OPPOSITION No B 2 686 098

Norbert von Allwörden, Haus am See, 23909 Farchau, Germany (opponent), represented by Esche Schümann Commichau Rechtsanwälte Wirtschaftsprüfer Steuerberater Partnerschaftsgesellschaft mbB, Am Sandtorkai 44, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Pasticceria Cucchi S.r.l., Corso Genova 1, 20123 Milan, Italy (applicant), represented by Coloberti & Luppi S.r.l., Via E. de Amicis 25, 20123 Milan, Italy (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1. The decision of 31/05//2017 on opposition number No B 2 686 098 is revoked.

2. Opposition No B 2 686 098 is partially upheld, namely for the following contested goods:

Class 30:         Foods with a cocoa base; foodstuffs made from cereals; foodstuffs made of a sweetener for sweetening desserts; farinaceous foods; foodstuffs made from dough; foodstuffs made from maize; foodstuffs made of rice; breakfast cereals; macaroons [pastry]; milk chocolate bars; filled chocolate bars; muesli bars; chocolate coated nougat bars; candy bars; pastry shells; stick liquorice [confectionery]; rock [confectionery]; cocoa-based beverages; coffee-based beverages; ice cream drinks; tea-based beverages; sponge cake; salted biscuits; doughnuts; sweetmeats [candy]; brioches; buns; brownies; puddings; rice dumplings; coffee bags; tea bags; cocoa; cocoa powder; coffee; decaffeinated coffee; instant coffee; cappuccino; caramels [candy]; acid drops [confectionery]; chocolate candies; peppermint candy; sal ammoniac liquorice sweets (non-medicated -); chocolate candy with fillings; boiled sweets; gum sweets; toffee; filled sweetmeats; caramel; cheesecakes; waffles; wafers; hot chocolate; chocolates; chocolate; fruit coulis [sauces]; chocolate shells; chocolate for toppings; confectionery; pralines; cones for ice cream; custard; chocolate creams; bavarian creams; crème brûlées; crème caramel; spreads made from chocolate and nuts; chocolate spreads; spreads consisting of hazelnut paste; pancakes; crystal sugar pieces [confectionery]; peanut brittle; croissants; apple tarts; croutons; chocolate decorations for Christmas trees; candy decorations for cakes; ice confectionery; chilled desserts; ice cream desserts; tea cakes; ice-cream cakes; sweetmeats; espresso; petit-beurre biscuits; chocolate coated fruits; hardtack [biscuits]; ice cream; jelly beans; fruit jellies [confectionery]; cake doughs; herbal infusions; liquorice [confectionery]; madeleines; sugared almonds; almonds covered in chocolate; peppermint for confectionery; candy mints; meringues; honey; mixtures of coffee; tea mixtures; biscuit mixes; cake mixes; mousse confections; muffins; chocolate-coated nuts; chocolate coated macadamia nuts; bread rolls; filled bread rolls; panettone; sour dough; puff pastry; shortcrust pastry; almond pastries; chocolate pastries; pastries containing fruit; pastries containing creams; pastries containing creams and fruit; petits fours [cakes]; pykelets; fruit drops [confectionery]; pavlovas made with hazelnuts; pizzas; cream puffs; quiches; sandwiches; sponge fingers [cakes]; canapes; truffles [confectionery]; chocolate bars; tea; tiramisu; toasted bread; nougat; tarts; salted tarts; mate [tea]; vanilla; dragees [non-medicated confectionery].

2.        European Union trade mark application No 15 032 139 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 15 032 139. The opposition is based on German trade mark registration No 302 011 030 305. The opponent invoked Article 8(1)(b) EUTMR.

REVOCATION OF DECISION OF 31/05//2017 – Article 80 EUTMR

On 06/06/2017, the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 31/05//2017, taken in opposition proceedings No B 2 686 098, due to the fact that a good in Class 30, namely cake frosting [icing] was included in the dictum as if it was to be rejected, whereas the comparison of the goods clearly explained that this good was found dissimilar to any of the opponent’s goods.

