OPPOSITION No B 2 669 136

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Chovi S.L., Ctra. Alfarp, Km. 1., 46450 Benifaio, Valencia, Spain (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 669 136 is partially upheld, namely for the following contested goods and services:

Class 29:         Milk and milk products.

Class 30:         Coffee; Tea; Artificial coffee.

Class 32:         Non-alcoholic beverages; Syrups and other preparations for making beverages; syrups for beverages.

Class 35:         Wholesaling and retailing in shops and via the internet of foodstuffs.

2.        European Union trade mark application No 14 715 353 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 14 715 353. The opposition is based on German trade mark registration No 1 052 077. 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 and services

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

Class 30: Cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages.

The contested goods and services are, after a limitation, the following:

Class 29: Meat; Fish; Poultry; Game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies; Marmalade; Fruit, stewed; Eggs; Milk and milk products; Edible oils and fats; Conserves; Frozen foodstuffs and prepared dishes based on meat and chicken; Pickles.

Class 30: Coffee; Tea; Sugar; Rice; Tapioca; Sago; Artificial coffee; Flour and preparations made from cereals; Bread; Pastry and confectionery; Edible ices; Honey; Syrups and treacles; Yeast; Baking powder; Salt; Mustard; Vinegar; Herb-sauces; Spices; Ice; Prepared dishes based on rice and pasta.

Class 31: Agricultural, horticultural and forestry products and grains; Live animals; Fresh fruit and vegetables, fresh fruits; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt.

Class 32: Beer; Mineral waters; Aerated water; Non-alcoholic beverages; Fruit drinks, fruit juices; Syrups, cordials and other preparations for making beverages; Juices; Syrups for beverages.

Class 35: Providing human resources administration services for other businesses; Commercial intermediation; Import and export and wholesaling and retailing in shops and via the internet of beverages and foodstuffs; Business management.

Class 39: Transport; Packaging, storage and warehousing of goods.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category of cocoa powder 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

As regards the contested milk and milk products, the Opposition Division observes that the contested milk serves the same purpose as the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages in that milk is a kind of drink and cocoa powder is intended to be mixed with milk or water to prepare another drink. Moreover, they can be in competition or complementary to each other. On the other hand, milk products can encompass a large range of goods, such as a mixture of cocoa and milk. Nowadays, these kinds of products are common in the marketplace and are in competition with both milk and cocoa powder. Indeed such products precisely offer consumers a ready-made beverage and, thus, an opportunity to avoid mixing the ingredients themselves. Therefore, these products could be in competition with the opponent’s cocoa powder. Moreover, it is not unusual for cocoa powder producers to offer such products, so they may have the same producers. Finally, they may also have the same end users and distribution channels. It follows from the above that the similarity between these two ranges of goods cannot be denied. These goods are similar.

By contrast, the contested meat; fish; poultry; game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; marmalade; fruit, stewed; eggs; edible oils and fats; conserves; frozen foodstuffs and prepared dishes based on meat and chicken; pickles are dissimilar to the opponent’s goods. In particular, although these contested goods and the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages all fall into the broad category of foodstuffs, the fact remains that their specific natures and purposes are different. Moreover, they are not distributed through the same channels and they are not found on the same or nearby shelves of general outlets either. Their producers and methods of use also differ and they are neither in competition nor complementary.

Contested goods in Class 30

The contested coffee; tea; artificial coffee are similar to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages. Both sets of goods are intended to be mixed with water and/or milk to make a beverage. To this extent, these goods have the same method of use. In addition, they can have the same end users and distribution channels. Furthermore, since they are interchangeable, they are in competition.

By contrast, the contested sugar; rice; tapioca; sago; flour and preparations made from cereals; bread; pastry and confectionery; edible ices; honey; syrups and treacles; yeast; baking powder; salt; mustard; vinegar; herb-sauces; spices; ice; prepared dishes based on rice and pasta are dissimilar to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages covered by the earlier mark. In particular, although these contested goods and the opponent’s goods all fall into the broad category of foodstuffs, the fact remains that they have different specific natures and purposes. Moreover, they are not distributed through the same channels and they are not found on the same or nearby shelves of general outlets either. Their producers and methods of use also differ and they are neither in competition with each other nor complementary to each other.

Contested goods in Class 31

The contested agricultural, horticultural and forestry products and grains; live animals; fresh fruit and vegetables, fresh fruits; seeds; natural plants and flowers; foodstuffs for animals; malt have nothing in common with the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages. These goods have different natures and purposes. Moreover, they are not found on the same or even nearby shelves of general outlets and they usually have different manufacturers. Finally, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages are similar to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages, as the former is a broad category of alcohol-free drinks and the latter is intended to be mixed with water or milk to make an alcohol-free drink. To this extent, they are also likely to have the same end users, distribution channels and producers. Furthermore, they could also be complementary or in competition with each other.

The contested syrups and other preparations for making beverages; syrups for beverages are similar to a low degree to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages, as they can have the same end users, distribution channels and method of use.

