OPPOSITION No B 2 544 115
Teco Pesca, C.A. (Compania Anonima), Via Del Pacifico 4 1/2, Viamanta, Ecuador (opponent), represented by Jensen Emmerich, Marie-Curie-Ring 1, 24941 Flensburg, Germany (professional representative)
a g a i n s t
Cataliment, S.L., Pol. Ind. Oeste Parcela 9 13, 30169 San Gines (Murcia), Spain (applicant), represented by Leggroup, C/ Campoamor 13, 1º, 28004 Madrid, Spain (professional representative).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 544 115 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 750 864. The opposition is based on European Union trade mark registration No 6 582 852. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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 goods and services
The goods on which the opposition is based are the following:
Class 29: Meat, fish, poultry and game; meat and fish extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.
Class 30: Fruit sauces.
The contested goods and services are the following:
Class 29: Fish, shellfish, mussels and crustaceans (all included in this class); fish extracts; dried, preserved, boiled and/or cooked fish and shellfish; preserved, cooked and/or prepared fruits and vegetables; prepared bean sprouts; prepared, cooked, preserved or frozen meals, consisting mainly of fish; fish eggs and dried, preserved or cooked seafood; caviar and caviar substitutes.
Class 31: Live animals, in particular fish and shellfish; fruit, vegetables and garden herbs; fish eggs and shellfish.
Class 35: Retailing in shops and via global computer networks of fish, seafood, mussels and crustaceans, fruits and vegetables, caviar and caviar substitutes, and substitutes and/or prepared products based on fruits and vegetables, fish and seafood.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s list of goods in Class 31, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
Fish; fish extracts; preserved, cooked fruits and vegetables are identically contained in both lists of goods.
The contested shellfish, mussels and crustaceans (all included in this class) are included in the broad category of the opponent’s fish. Therefore, they are identical.
The contested prepared fruits and vegetables; prepared bean sprouts are included in the broad category of, or overlap with, the opponent’s preserved, dried and cooked fruits and vegetables. Therefore, they are identical.
The contested dried, preserved, boiled and/or cooked fish and shellfish; prepared, cooked, preserved or frozen meals, consisting mainly of fish; fish eggs and dried, preserved or cooked seafood; caviar and caviar substitutes are considered similar to the opponent’s fish, since they have the same nature and may coincide in their producer and relevant consumers.
Contested goods in Class 31
The contested live animals, in particular fish and shellfish; fish eggs and shellfish are considered similar to a low degree to the opponent’s fish in Class 29, since they can have the same producer and distribution channels.
The contested fruit, vegetables and garden herbs are fresh fruits, vegetables and garden herbs and are considered similar to a low degree to the opponent’s dried fruits and vegetables in Class 29. They can be distributed through the same channels, be sold in the same vegetable shops and have the same relevant consumers. Furthermore, fresh fruits and vegetables and dried fruits and vegetables are in competition with each other.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retailing in shops and via global computer networks of fish, seafood, mussels and crustaceans is considered similar to a low degree to the opponent’s fish in Class 29.
However, the contested retailing in shops and via global computer networks of fruits and vegetables, caviar and caviar substitutes, and substitutes and/or prepared products based on fruits and vegetables, fish and seafood is considered dissimilar to the opponent’s goods in Class 29 and those in Class 30, since they are different in nature and, considering that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor necessarily complementary to each other.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
- 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 and services found to be identical or similar (to various degrees) are directed at the public at large. The degree of attention is considered average.
- 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 earlier mark is a figurative mark containing the verbal elements ‘oro mar’ in black lower case letters and a figurative element in front of it, depicting a highly stylised fish in white against a gold trapezium-shaped background.
The word ‘oro’ will be perceived by a part of the relevant public (e.g. the Spanish- and Italian-speaking publics) as meaning ‘gold’. For this part of the public, since this element may be perceived as alluding to a high quality of the goods, its distinctiveness will be limited. The word ‘mar’ will be perceived as meaning ‘sea’, either because it exists as such in the official language of the country (e.g. Spanish) or because it has a similar equivalent (e.g. ‘mare’ in Italian and Romanian); it could also be perceived as ‘măr’, meaning ‘apple’ in Romanian. For the remaining part of the public (e.g. the Bulgarian-, French-, Lithuanian- and Polish-speaking publics), these words are meaningless. For the part of the public that will perceive both words, ‘oro’ and ‘mar’ (or just the word ‘mar’), as having the abovementioned meanings, the expression ‘oro mar’ (or just the element ‘mar’) will allude to, for example, sea products or fruits (of high quality) and will therefore have a low degree of distinctiveness in relation to some of the goods (i.e. fish, shellfish, mussels or fruits) in Classes 29 and 31. For the remaining part of the public, the degree of distinctiveness of the elements ‘oro mar’ will be average.