In accordance with Article 80 CTMR, the Office gave one month to the parties to submit any observations.

On 08/06/2017, the opponent submitted his observations claiming that there was no need to revoke the Opposition Division’s decision, since the goods at issue were found to be dissimilar. Nonetheless, under article 80 EUTMR, a decision may be revoked when it contains an obvious procedural error attributable to the Office, like in the present case.

Therefore, the decision taken on 31/05/2017 in the opposition B 2 686 098 is hereby revoked and replaced by the present decision in which the above mentioned good has been removed from the dictum.

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 29: Meat, fish, poultry, and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; convenience food or semi-finished products, small snacks, snacks, snack between meals and soups, mainly consisting of the aforementioned goods (included in class 29).

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, vinegar, sauces (condiments); spices; ice; convenience food or semi-finished products, small snacks, snacks, snack between meals, mainly consisting of the aforementioned goods (included in class 30).

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 30: Foods with a cocoa base; foodstuffs made from cereals; foodstuffs made of a sweetener for sweetening desserts; farinaceous foods; foodstuffs made from dough; foodstuffs made from maize; foodstuffs made of rice; breakfast cereals; macaroons [pastry]; flavourings for cakes; milk chocolate bars; filled chocolate bars; muesli bars; chocolate coated nougat bars; candy bars; pastry shells; stick liquorice [confectionery]; rock [confectionery]; cocoa-based beverages; coffee-based beverages; ice cream drinks; tea-based beverages; sponge cake; salted biscuits; doughnuts; sweetmeats [candy]; brioches; buns; brownies; puddings; rice dumplings; coffee bags; tea bags; cocoa; cocoa powder; coffee; decaffeinated coffee; instant coffee; cappuccino; caramels [candy]; acid drops [confectionery]; chocolate candies; peppermint candy; sal ammoniac liquorice sweets (non-medicated -); chocolate candy with fillings; boiled sweets; gum sweets; toffee; filled sweetmeats; caramel; cheesecakes; waffles; wafers; hot chocolate; chocolates; chocolate; fruit coulis [sauces]; chocolate shells; chocolate for toppings; confectionery; pralines; cones for ice cream; custard; chocolate creams; Bavarian creams; crème brûlées; crème caramel; spreads made from chocolate and nuts; chocolate spreads; spreads consisting of hazelnut paste; pancakes; crystal sugar pieces [confectionery]; peanut brittle; croissants; apple tarts; croutons; chocolate decorations for Christmas trees; candy decorations for cakes; ice confectionery; chilled desserts; ice cream desserts; tea cakes; ice-cream cakes; sweetmeats; espresso; petit-beurre biscuits; chocolate coated fruits; hardtack [biscuits]; ice cream; jelly beans; fruit jellies [confectionery]; cake frosting [icing]; cake doughs; herbal infusions; liquorice [confectionery]; madeleines; sugared almonds; almonds covered in chocolate; peppermint for confectionery; candy mints; meringues; honey; mixtures of coffee; tea mixtures; biscuit mixes; cake mixes; mousse confections; muffins; chocolate-coated nuts; chocolate coated macadamia nuts; bread rolls; filled bread rolls; panettone; sour dough; puff pastry; shortcrust pastry; almond pastries; chocolate pastries; pastries containing fruit; pastries containing creams; pastries containing creams and fruit; petits fours [cakes]; pykelets; fruit drops [confectionery]; pavlovas made with hazelnuts; pizzas; cream puffs; quiches; sandwiches; sponge fingers [cakes]; canapes; truffles [confectionery]; chocolate bars; tea; tiramisu; toasted bread; nougat; tarts; salted tarts; mate [tea]; vanilla; dragees [non-medicated confectionery].

Foodstuffs made from cereals; cocoa; coffee; confectionery; honey; tea are identically contained in both lists of goods (including synonyms, i.e. foodstuffs made from cereals and preparations made from cereals).