By contrast, the contested beer; mineral waters; aerated water; fruit drinks, fruit juices; cordials; juices are dissimilar to cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages, since they have different natures and purposes. Moreover, they are not distributed through the same channels and they are not found on the same or nearby shelves of general outlets either. Their respective producers and methods of use also differ, and they are neither in competition with each other nor complementary to each other.

Contested services in Class 35

The contested services of retailing in shops and via the internet of foodstuffs are similar to a low degree to the opponent’s cocoa powder in particular fast dissolvable powder, for making non-alcoholic beverages. According to case-law, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. In the present case, there is no doubt that the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages qualifies as foodstuff(s), to which the contested services mentioned above relate. Therefore, a low degree of similarity exists between the contested retailing in shops and via the internet of foodstuffs and the opponent’s cocoa powder in particular fast dissolvable powder, for making non-alcoholic beverages.

Moreover, since the principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as the contested wholesaling services of foodstuffs, the same holds true for these contested services: they are similar to a low degree to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages.

By contrast, the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages, although intended for making a beverage, cannot be considered identical to beverages, to which the contested services also relate. Therefore, the abovementioned condition of identity between the goods to which the retail services relate and the specific goods covered by the other mark is not fulfilled with regard to these goods. As a result, the contested wholesaling and retailing in shops and via the internet of beverages are dissimilar to the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages.

Finally, the contested import and export of beverages and foodstuffs; providing human resources administration services for other businesses; commercial intermediation; business management and the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages have different natures, purposes, end users and usual providers and they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 39

The contested transport; packaging, storage and warehousing of goods obviously have nothing in common with the opponent’s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages. They differ in their natures, purposes and distribution channels. Moreover, they target completely different users and are neither in competition nor complementary. Therefore, they are dissimilar.

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 similar to various degrees are directed at the public at large. They consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may thus vary from low to average (see, to this effect, 12/04/2016, T-361/15, Choice chocolate & ice cream, EU:T:2016:214, § 17-18; 26/02/2016, T-210/14, Gummi Bear-Rings, EU:T:2016:105, § 28; 23/01/2014, T-221/12, SUN FRESH, EU:T:2014:25, § 64, confirmed by order of 03/06/2015, C-142/14 P, SUN FRESH, EU:C:2015:371).

On the other hand, the services in question are directed at both general consumers and professionals. Therefore, the degree of attention will vary between average and high depending on the nature, price and sophistication of the services (see, by analogy, 21/03/2013, T-353/11, eventer EVENT MANAGEMENT SYSTEMS, EU:T:2013:147, § 37).

3. The signs

Schovit	CHOVI
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 marks under comparison are both word marks. The earlier mark consists of the word ‘Schovit’ whereas the contested sign consists of the word ‘CHOVI’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The applicant claims that the earlier mark is weak, as it will be broken down into the elements ‘Scho’ and ‘vit’, which could be perceived as abbreviations of ‘Schokolade’ (chocolate) and ‘Vitaminen’ (vitamins) respectively. However, ‘Scho’ and ‘vit’ are not common abbreviations of these words in German.

Therefore, and bearing in mind that trade marks should be assessed as a whole, it would be artificial to consider that consumers would dissect the earlier mark and, consequently, perceive any meaning in it. Neither of these words has any meaning in the perception of the public in the relevant territory. Therefore, they are distinctive.

Visually, the signs coincide in the sequence of letters ‘*chovi*’, which constitutes the whole of the contested sign. They differ in the additional letters ‘S’ and ‘t’ of the earlier mark, placed respectively at the beginning and end of the sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the parties agree that the earlier mark will be pronounced /ʃo:vɪt/. However, they disagree on the way in which the contested sign would be pronounced by the German public.

As rightly claimed by the applicant, according to German pronunciation rules, the contested sign should be pronounced /ko:vi/. On the other hand, bearing in mind that the contested sign has no meaning in German and considering that the letter combination ‘ch’ is not common at the beginning of a word in German, it cannot be ruled out that a part of the relevant public will pronounce the contested sign’s beginning as if it were a foreign word and, consequently, in the same way as it pronounces the beginning of the earlier mark.

In one case, the marks have the same beginning, whereas in the other case they do not.

Considering that the last letter, ‘t’, of the earlier mark will not be stressed, and bearing in mind that consumers generally pay more attention to the beginning of a sign than to its ending, for part of the public the marks are aurally highly similar whereas for the remaining part they are similar only to an average degree.

Conceptually, as explained above, 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

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).

In the present case, the marks are visually similar to an average degree. Moreover, they are aurally similar to a high degree, at least for a part of the relevant public.

The goods found to be similar are fairly ordinary consumer products that are commonly purchased in supermarkets and in the purchase of which the relevant public will display a rather low degree of attention. Therefore, it cannot be excluded that a part of the German public might confuse the signs based on its imperfect recollection of them.

The signs have the sequence of letters ‘chovi’ in common and the dissimilarities between the signs are not sufficient to offset the similarities between them.

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 German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to those of the earlier trade mark.

This includes the goods and services that are similar to a low degree. In accordance with the interdependence principle, it is considered that the degree of similarity between the signs is sufficient to counterbalance the low degree of similarity between those goods and services.

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)(b) EUTMR, the opposition based on this article and directed at these goods and services 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 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.