OPPOSITION No B 2 758 897

Chancerelle, 3, Rue des Conserveries ZI de Lannugat, 29100 Douarnenez, France (opponent), represented by Cabinet Boettcher, 16 rue Médéric, 75017 Paris, France (professional representative)

a g a i n s t

Jealsa Rianxeira S.A., C/ Bodión, s/n, 15930 Boiro (La Coruña), Spain (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 897 is partially upheld, namely for the following contested goods and services:

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, fish, preserved.

Class 31:        Agriculture, horticulture and forestry products; fresh fruits and vegetables; live animals.

Class 35:        Wholesaling and/or retailing of 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 fish.

2.        European Union trade mark application No 15 383 102 is rejected for all the above goods and services. 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 15 383 102. The opposition is based on European Union trade mark registration No 516 898 and international trade mark registration No 598 795 designating the Benelux countries, Germany, Spain, Italy and Portugal, in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opposition is also based on the trade company names ‘CHANCERELLE’, ‘CONSERVERIE CHANCERELLE’ and the trade name ‘MAISON CHANCERELLE’, used in the course of trade in France, in relation to which the opponent invoked Article 8(4) 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.

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 European Union trade mark registration No 516 898.

1. The goods and services

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; eggs, milk and milk products; edible oils and fats; salad dressings; preserves of the aforesaid goods.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces [except salad dressings]; spices; ice.

The contested goods and services are the following:

Class 30:        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, fish, preserved.

Class 31:        Agriculture, horticulture and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; live animals; foodstuffs for animals; malt.

Class 35:        Advertising; business management; business administration; office functions; wholesaling and/or retailing of 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 fish, agricultural, horticultural and forestry products, raw and unprocessed grains and seeds, fresh fruits and vegetables, natural plants and flowers, live animals, foodstuffs for animals, malt.

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

The contested meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and milk products; edible oils and fats are identically contained in both lists of goods. Therefore, these goods are identical.

The contested fish preserved is equivalent to the opponent’s preserves of the aforesaid goods [fish]. Therefore, they are identical.

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

The contested compotes are dishes of fruit stewed with sugar or in a syrup, while the opponent’s jams are sweet spreads or preserves made from fruit and sugar. These goods have the same nature and purpose in that they are both cooked fruit foodstuffs. They can have the same commercial origin and they are in competition, having the potential to replace one another. Moreover, they are distributed through the same distribution channels and target the same relevant public. Therefore, these goods are highly similar.

Contested goods in Class 31

The contested live animals in Class 31 and the opponent’s fish in Class 29 are similar to a low degree. The category live animals includes live animals that are eaten alive or sold to be cooked in their living state, such as oysters, mussels and lobsters. These goods have the same distribution channels and producers.

The contested agricultural, horticultural and forestry products; fresh fruits and vegetables in Class 31 and the opponent’s preserved, dried and cooked fruits and vegetables in Class 29 are similar to a low degree. These goods are distributed through the same channels, target the same relevant public and are in competition with each other.

The contested raw and unprocessed grains and seeds; natural plants and flowers; foodstuffs for animals; malt are not related to any of the opponent’s goods in Classes 29 and 30.

In particular, the contested raw and unprocessed grains and seeds are any propagative part of a plant and malt refers to a cereal grain, such as barley, that is kiln-dried after it has been induced to germinate by soaking in water. The contested natural plants and flowers are live horticultural products sold usually for gardening or breeding purposes. The contested foodstuffs for animals are nourishment for animals and may include fodder.

The opponent’s goods in Classes 29 and 30 are mainly processed foodstuffs for human consumption.

The remaining contested goods in Class 31 and the opponent’s goods in Classes 29 and 30 have different natures, purposes and methods of use. They do not have the same suppliers or producers and they do not target the same relevant public. They are not complementary to or in competition with each other. Furthermore, they are not usually sold through the same distribution channels and cannot be found on the same shelves, or in the same sections or departments, of supermarkets or groceries. Therefore, they are dissimilar.

Contested goods 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. The same principle applies to the wholesale services.

Therefore, the contested wholesaling and/or retailing of 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 fish, are similar to a low degree to the opponent’s meat, fish, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats; preserves of the aforesaid goods.

However, the contested wholesaling and/or retailing of agricultural, horticultural and forestry products, raw and unprocessed grains and seeds, fresh fruits and vegetables, natural plants and flowers, live animals, foodstuffs for animals, malt and all the opponent’s goods are dissimilar. Apart from being different in nature, since 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, goods and services have different methods of use and are neither in competition nor complementary.

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 either similar to a low degree or dissimilar.

As regards the contested advertising; business management; business administration; office functions, the Opposition Division deems that they are dissimilar to all the opponent’s goods, which comprise food and drinks in Classes 29 and 30. The conflicting goods and services have different natures and intended purposes. They have different distribution channels, target different publics (the general public for the opponent’s goods and professionals for the contested services) and are usually rendered by different undertakings. These goods and services are neither complementary nor in competition.

