OPPOSITION No B 2 381 153
Feyce S.L., Avda. Peña de Francia, 44, 37187 Aldeatejada, (Salamanca), Spain (opponent), represented by García, Domínguez & Asociados, Plaza del Corrillo, 19, 3° – 2, 37002 Salamanca, Spain (professional representative)
a g a i n s t
Conapi Soc. Coop. Agricola, Via Idice 299, 40050 Monterenzio (BO), Italy (applicant), represented by Bugnion S.P.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 381 153 is partially upheld, namely for the following contested goods:
Class 5: Herbal teas.
Class 29: Preserved fruits; jellies, jams, compotes, food preserves.
Class 30: Honey, royal jelly, pollen, bee glue, candies (non-medicated -) with honey; chocolate-based and; bakery goods.
2. European Union trade mark application No 12 648 259 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 all the goods of European Union trade mark application No 12 648 259. The opposition is based on Spanish trade mark registration No 2 686 006, British trade mark registration No 2 486 820 and on international trade mark registration No 889 137 designating Greece and Portugal. 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.
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 Spanish trade mark registration No 2 686 006.
- The goods
The goods on which the opposition is based are the following:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sagu, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ice cream; honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
The contested goods are the following:
Class 5: Food supplements made with honey, bee glue, pollen; royal jelly dietary supplements; herb-based food supplements; herbal preparations in capsules, drops; oils; herbal teas.
Class 29: Preserved fruits; jellies, jams, compotes, food preserves.
Class 30: Honey, royal jelly, pollen, bee glue, candies (non-medicated -) with honey; chocolate-based and; bakery goods.
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 5
The contested food supplements made with honey, bee glue, pollen; royal jelly dietary supplements; herb-based food supplements; herbal preparations in capsules, drops; oils are various dietetic substances and food supplements adapted for medical use or prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is different from all the opponent’s goods in Class 30 which are non-medicated products or ingredients that target the broad public with no medical concerns. The foodstuff of the opponent consists of natural products, whereas the supplements and preparations of the applicant are synthetically created by pharmaceutical companies. Likewise, they do not share the same distribution channels and they are neither complementary nor in competition to each other. Therefore, they are dissimilar.
The contested herbal teas in Class 5 are similar to the opponent’s tea in Class 30 as they have the same nature. They can coincide in end user, distribution channels and method of use.
Contested goods in Class 29
The contested preserved fruits; compotes, food preserves are highly similar to the opponent’s sauces (condiments) as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.
The contested jellies, jams are similar to the opponent’s honey as they can coincide in end user, distribution channels and method of use. Furthermore they are in competition.
Contested goods in Class 30
Honey is identically contained in both lists of goods.
The contested royal jelly, pollen, bee glue are similar to the opponent’s honey as they can coincide in producer, end user and distribution channels.
The contested candies (non-medicated -) with honey are included in the broad category of, or overlap with, the opponent’s confectionery. Therefore, they are identical.
The contested chocolate overlap with the opponent’s cocoa Therefore, they are identical.
The contested bakery goods are included in the broad category of, or overlap with, the opponent’s bread, pastry. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
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BONAPI
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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).
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 earlier mark is a word mark consisting of the word ‘BONAPI’, which has no meaning for the relevant public and is considered distinctive for the relevant goods.
The contested sign is a figurative mark consisting of the verbal element ‘CONAPI’ written in standard upper case letters, with no particular meaning for the relevant public. Therefore, the element is distinctive for the goods in question. Above the word ‘CONAPI’, there is the figurative element resembling the beehive and the bee. This element is considered weak in relation to all of the contested goods, as it alludes to the ingredient that they all may contain or to the products themselves.
The contested sign has no elements that could be considered clearly more dominant than other elements. However, 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 and aurally, the signs coincide in the string of letters ‘*ONAPI’ and in their respective sounds. Therefore, the significant part of the earlier mark is (with exception to only one letter) included in the contested sign. As the applicant argues the marks differ in the first letters of their verbal elements, ‘B’ and ‘C’, where the public tends to focus on, and in the pronunciation of these letters. In that regard, the Opposition Division notes that, while, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, the whole earlier mark and the verbal part of the contested sign coincide almost totally. They differ only in one out of six letters. Moreover, the additional weak figurative element of the contested sign has less impact on the comparison of the signs and it will not be pronounced.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, both signs are composed of words with no clear or unambiguous meaning for the public in the relevant territory. The figurative element of the contested sign will be associated with the concept of the beehive and the bee.
Since only one of the signs will evoke a concept, the marks are not conceptually similar. However, this element has less impact on the comparison 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.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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.
In the present case, the contested goods are partly identical to the opponent’s goods, partly similar (to various degrees) and partly dissimilar. They target the public at large and the degree of attention of the relevant public is average. The signs in dispute are visually and aurally similar to an average degree and conceptually not similar.
The differences between the signs are very limited as they are confined to a single letter of their verbal elements and the additional weak figurative element of the contested sign, which has, however, less impact on the overall assessment of the marks. Therefore, it is highly conceivable that the relevant consumer will perceive that the identical and similar goods marked with the signs in question come from the same undertaking or from economically linked undertakings.
Moreover, although the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect, 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).
Therefore, the slight differences between the marks are clearly insufficient to outweigh the similarity between them and they will most probably go unnoticed by the relevant public.
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 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.
The opponent has also based its opposition on the following earlier trade marks:
British trade mark registration No 2 486 820 for the word mark BONAPI and international trade mark registration No 889 137 for the word mark BONAPI designating Greece and Portugal.
Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, 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. 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
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Steve |
Begoña |
Pedro |
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.