OPPOSITION No B 2 726 993

Raps GmbH & Co KG, Adalbert-Raps-Str. 1, 95326 Kulmbach, Germany (opponent), represented by Hofstetter, Schurack & Partner, Patent- und Rechtsanwaltkanzlei, PartG mbB, Balanstrasse 57, 81541 München, Germany (professional representative)

a g a i n s t

Mr Hash Piotr Terlikowski, Ul. Opolska 88, Walidrogi, 46-050 Tarnów Opolski (applicant), represented by Olga Welcer-Hrycaj, Ul. Prószkowska 9a/1, 45-710 Opole, Poland (professional representative).

On 16/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 726 993 is partially upheld, namely for the following contested goods:

Class 30:        Condiments; alimentary seasonings; seasonings; dry seasonings; sauces [condiments]; chemical seasonings [cooking]; garden herbs, preserved [seasonings]; vegetable-based seasonings for pasta; savory sauces used as condiments; salts, seasonings, flavourings and condiments; food condiment consisting primarily of ketchup and salsa; sauces; meat gravies; fruit coulis [sauces]; sauces for pizzas.

2.        European Union trade mark application No 15 358 071 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 and services of European Union trade mark application No 15 358 071. The opposition is based on European Union trade mark registration No 3 336 948. 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 1:        Chemical additives for the production and/or processing of foodstuffs; preparations made from these chemical and/or natural additives for the production and/or processing of foodstuffs; preparations made from these preparations with or without spices and/or salt for industrial purposes; spices and/or salt and products manufactured therefrom for industrial purposes; enzymes and living microorganisms and enzymes thereof for industrial purposes and/or foodstuffs.

Class 30:        Natural additives for the production and/or processing of foodstuffs; preparations made from these natural and/or chemical additives for the production and/or processing of foodstuffs; products made from these preparations with or without spice(s) and/or salt; spices and/or salt and products manufactured therefrom for foodstuffs.

The contested goods are the following:

Class 29:        Processed meat products; smoked meats; processed fish; salted fish; prepared meals made from poultry [poultry predominating]; ready cooked meals consisting wholly or substantially wholly of poultry; processed seafood; salted and fermented seafood (jeotgal); prepared salads.

Class 30:        Condiments; alimentary seasonings; seasonings; dry seasonings; sauces [condiments]; chemical seasonings [cooking]; garden herbs, preserved [seasonings]; vegetable-based seasonings for pasta; savory sauces used as condiments; salts, seasonings, flavourings and condiments; food condiment consisting primarily of ketchup and salsa; sauces; meat gravies; fruit coulis [sauces]; sauces for pizzas.

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 processed meat products; smoked meats; processed fish; salted fish; prepared meals made from poultry [poultry predominating]; ready cooked meals consisting wholly or substantially wholly of poultry; processed seafood; salted and fermented seafood (jeotgal); prepared salads are foodstuffs, namely processed meat, fish, seafood and vegetable products. The only point in common with the opponent’s goods in Class 1 and 30, which are chemical and natural additives and preparations used for the production, preparation or savouring of comestibles, is the fact that they are used for the production or seasoning of foodstuffs. However, this is not sufficient to establish any similarity between the goods. Contrary to the opponent’s opinion, they usually have different producers. The fact that both may be sold in the same place, for example supermarkets or grocery stores, cannot alter this finding. They are neither complementary nor in competition. Therefore, these goods are dissimilar.

Contested goods in Class 30

The contested salts in Class 30 include, as a broader category, the opponent’s salt for foodstuffs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested alimentary seasonings; seasonings; dry seasonings; chemical seasonings [cooking]; garden herbs, preserved [seasonings]; vegetable-based seasonings for pasta; seasonings and flavourings are related to the opponent’s salt for foodstuffs in Class 30, as they have the same purpose. Moreover, they can have the same producers, relevant public and distribution channels. For all these reasons, they are considered similar to a high degree.

The contested condiments (listed twice); sauces [condiments]; savory sauces used as condiments; food condiment consisting primarily of ketchup and salsa; sauces; meat gravies; fruit coulis [sauces]; sauces for pizzas are related to the opponent’s salt for foodstuffs in Class 30, as they can have the same producers, end consumers and distribution channels. Therefore, they are similar.

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 (to various degrees), are goods for everyday consumption, which are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Chilly Willy
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 marks under comparison are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

The earlier mark is the word mark ‘Chilly Willy’, which is protected as such and not in its written form. Therefore, the fact that is written in title case letters is irrelevant. The contested sign is a figurative mark composed of the words ‘Chilli Mili’ in red slightly stylised title case letters.

The elements ‘Chilly/i’ (included in both signs, although in the contested sign it is written with the letter ‘i’) and ‘Willy’ and ‘Mili’, in the earlier mark and the contested sign, respectively, have no meaning for the relevant public and are, therefore, distinctive.

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

Visually, the signs coincide in the letters ‘CHILL* *IL*’. The lengths and structures of the signs are also extremely similar, as they are composed of two words and almost the same number of letters (11 versus 10), seven of which coincide and are in identical positions. However, they differ in the graphical depiction of the contested sign (the colours and typeface of the letters, although, as explained above, the letters are slightly stylised), the last letter of the first word (‘Y’ versus ‘I’), the first letter of the second word (‘W’ versus ‘M’) and the additional letter ‘L’, present only in the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. 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. This principle is applicable to the present case and, as the first words of the signs, ‘CHILLY’ and ‘CHILLI’, have five out of six letters in common and differ only in the last letter, this similarity has a stronger impact on the overall impression created by the marks.

Consequently, the abovementioned differences are insufficient to counteract the elements that the signs have in common; therefore, they are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark is pronounced ‘CHI/LI/WI/LI’ and the contested sign is pronounced ‘CHI/LI/MI/LI’.

The pronunciation of the signs coincides in the sound of the letters ‛CHILY/I *ILI’, as the letter ‘Y’ in the earlier mark and the letter ‘I’ in the contested sign will be pronounced as ‘I’ in both cases. The pronunciation differs only in the sound of the first letter of the second word (‘W’ versus ‘M’). With respect to the rhythms of the signs, both are pronounced in four syllables as two separate words.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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).

The goods covered by the trade marks in dispute are partly identical, partly similar (to various degrees) and partly dissimilar. They target the public at large and the degree of attention is 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 similar to at least an average degree and aurally similar to a high degree on account of the letters that the signs have in common, ‘CHILL* *IL*’, and their similar overall structures. Due to the position of the differing letters (towards the ends of the signs) and the fact that they are the letters ‘Y’ versus ‘I’ and the additional letter ‘L’ (in the middle of the second word of the contested sign), which are pronounced identically, these differences are more likely to go unnoticed by consumers, who 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). Moreover, the fact that the contested sign is depicted in a red slightly stylised typeface is not relevant; in addition to not being visually eye-catching or a highly stylised sign, the earlier mark is a word mark, which is protected in all typefaces.

Furthermore, the signs under comparison will not be associated with any meaning and will be perceived as fanciful words by the part of the relevant public under consideration. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-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 found to be identical or similar (to various degrees) 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.

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

María Clara IBÁÑEZ FIORILLO

Birgit Holst 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.