        Pastries, cakes, tarts and biscuits (cookies); Bread; Baked goods, confectionery, chocolate and desserts; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Fresh pasta; Pasta; Hot chili bean paste; Dough flour; Dried and fresh pastas, noodles and dumplings; Lasagne; Pasta shells; Noodles; Spaghetti; Flour; Flour mixes; Wheat flour; Buckwheat noodles; Buckwheat flour [for food]; Chili powders; Pastries consisting of vegetables and poultry; Doughs, batters, and mixes therefor; Salts, seasonings, and condiments.

        Class 32:        Non-alcoholic beverages.

2.        European Union trade mark application No 15 116 353 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 116 353, namely against all the goods in Classes 30 and 32. The opposition is based on European Union trade mark registration No 3 798 568. 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 and products consisting predominately of meat, fish, poultry and/or game; milk products; prepared vegetable salads; soup bases; canned tomatoes; tomato puree; processed avocados; beef; poultry; sausages; pork; canned, preserved, dried and/or cooked fruits, including plums; preserved, dried and/or cooked vegetables including jalapeno peppers, olives, black beans, pinto beans, kidney beans, vegetable blend for fajitas; dairy products; cheese; guacamole; and processed peanuts.

Class 30:        Flour and preparations made from cereals, bread; spices; sauces; seasonings; burritos; enchiladas; tamales; tacos; taco sauce; chimichangas; jalapeno sauce; cheese cake; desserts; spices and seasonings, namely Jamaica, dried shrimp, chili pepper, hot taco mix, taco meat seasoning, cinnamon stick; salad dressings, rice, enchilada sauce, tortillas, tortilla chips, taco shells, flour and corn tortilla mix, cheese sauce, tomato sauce, chili sauce; dry and liquid marinades; custard; flan.

Class 32:        Tomato juice.

The contested goods are the following:

Class 30:        Pastries, cakes, tarts and biscuits (cookies); Bread; Baked goods, confectionery, chocolate and desserts; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Fresh pasta; Pasta; Hot chili bean paste; Dough flour; Dried and fresh pastas, noodles and dumplings; Lasagne; Pasta shells; Noodles; Spaghetti; Flour; Flour mixes; Wheat flour; Buckwheat noodles; Buckwheat flour [for food]; Flavourings made from vegetables [other than essential oils]; Chili powders; Pastries consisting of vegetables and poultry; Doughs, batters, and mixes therefor; Salts, seasonings, flavourings and condiments.

Class 32:        Non-alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 30

Bread, desserts, flour, seasonings are identically contained in both lists of goods.

The contested pastries, cakes, tarts and biscuits (cookies); baked goods; processed grains and goods made thereof; fresh pasta; pasta; dried and fresh pastas, noodles and dumplings; lasagne; pasta shells; noodles; spaghetti; buckwheat noodles; pastries consisting of vegetables and poultry are included in, or overlap with, the opponent’s preparations made from cereals. Therefore, they are identical.

The contested dough flour, flour mixes; wheat flour; buckwheat flour [for food] are included in the broad category of the opponent’s flour. Therefore, they are identical.

The contested hot chili bean paste is included in the broad category of the opponent’s sauces. Therefore, they are identical.

The contested chili powders are included in the broad category of the opponent’s spices. Therefore, they are identical.

The contested doughs, batters, and mixes therefor cannot be clearly separated from the broad category of the opponent’s flour and preparations made from cereals. Therefore, they are identical.

The contested condiments overlap with the opponent’s sauces. Therefore, they are identical.

The contested salts are similar to a high degree to the opponent’s seasonings, as the goods come from the same undertakings, have the same purpose, target the same relevant public and have the same distribution channels.

The contested confectionery is similar to the opponent’s preparations made from cereals, as the goods have the same purpose, target the same relevant public, have the same distributions channels (e.g. the same shelves in supermarkets) and can be produced by the same undertakings. Moreover, they can be in competition.

The contested chocolate is similar to the opponents preparations made from cereals, as they have the same purpose, target the same relevant public and have the same distribution channels. Furthermore, they can be in competition.

