OPPOSITION No B 2 756 453

Confiserie Roodthooft, naamloze vennootschap, Lange Leemstraat 374-376, 2018 Antwerpen, Belgium (opponent), represented by Bureau m.f.j. bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Zakład Produkcyjno-Handlowy "ARGO" Sp. z o.o., ul.Wiejska 16, 37-100 Łańcut, Poland (applicant), represented by Biuro patentowe "iniciator" sp. z o.o., ul. Żółkiewskiego 7B/1, 35-203 Rzeszów, Poland (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 453 is partially upheld, namely for the following contested goods and services:

Class 30:        Gum sweets; Chocolate candies; Candy with caramel; Chocolates; Chocolate candy with fillings; Lollipops; Candy.

Class 35:        Retail services in relation to confectionery; Wholesale services in relation to confectionery;

2.        European Union trade mark application No 14 750 343 is rejected for all the above goods and services. It may proceed for the remaining 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 14 750 343. The opposition is based on Benelux trade mark registration No 768 446. The opponent invoked Article 8(1)(a) and (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 and services

The goods on which the opposition is based are the following:

Class 30:        Confectionery; confectionery articles; chocolate; chocolate products.

The contested goods and services are the following:

Class 30:        Gum sweets; Chocolate candies; Candy with caramel; Chocolates; Chocolate candy with fillings; Lollipops; Candy.

Class 35:        Sales promotion; On-line advertising on a computer network; Retail services in relation to confectionery; Wholesale services in relation to confectionery; Advertising; Presentation of goods on communication media, for retail purposes.  

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

The contested Gum sweets; Chocolate candies; Candy with caramel; Chocolates; Chocolate candy with fillings; Lollipops; Candy are all included in the opponent´s confectionery. They are identical.

Contested services in Class 35

The contested sales promotion services and on-line advertising on a computer network services and advertising services as well as the presentation of goods on communication media, for retail purposes all consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. They are fundamentally dissimilar in nature and purpose to the opponent´s confectionery goods which are processed foodstuffs for general consumption. They do not share providers or distribution channels, and are not complementary or in competition. The fact that manufactured products such as sweets and chocolate products may appear in advertisements is insufficient for finding similarity. Therefore, the advertising and promotional services are dissimilar to the goods specified.

Similarity between retail or wholesale 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 sales services and the specific goods covered by the other mark are identical. This condition is fulfilled in the present case since the goods at issue are identical. The contested 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 retail and wholesale services in relation to confectionery are similar to a low degree to the opponent’s gum sweets, chocolate candies, candy with caramel, chocolates, chocolate candy with fillings, lollipops and candy, since the latter are all confectionery.

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 a low degree are directed at the public at large.

The degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 verbal element ‘CHOCOMINT’ of the earlier mark is made up of one word which combines a truncated form of the basic English word “chocolate” (a sweet hard food made from cocoa beans https://www.collinsdictionary.com/dictionary/english/chocolate) with the basic English word “mint” (a herb with fresh-tasting leaves. https://www.collinsdictionary.com/dictionary/english/mint). Consumers in the relevant territory will understand the semantic elements and perceive “chocomint” as either describing or alluding to a combination of flavours. Therefore, it either lacks distinctive character or its distinctive character is weak. It is written figuratively in a special lettering and is further contained within an elliptical device which features lines and segments. The combination of the lettering and the background device will be seen as decorative.

The contested sign is composed of the word “choco”, which will be perceived as chocolate, and the word “mint”, depicted figuratively in a special lettering. The same meaning will be perceived as with the earlier mark. Therefore, it either lacks distinctive character or it is of limited distinctive character.

It should be noted in this regard that 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 are similar to the extent that they coincide in the elements “choco” and “mint”, conjoined in the earlier sign and depicted as two word elements in the contested sign. These elements have weak distinctive character, if any. However, they differ in their respective stylisations – bold, dark and linear like a stamp mark in the earlier sign, as opposed to curlicued, white (outlined in black) and set at a jaunty angle in the contested sign. Furthermore, the elliptical device of the earlier mark and its features have no counterpart in the contested sign. Despite the differences in presentation, the signs share the same verbal element. Despite its non-distinctive or weak character, it will be the element which is more likely to be retained visually, while the graphic elements will be perceived as decorative. The signs are therefore similar to a high degree. (15/12/2016, T-212/15, Gourmet (fig.) / Gourmet (fig.) et al., EU:T:2016:746, § 59).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables (CHO-CO-MINT), present identically in both signs. The figurative elements will not be pronounced. Therefore, the signs are aurally identical.

Conceptually, the signs coincide in their respective verbal elements which are weakly distinctive, if at all, but of primary importance in the signs. Reference is made to the previous assertions concerning the semantic content conveyed by these elements, which is identical. The additional graphic elements will not be perceived by the relevant public as conveying a particular meaning and will be perceived as purely decorative. The signs are conceptually identical.

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. The mark as a whole is presumed to have at least a minimum degree of distinctive character in respect of confectionery products. (See the judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41).

 

5. 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).

The goods are identical. Some of the services are similar to a low degree, some are dissimilar.

In its observations, the applicant submits evidence of Benelux registrations that include the elements “choco” or “mint”, or both. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the elements “choco” or “mint”. Under these circumstances, the applicant’s claims must be set aside.

Notwithstanding the limited (if any) distinctive character of the semantic elements in common, consumers generally refer to marks by their word elements.

There is a likelihood of confusion on the part of the public, in respect of the goods found to be identical and even the services found to be similar to a low degree, since the signs are aurally and conceptually identical and visually similar to a high degree, given the relative ease of recollection of word elements.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree, to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services, because the services are obviously not identical.

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

Plamen IVANOV

Keeva DOHERTY

Natascha GALPERIN

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.