OPPOSITION No B 2 590 670

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

FAL Healthy Beverages Pty Ltd, SE7.02, 247 Coward Street, Mascot NSW 2020, Australia (holder), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 590 670 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 229 946. The opposition is based on, inter alia, international trade mark registration No 1 011 239 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The holder requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely the international registrations designating the European Union No 1 011 239 and No 1 067 581.

In the present case the relevant date is 05/07/2015.

The earlier trade mark No 1 011 239 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 06/08/2010. Therefore, the request for proof of use for the first earlier mark is inadmissible.

Earlier trade mark No 1 067 581 is also an international registration designating the EU.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 12/01/2012. Therefore, the request for proof of use for the second earlier right is also inadmissible.

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 international trade mark registration No 1 011 239 designating the European Union.

1. The goods

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

Class 30: Confectionery and chocolate products, also in bar form.

The contested goods are the following:

Class 29: Edible oils and fats including (but not limited to) coconut oil, canola oil, corn oil, vegetable oil, maize oil, olive oil, palm oil, sunflower oil, butter oil; butter; coconut butter and all other butters included in this class.

Class 30: Ice cream; non-dairy ice cream; coconut milk-based ice cream.

Class 32: Beverages consisting of a blend of fruit and vegetable juices; bottled coconut water; coconut milk (beverages); fruit drinks and fruit juices; mineral and aerated waters and other non-alcoholic drinks; energy drinks; sports drinks (non-medicated); isotonic drinks (not for medical purposes); electrolyte replacement beverages for general and sports purposes; whey beverages; syrups and other preparations for making beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘also’, used in the opponent’s list of goods, indicates that the specific goods are only examples of the forms of chocolate and confectionery goods included in the category 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).

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 Classes 29 and 32

The contested goods in these classes are edible oils and beverages and preparations for making beverages. They have nothing in common with confectionery apart from being foodstuffs. Edible oils are used for cooking while beverages are to quench thirsty customers. The confectionery of the opponent has a completely different purpose. They are directed at different consumers and are available through different distribution channels. They also do not originate from the same companies. These goods are clearly dissimilar.

Contested goods in Class 30

The contested Ice cream; non-dairy ice cream; coconut milk-based ice cream are similar to the opponent’s Confectionery and chocolate products, also in bar form as some producers of confectionery goods also produce ice cream and there is no such a clear line between both goods due to the fact that some desserts can be a combination of both (Chocolate lava cake), a similarity cannot be excluded. They can originate from the same companies, are directed at the same consumers and are also in competition to each other as consumers may decide between an Apple strudel or vanilla ice cream or greedy gourmands may decide to just eat both together the same time.

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 are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

	COCO JOY
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘COCO’, alone or in combination with the term ‘NUT’, is commonly understood in part of the European Union as referring to the fruit of the coconut palm, either because the consumers understand English (‘coconut’) or because they have similar equivalent words in their languages, for example French (‘noix de coco’), Italian (‘noce di cocco’), Portuguese (‘coco’), German (‘Kokosnuss’) and Spanish (‘el coco’). Given this, in relation to the relevant goods, which can be made essentially of coconut or have a coconut flavour, these parts of the public may perceive it as a reference to the characteristics of the goods, and therefore this element is descriptive.

However, for other parts of the public, such as the Greek-, Hungarian-, Latvian-, and Polish-speaking parts, as the opponent also argues, these elements have no direct meaning and are distinctive. The Opposition Division will therefore first examine the opposition in relation to these parts of the public, which is the best scenario in which the opponent’s case can be considered.

The figurative mark contains, apart from the word ‘COCONUT’ in bold black title case letters with white borders, a small figurative element depicting two squares and two triangles, set within inner and outer frames. The small figurative element also contains the word ‘Classic’, written in title case letters, within the outer frame. All the elements are set against a grey rectangular background. The element ‘COCONUT’ is considered more dominant than the other elements because of its size.

The word ‘Classic’ will be understood as ‘very typical of its kind’ because of its widespread use and similar equivalents in the languages of the relevant public (‘klassikós’ in Greek, ‘klasszikus’ in Hungarian, ‘klasisks’ in Latvian and ‘klasyczny’ in Polish). Therefore, this element is considered weak.

Apart from the term ‘COCO’, analysed above, the contested sign contains another verbal element, namely ‘JOY’, which has no meaning for the part of the public for which ‘COCO’ is also meaningless. Therefore, in the contested sign there are no elements that are more distinctive than others.

Visually, the signs coincide in ‘COCO’. However, they differ in all the other elements, namely the figurative element of the earlier mark containing a device depicting two squares and two triangles, the weak element ‘Classic’, and the element ‘NUT’ and their special typeface, all set against a grey rectangular background, which have no counterparts in the contested sign. They also differ in the verbal elements ‘JOY’ of the contested sign.

It is therefore concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides only in the syllables ‘CO-CO’, present identically in both signs. However, it differs in the other elements that will be pronounced, namely ‘NUT’ of the earlier mark and ‘JOY’ of the contested sign. The dominance of the elements ‘COCONUT’ in the earlier sign leads to the assumption that the relevant public will most likely pay less attention to the figurative element ‘Classic’ of the earlier mark due to its size and weakness and therefore not pronounce it when referring to the mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘CLASSIC’ in the earlier mark, as explained above, the other sign has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, despite the presence of some non-distinctive elements for part of the public (with regard to the verbal element coconut) and for the entire relevant public (with regard to the verbal element classic) in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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)

In the present case, the conflicting goods are partially dissimilar and partially similar and the degree of attention paid by the relevant public is normal. The marks are visually and aurally similar to a low degree. Conceptually, the signs are not similar.

When considering the principle of interdependence, as established in the judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17, to counterbalance a low degree of similarity between the signs, the goods would need to be highly similar or identical, which is not the case in the conflicting goods. Further, this principle also takes into account other relevant factors such as the relevant consumers and their degree of attention. In this sense, the fact that the marks coincide in only four letters and differ in all other elements enables the marks to be clearly distinguished, even if the attention of the relevant public is considered to be average. Moreover, taking into account the lack of conceptual similarity, the Opposition Division considers that the differences between the signs are sufficient to exclude the possibility of consumers believing that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the Greek-, Hungarian-, Latvian- and Polish- speaking parts of the public.

This absence of a likelihood of confusion applies even more to the part of the public for which the elements ‘COCONUT’ and ‘COCO’ are non-distinctive. This is because, as a result of the non-distinctive character of those elements, that part of the public will perceive the signs as even less similar.

The opponent refers to previous decisions of the Office to support its arguments and in particular to the decision of the Board of Appeal of 02/11/2016, R 182/2016-2, COCONUT DREAMS / Classic Coconut (fig.). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the opponent is not relevant to the present proceedings, since it was found that the marks were visually and aurally similar to a normal degree as they both contained the same verbal element ‘coconut’ and the differences between the marks were not sufficient to eliminate the existence of a likelihood of confusion. This is not so in the present case, in which the marks have various differentiating elements that are not present in the signs in the previous case referred to by the opponent.

Therefore, the opposition must be rejected.

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

• International trade mark registration No 1 067 581 designating the European Union for the figurative mark  for goods in Class 30.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains an additional word ‘Minis’ which is not present in the contested trade mark. Moreover, they cover the same scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sigrid DICKMANNS

Lars HELBERT

Claudia MARTINI

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.