OPPOSITION DIVISION
OPPOSITION No B 2 652 363
Agrotrade a.s., Lopatecká 223/13, 14700 Praha 4, Czech Republic (opponent),
represented by Klára Labalestra, Na Poříčí 12, 11000 Praha 1, Czech Republic
(professional representative)
a g a i n s t
Don Gaucho Spain SL, Centro comercial Las Terrazas 21, Calle Acuario, Mijas,
29649 Málaga, Spain (applicant), represented by Trade Mark Direct, 4 Grove Park
Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom
(professional representative).
On 03/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 652 363 is upheld for all the contested goods, namely
Class 29: Eggs; edible oils and fats.
Class 30: Mustard; vinegar, sauces (condiments); spices.
2. European Union trade mark application No 14 609 663 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade
mark application No 14 609 663 for the word mark 'DON GAUCHO', namely against
some of the goods in Classes 29 and 30. The opposition is based on Czech trade
mark registration No 311 970 for the word mark 'GAUCHO'. The opponent invoked
Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation
(EU) 2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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
Decision on Opposition No B 2 652 363 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Vegetable and fruit salads, salads based mayonnaise, oils and fats, eggs,
egg products, spreads – creams, meat, cheese, egg, cottage cheese, vegetables,
mayonnaise, pastries, meat, fish, poultry, sausages, mayonnaise, dressings,
delicacies on mayonnaise base, eggs, vegetables, fish, sausages, potatoes, fruits,
dried, preserved and cooked fruits and vegetables, including mixtures thereof, jams,
marmalades, compotes, frozen ready within this class, especially vegetable puree,
frozen vegetables and fruits, canned foods based on fruits, vegetables, fish, berries,
mushrooms, frozen fish, frozen poultry, frozen meat, frozen ready meals and frozen
semi-finished products based on meat, vegetables, fruits, meat products, milk and
milk products.
Class 30: Mustard, tartar sauce, mayonnaise, mayonnaise spreads and creams,
dressings, salad dressings, delicatessen products based on mayonnaise, sauces,
dressings, spices, ketchup, frozen semi-finished products in this class, flour, bread,
rice, sweets, coffee, chocolate and spices.
Class 31: Fresh fruit and vegetables, eggs, live animals.
Following the partial rejection of the contested sign pursuant to the final decision of
23/03/2017 on opposition B 2 652 629, the contested goods are the following:
Class 29: Eggs; edible oils and fats.
Class 30: Mustard; vinegar, sauces (condiments); spices.
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
Eggs; edible oils and fats are identically contained in both lists of goods (including
synonyms).
Contested goods in Class 30
Mustard; sauces (condiments); spices are identically contained in both lists of goods
(including synonyms).
The contested vinegar and the opponent's dressings are similar to a high degree as
they have the same purpose, and they can coincide in producer, end user and
distribution channels. Furthermore they are in competition.
Decision on Opposition No B 2 652 363 page: 3 of 5
b) 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 to a high degree are
directed at the public at large whose degree of attention is deemed average.
c) The signs
GAUCHO DON GAUCHO
Earlier trade mark Contested sign
The relevant territory is the Czech Republic.
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).
Both signs are word marks which contain the Spanish word ‘GAUCHO’ which refers
to ‘a South American cowboy’. This word will be understood by part of the public only
whereas the remaining part of the public is rather likely to perceive it as some foreign
name in the contested sign in view of the presence of the initial word ‘DON’ which in
turn will be associated by the relevant public as a whole to a Spanish title, namely the
equivalent to Mr (Mister), placed before a name to indicate respect. This is not likely
to be the case in the earlier mark in the absence of anything other element ushering
the public into believing that the word 'GAUCHO' is a name.
It must be noted that in relation to the respective goods, the words 'DON' and
'GAUCHO' do not have any meaning and they are distinctive of these.
Visually and aurally, the signs coincide in the letters/sounds ‘G-A-U-C-H-O’ but
differ in the initial letters/sounds ‘DON’ of the contested sign. Taking into account that
the first word of the contested sign 'DON' is short and that the following word
coincides visually and aurally entirely with the earlier mark, the signs are visually and
aurally highly similar.
Conceptually, taking into account that the word ‘DON’ of the contested sign will be
perceived directly in relation to the following word ‘GAUCHO’, present in both signs,
and that the common word 'GAUCHO' will be perceived as referring to a South
American cowboy by part of the public, the signs are conceptually highly similar for
that part of the public.
For the remaining part of the public, taking into account that the earlier mark is
meaningless whereas the contested sign will be perceived as a combination of a title
and name, the signs are not conceptually similar.
Decision on Opposition No B 2 652 363 page: 4 of 5
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
The goods and services, found to be identical or similar to a high degree, are
directed at the public at large whose degree of attention is average. The signs are
visually, aurally and conceptually highly similar, at least for part of the public. The
degree of distinctiveness of the earlier sign is one of the factors to be taken into
account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §
23). In the present case, the distinctiveness of the earlier mark must be seen as
normal.
Account is 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 well founded on the basis of the opponent’s Czech trade
mark registration No 311 970. It follows that the contested trade mark must be
rejected for all the contested goods.
Decision on Opposition No B 2 652 363 page: 5 of 5
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Pedro JURADO
MONTEJANO
Martina GALLE Frédérique SULPICE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.