OPPOSITION DIVISION
OPPOSITION No B 2 825 571
Leongri, S.L., C/ J. Guttemberg, 10. Nave 3. Poligono Ind. San Isidro, 38109 El
Rosario-San Isidro, Spain (opponent), represented by Clarke, Modet y Cía. S.L.,
Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional
representative)
a g a i n s t
Yunnan Halo-Diamond Technology Co. Ltd., No. 204, Attached Bldg., Student
Apartment Building 14, Student Activity Center Of Pioneer Park, Southwest Forestry
University, Panlong District, Kunming, Yunnan, People’s Republic of China
(applicant), represented by Metida Law Firm Zaboliene and Partners, Business
center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 825 571 is partially upheld, namely for the following
contested goods:
Class 30: Coffee; Coffee-based beverages; Flowers or leaves for use as tea
substitutes; Iced tea; Tea-based beverages; Tea.
2. European Union trade mark application No 15 849 474 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods (in Class 30) of European
Union trade mark application No 15 849 474 (figurative mark ). The
Decision on Opposition No B 2 825 571 page: 2 of 6
opposition is based on Spanish trade mark registration No M2803920 (figurative
mark ). 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.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Milk preparations.
Class 30: Preparations made from cereals, especially rice.
The contested goods are the following:
Class 30: Coffee; Coffee-based beverages; Flowers or leaves for use as tea
substitutes; Iced tea; Tea-based beverages; Honey; Salt; Essences for foodstuffs,
except etheric essences and essential oils; Tea; Bee glue.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘especially’, used in the opponent’s list of goods, 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
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The relevant factors relating to the comparison of the goods include, inter alia, the
nature and purpose of the goods, 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 goods milk preparations of the opponent in Class 29 contain a variety of goods
made from milk, including milk-dominated milk beverages such as cappuccino or
matcha-drinks. They are similar to the contested coffee; coffee-based beverages;
flowers or leaves for use as tea substitutes; iced tea; tea-based beverages; tea as
they can coincide in producer, end user and distribution channels. Furthermore they
are in competition with each other.
Decision on Opposition No B 2 825 571 page: 3 of 6
The remaining contested goods flowers or leaves for use as tea substitutes; honey;
salt; essences for foodstuffs, except etheric essences and essential oils; bee glue in
Class 30 are dissimilar to all the goods of the opponent in Classes 29 and 30. These
goods differ in their nature, come from different producers, are neither in competition,
nor complementary. The fact that the earlier goods and the contested goods are all
foodstuffs does not mean automatically that the goods are to be found similar,
contrary to the opinion of the opponent.
b) 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 similar are directed at the public at large.
The degree of attention is considered to be from below average to average as cheap
mass consumption goods are included in the comparison such as salt.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Spain.
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).
Contrary to what the opponent claims, the verbal element “Chicha” has a clear
meaning in Spanish (see Real Academia Española); it is a colloquial expression for
meat. With this meaning, this verbal element is fully distinctive for the relevant goods.
The representation of a cook and the verbal elements “El Venezolano” are weak for
the relevant public. The cook is weak because figurative elements such as cooks,
spoons, etc. are commonly used on alimentary goods and the expression “El
Venezolano” (“The Venezuelan” in Spanish) because it alludes to the origin of the
goods (or the cook). The representation of eight stars in the earlier mark is of low
distinctive character as these elements are commonly used in a laudatory sense on
marks and play a very minor role in the comparison of the signs.
Decision on Opposition No B 2 825 571 page: 4 of 6
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).
Visually, the signs coincide in ‘CHICHA’, albeit the representation of this verbal
element varies slightly in both signs. However, they differ in the rest of both signs,
especially the figurative elements and further verbal elements in the earlier mark,
which however are considered to be of low distinctive character.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛Chi-Cha’, present
identically in both signs. The pronunciation differs in the syllables ‛El-Ve-ne-zo-la-no’
of the earlier sign, which have no counterparts in the contested mark; these verbal
elements are considered to be weak.
Therefore, the signs are highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning as they both refer to meat, and the other elements are considered to be
weak, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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, despite the presence of some weak elements in the mark, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
The signs are aurally and conceptually highly similar and visually similar to an
average degree. The level of attention is considered to vary from below average to
average. The goods have been found to be similar and dissimilar.
Decision on Opposition No B 2 825 571 page: 5 of 6
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/services covered are from the same or
economically linked undertakings.
Account is taken of the fact that average 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).
Although the coincidences in the signs are less obvious than the differences, a
likelihood of confusion still exists, as the coinciding element plays an independent
distinctive role in both signs.
There is a likelihood of confusion because the differences between the signs are
confined to weak or secondary elements and aspects.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark 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).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s Spanish trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be similar to those 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.
The applicant has not filed any observations. Therefore its arguments cannot be
examined.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 825 571 page: 6 of 6
The Opposition Division
Claudia MARTINI Lars HELBERT Peter QUAY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.