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 and services found to be identical or similar to various degrees are directed mainly at the public at large but also at business customers with specific professional knowledge or expertise (i.e. wholesaling and/or retailing of the particular goods in Class 29). The degree of attention is considered to vary from low, for cheap goods for daily consumption, to average.

3. The signs

CHANCERELLE	Chancerelle Reres
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 element that the signs have in common, namely ‘CHANCERELLE’, is a very unusual French surname that originates from the west of Brittany. However, the word will not be perceived as a surname or convey any meaning for consumers in certain territories, such as Italy and Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for instance, the Italian- and Spanish-speaking parts of the public, for which this element is meaningless.

Both signs are word marks. In the case of word marks, it is the word as such that is protected, regardless of the way in which it is depicted. Therefore, the fact that the earlier mark is in title case letters and the contested sign is in upper case letters is of no relevance for the purposes of the comparison of the signs.

As seen above, the element ‘CHANCERELLE’, included in both signs, has no meaning for the relevant public and is, therefore, distinctive. The element ‘RERES’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The signs have no element that can be considered visually dominant.

Visually and aurally, the signs coincide in the sequence of letters and sound of the distinctive element ‘CHANCERELLE’, which forms the sole component of the earlier mark and the first word of the contested sign. However, they differ in the additional word ‘RERES’ of the contested sign, which is also distinctive.

Furthermore, the fact that the coinciding element forms the whole of the first part of the contested sign has a strong influence, as generally it is the first part of a sign that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. 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 (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public under consideration. 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 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.

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).

Such global assessment of 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).

The goods are partly identical, partly similar (to various degrees) and partly dissimilar. They target the public at large and business customers, and the degree of attention is considered to vary from low to average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to a high degree because the earlier mark, ‘CHANCERELLE’, constitutes in its entirety the first element of the contested sign, ‘CHANCERELLE RERES’, and they differ in the additional element, ‘RERES’, in the contested sign. As explained above, the fact that the similarity lies in the first part of the contested sign is relevant, as consumers generally tend to focus on the first element of a sign when they encounter a trade mark. Moreover, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

It must be stressed that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the goods and services that are identical or similar to varying degrees come from the same undertaking or at least economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Taking the aforesaid into account, and in particular the interdependence principle, it is considered that the high degree of overall similarity between the signs outweighs the lesser degree of similarity between the conflicting goods and services (as in the present case), so that the relevant public might be led to believe that the goods that are similar to a low degree come from the same undertaking or economically linked undertakings, when paying either a low or average degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 sign must be rejected for the goods and services found to be identical or similar (to a various degrees) to those of the earlier trade mark.

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 directed at these goods and services cannot be successful.

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

• International trade mark registration No 598 795 for the word mark ‘CHANCERELLE’ designating the Benelux countries, Germany, Spain, Italy and Portugal.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, 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.

The Opposition Division will now examine, in respect of the remaining goods and services, the remaining rights and ground invoked by the opponent.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The opponent claimed Article 8(4) EUTMR in respect of the following earlier signs used in the course of trade:

1. company name ‘CHANCERELLE’ used in France for funds management;

2. company name ‘CONSERVERIE CHANCERELLE’ used in France for processing and preserving of fish, crustaceans and molluscs;

3. trade name ‘MAISON CHANCERELLE’ used in France for processing and preserving of fish, crustaceans and molluscs; manufacturing and selling of prepared meals containing seafood.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade signs invoked by the opponent, namely the trade company names ‘CHANCERELLE’, ‘CONSERVERIE CHANCERELLE’ and the trade name ‘MAISON CHANCERELLE’. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR.

In its observations of 06/01/2017, the opponent referred to Article L 711-4(b) and (c) of the French Intellectual Property Code, according to which:

2. ‘Protection of a company name is acquired by competition of founding documents of the company. Its scope of protection is in the area of effective activities and it gives the right to its proprietor to prohibit use of a subsequent trade mark when there is a risk of confusion in the mind of the public’;
3. ‘Protection of a trading name is acquired when the name is known in all the territory. Its scope of protection is in the area of effective activities and it gives the right to its proprietor to prohibit use of a subsequent trade mark when there is a risk of confusion in the mind of the public’.

However, the opponent provided the content of the legal provision only in the language of the proceedings and not in the original language, namely French. A mere translation of the applicable law does not in itself constitute proof of the national applicable law and cannot be substituted for the original; therefore, it follows from Rule 19(2)(d) EUTMIR, which requires evidence of the acquisition, continued existence and scope of protection of the earlier right to be submitted, that a translation into English of Article L 711-4 of the French Intellectual Property Code, as provided in the opponent’s submissions of 06/01/2017, is not sufficient to prove the law invoked.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Andrea VALISA

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.