The contested foods with a cocoa base; milk chocolate bars; filled chocolate bars; muesli bars; chocolate coated nougat bars; candy bars; chocolate bars are included in the opponent’s broad category snacks, which are foodstuffs commercialised in small portions and to be eaten between meals. Therefore, these goods are identical.

The contested farinaceous foods; foodstuffs made from dough; foodstuffs made from maize; foodstuffs made of rice; breakfast cereals; sponge cake; salted biscuits; doughnuts; brioches; buns; rice dumplings; pancakes; croissants; croutons; tea cakes; petit-beurre biscuits; cake doughs; biscuit mixes; cake mixes; bread rolls; filled bread rolls; panettone; sour dough; pykelets; pizzas; quiches; sandwiches; canapes; toasted bread are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested macaroons [pastry]; pastry shells; brownies; puddings; cones for ice cream; apple tarts; hardtack [biscuits]; madeleines; meringues; muffins; puff pastry; shortcrust pastry; almond pastries; chocolate pastries; pastries containing fruit; pastries containing creams; pastries containing creams and fruit; petits fours [cakes]; pavlovas made with hazelnuts; cream puffs; sponge fingers [cakes]; tiramisu; tarts; salted tarts are included in the broad category of the opponent’s pastry. Therefore, they are identical.

The contested ice cream drinks; chilled desserts; ice cream desserts; ice-cream cakes; ice cream are included in the broad category of the opponent’s ices. Therefore, they are identical.

The contested stick liquorice [confectionery]; rock [confectionery]; sweetmeats [candy]; caramels [candy]; acid drops [confectionery]; chocolate candies; peppermint candy; sal ammoniac liquorice sweets (non-medicated -); chocolate candy with fillings; boiled sweets; gum sweets; toffee; filled sweetmeats; caramel; waffles; wafers; chocolate shells; pralines; crystal sugar pieces [confectionery]; peanut brittle; chocolate decorations for Christmas trees; candy decorations for cakes; ice confectionery; sweetmeats; chocolate coated fruits; jelly beans; fruit jellies [confectionery]; liquorice [confectionery]; sugared almonds; almonds covered in chocolate; peppermint for confectionery; candy mints; chocolate-coated nuts; chocolate coated macadamia nuts; fruit drops [confectionery]; truffles [confectionery]; nougat; dragees [non-medicated confectionery] are sweets. The contested cheesecakes; custard; chocolate creams; Bavarian creams; crème brûlées; crème caramel; spreads made from chocolate and nuts; chocolate spreads; spreads consisting of hazelnut paste; mousse confections are desserts. These goods are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested fruit coulis [sauces] are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested cocoa-based beverages; hot chocolate are beverages also known as cocoa. The contested cocoa powder consists of a substance or mixture of substances used together with liquids (typically milk) to obtain cocoa beverages. These goods fall within the category of the opponent’s cocoa, since that word refers to cocoa in its unprocessed and processed forms, as well as to beverages with a cocoa and/or chocolate base. Therefore, they are identical.

The contested coffee-based beverages; coffee bags; decaffeinated coffee; instant coffee; cappuccino; espresso; mixtures of coffee are identical to the opponent’s coffee, since the contested goods are included in the broad category of the opponent’s goods.

The contested tea-based beverages; tea bags; herbal infusions; tea mixtures; mate [tea] are identical to the opponent’s tea, since the contested goods are included in the broad category of the opponent’s goods.

The contested vanilla is included in the broad category of the opponent’s spices. Therefore, these goods are identical.

The contested foodstuffs made of a sweetener for sweetening desserts are similar to the opponent’s honey, as they can have the same end users and distribution channels. Furthermore, they are in competition with each other.

The contested chocolates; chocolate; chocolate for toppings are foodstuffs prepared from ground roasted cacao beans. These goods are similar to the opponent’s cocoa, which is a powder also obtained from roasted cacao seeds. These goods have the same nature. They can coincide in their producers, end users and distribution channels.