The contested sign is a figurative mark containing the verbal element ‘Cataliment’ in a black stylised typeface and a figurative element above, depicting a stylised fish in gold.
The word ‘Cataliment’ as such has no meaning for the public in the relevant territory; however, it cannot be excluded that a part of the public (e.g. part of the Romanian- and French-speaking publics) may dissect the element ‘aliment’ and perceive it as referring to ‘food’; it would thus have a limited degree of distinctiveness in relation to the relevant goods and services. For the remaining part of the public (e.g. the Bulgarian-, Italian-, Lithuanian-, Polish- and Spanish-speaking publics), the word ‘Cataliment’ will be meaningless and, therefore, of average distinctiveness.
The figurative elements depicting a stylised fish in the earlier mark and the contested sign are considered to have a limited degree of distinctiveness for some goods in Classes 29 and 31 (e.g. fish, shellfish, fish extracts), since they refer to the nature of these goods, and for the contested services in Class 35, since they refer to the kind of goods being sold through such services. As regards the remaining goods (e.g. fruits and vegetables), the distinctiveness of the figurative elements of both signs is seen as normal. However, considering the facts that the average consumer will more readily refer to the goods and services in question by quoting the verbal elements of the mark than by describing the figurative element of a stylised fish, and that the trapezium in the earlier mark is purely decorative (serving only as a background for the depiction of a fish), the words ‘oro mar’ (respectively ‘oro’ for the Romanian-speaking public) of the earlier mark and ‘Cataliment’ of the contested sign will be attributed more trade mark significance than the figurative elements.
Despite some differences in the sizes of the word and figurative elements in both signs, it is considered that neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-caching) than other elements.
Visually, both signs contain a figurative element depicting a stylised fish; it is white on a gold background in the earlier mark and gold on a white background in the contested sign. However, these figurative elements are depicted in completely different manners in the marks: in the earlier mark, the depiction of the fish is facing towards the left, with the head and pectoral and tail fins being depicted as separate pieces, and its stylisation is of such a nature that it may be difficult to be perceived as a fish by the relevant consumers at a first sight; in the contested sign, however, the depiction of the fish is facing towards the right and is solid and rounded, with small tail fins and without a pectoral fin. Moreover, the earlier mark and the contested sign contain completely different verbal elements, namely ‘oro mar’ and ‘Cataliment’, respectively.
The opponent emphasises the similarity between the figurative elements, namely that they both depict a stylised fish in gold, and highlights that the consumer’s attention will primarily be drawn to the beginning of the signs (which is a depiction of a fish in both). However, although it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, in cases 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).
As the signs coincide only in the use of gold and in the fact that they both include a depiction of a fish, but completely differ in the way the fish is depicted and have different verbal elements, it is concluded that the signs are not visually similar.
Aurally, as the verbal elements of the earlier mark, ‘oro mar’, and the verbal element of the contested sign, ‘Cataliment’, do not aurally coincide in any element, and as the depictions of fish are not subject to a phonetic assessment, it is concluded that the signs are not aurally similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Consequently, the marks overlap conceptually only in their figurative elements, which both invoke the concept of a fish. However, even in relation to the goods for which this element has an average degree of distinctiveness, the mere fact that both signs invoke the general concept of a fish can lead only to a lower than average degree of conceptual similarity between 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.
- 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, due to the combination of verbal and figurative elements and the stylisation of the figurative element, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some elements of limited distinctiveness in the mark in relation to some of the relevant goods or some of the relevant consumers as stated above in section c) of this decision.
- 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).
As concluded above, the contested goods and services are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods and they target the public at large with an average degree of attention. The degree of distinctiveness of the earlier mark is average.
The only similarities between the signs are the use of gold and the concept of a fish. However, as explained in detail in section c), these similarities result in a finding of only a lower than average degree of conceptual similarity, and the signs are not similar visually and aurally due to the significant differences in their figurative and verbal elements.
Moreover, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets, in relation to which consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145); they can also be asked for verbally in specialised shops or supermarkets by speaking to an assistant. Consequently, the visual and aural aspects play a greater role in the global assessment of the likelihood of confusion.
Therefore, it is concluded that the differences between the marks clearly outweigh the coincidences to such an extent that a likelihood of confusion on the part of the public can safely be excluded, even in relation to identical goods.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Anunciata SEVA MICO | Rasa BARAKAUSKIENE | Denitza STOYANOVA-VALCHANOVA |
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.