The contested starches, and goods made thereof, baking preparations and yeasts are all common goods used in the manufacturing of staple foods. The same is true of the opponent’s flour. These goods come from the same undertakings, target the same relevant public and have the same distribution channels (e.g. supermarkets). These goods are considered similar.

The contested flavourings made from vegetables [other than essential oils]; flavourings are dissimilar to all the opponent’s goods in Classes 29, 30 and 32. The contested goods have a different commercial origin, serve different specific purposes and target, in principle, mainly companies operating in the food and beverage industry and, consequently, have different specialised end users from the opponent’s goods.

Contested goods in Class 32

The contested non-alcoholic beverages include, as a broad category, the opponent’s tomato juice. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 or similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

CASA SOLANA
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 a word mark, ‘CASA SOLANA’. The contested sign is a figurative mark containing the word ‘SOLDANO’ in black letters and the word ‘CASA’ above in smaller black letters. Above these elements, there is a figurative element depicting a red window of a house with a black roof above it; there are two figurative elements composed of red lines at the sides and a horizontal black line at the bottom. As a whole, the figurative elements resemble a stylised house containing the verbal elements.

The word ‘CASA’, present in both signs, will be perceived as referring to a house by the consumers who speak Latin-derived languages, but not by the Bulgarian-, Hungarian- and Lithuanian-speaking parts of the public. The Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Hungarian- and Lithuanian-speaking parts of the public. 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 words ‘CASA SOLANA’ and ‘CASA SOLDANO’ do not have any meanings in any of the relevant languages and they are, therefore, distinctive in relation to all the goods at issue.

The figurative elements depicting the roof and the red window of the contested sign will be associated with a house, which alludes to traditional preparation methods and will therefore be weak for the relevant goods. However, 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).

The earlier mark is a word mark and, as such, lacks dominant elements. As for the contested mark, the word ‘SOLDANO’ is the dominant element due to its size and central position.

Visually, the signs coincide in the distinctive letter sequence ‘CASA SOL*AN*’ and differ in two letters (the fourth letter, ‘D’, in the second verbal element of the contested sign, which is not present in the earlier mark, and the last letter ‘A’ in the earlier mark versus ‘O’ in the contested sign) and in the less important figurative elements of the contested sign. Therefore, the signs are visually 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 sound of the letters ‘CASA SOL*AN*’, present identically in both signs. The pronunciation differs in the sound of the additional letter, ‘D’, in the contested sign and the differing last letters of the signs, ‘A’ in the earlier mark and ‘O’ in the contested sign. The consonant in the middle of the word ‘SOLDANO’ and the differing vowels that are enunciated in a similar manner will not create major differences between the signs. Moreover, the signs have the same lengths and intonations. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since, for the relevant public, the verbal elements have no meaning and the figurative elements of the contested sign convey the meaning of a house, conceptually the signs are not similar.

The applicant refers to case-law to support its arguments that the degree of similarity between the signs is low or non-existent. In the view of the Opposition Division, in the present case, the previous cases referred to by the applicant are not comparable and relevant to the present proceedings, as the signs referred to are different. Therefore, the applicant’s arguments have to be set aside.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical, partly similar to various degrees or partly dissimilar to the opponent’s goods; the degree of attention is average and the earlier mark has an average degree of inherent distinctiveness. The signs in conflict are visually similar to an average degree, aurally similar to a high degree and conceptually not similar.

The Opposition Division considers that because the distinctive verbal elements ‘CASA SOLANA’ and ‘CASA SOLDANO’ are very similar and the signs differ mainly in the figurative elements of the contested sign, which have a lesser impact on the public’s perception, the relevant public is likely to believe that the identical or similar goods at issue originate from the same provider or from economically-linked providers.

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 a new product line or to endow a trade mark with a new, fashionable image.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-, Hungarian- and Lithuanian-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 3 798 568. 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.

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

The rest of the contested goods 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 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

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Martin EBERL

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.