The contested cake frosting [icing] is a sweet cream used as a topping for cakes. These good in Class 30 and the opponent’s goods in Classes 29, 30 and 32 have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections or departments of supermarkets or groceries. Therefore, the contested goods are dissimilar to all the opponent’s goods.

The contested flavourings for cakes are substances added to cakes in order to give them a particular taste, and are widely used in the food industry. These goods in Class 30 and the opponent’s goods in Classes 29, 30 and 32 are dissimilar. The opponent’s goods are foodstuffs and beverages prepared for consumption or conservation; they target the public at large and can be found in supermarkets. The contested goods, however, are used in the food industry and are not distributed for immediate consumption or prepared for conservation but intended to be added to unprocessed products. Consequently, they cannot be found in supermarkets but are distributed through specialised channels. These goods and the opponent’s goods in Classes 29, 30 and 32 do not have the same producers. They are not complementary to or in competition with each other.

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 are directed at the public at large. The degree of attention will vary from average to low, depending on the nature, price and/or frequency of purchase of the goods in question.

3. The signs

	CUCCHI
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 earlier mark comprises the word ‘CUCCIS’ in slightly stylised white title case letters. Given its size and position, this element is the dominant (most eye-catching) element of the mark. Furthermore, in the perception of the relevant public, the word has no clear meaning and is, therefore, distinctive. Consequently, this element will have a more significant impact on the present comparison than the other elements of the mark. The sign also includes three stylised lower case letter ‘f’s depicted on an orange circle. This element has no meaning either and is distinctive. However, it has a limited impact on the overall impression of the contested sign due to its small size and secondary position. The black square on which the other elements of the mark are depicted is a commonplace shape that is a mere background to the sign’s verbal and figurative elements. This element has no distinguishing capacity in itself.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the earlier mark, the words ‘fine fresh food’ are barely perceptible. As these words are likely to be disregarded by the relevant public, they will not be taken into consideration for the comparison.

The contested sign consists of the word ‘CUCCHI’, which has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the letters ‘CUCC*I*’ of the dominant element of the earlier mark and of the only element of the contested sign. In particular, the first four letters are reproduced in identical positions.

Given that the contested sign and the dominant portion of the earlier mark have five of six letters in common (four of which are identically reproduced at the beginning of the relevant words) and that the other differences lie in less relevant, or irrelevant, elements (e.g. the three lower case letter ‘f’s depicted on an orange circle and the black background), the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides the sound of the letters ‛CUCC*I*’, present identically in both signs. The additional letter ‘H’, present only in the contested mark, does not constitute a substantial aural difference, since the two ‘C’s of the earlier mark and the ‘CH’ of the contested sign will be pronounced by the relevant public as two very similar guttural sounds (similar to the letter ‘K’ in English). The pronunciation differs in the sound of the letter ‛S’ of the earlier mark, which has no counterpart in the contested sign. The subordinate position and small size of the three lower case letter ‘f’s in the earlier mark mean that the public is unlikely to pronounce these words. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The three lower case letter ‘f’s in the earlier mark will be perceived as such and will not trigger any specific concept. The orange circle and the black background will be perceived as such. However, given their secondary importance, these elements are insufficient to establish a relevant conceptual difference between the marks. 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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The relevant goods are partly identical, partly similar and partly dissimilar. The degree of attention paid by consumers varies from average to low and the earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an average degree and aurally highly similar. The visual differences between the signs lie largely in secondary elements, such as the non-distinctive black background and the negligible element of the earlier mark, which have no impact on the present comparison, as well as the three lower case letter ‘f’s depicted on an orange circle in the earlier mark, which have less impact than the dominant element ‘CUCCHI’. Furthermore, there is no significant difference between the pronunciation of the letters ‘CH’ in the contested sign and that of the two ‘C’s in the earlier mark. The conceptual aspect does not have any influence on the present comparison.

Account is also taken of the fact that 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s German trade mark registration No 302 011 030 305. It follows that the contested trade mark must be rejected for the contested goods found to be identical or similar.

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

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.