OPPOSITION DIVISION
OPPOSITION No B 2 790 346
Almondy Aktiebolag, Flygfältsgatan 10, 423 37 Torslanda, Sweden (opponent),
represented by Awapatent AB, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden
(professional representative)
a g a i n s t
Monika Charrak, Carl-Benz-Straße 2 a, 67240 Bobenheim-Roxheim, Germany,
Samir Charrak, Carl-Benz-Straße 2 a, 67240 Bobenheim-Roxheim, Germany
(applicants), represented by Praetoria Rechtsanwälte, Bleichenbrücke 11, 20354
Hamburg, Germany (professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 790 346 is partially upheld, namely for the following
contested goods and services:
Class 5: Bread products for diabetics; Food for diabetics; Food for medically
restricted diets; Food for diabetics.
Class 30: Spreads made from chocolate and nuts; Ready-made baking
mixtures; Bakery goods; Bread; Unleavened bread; Bread flavoured with
spices; Bread and buns; Bread biscuits; Sandwich spread made from
chocolate and nuts; Mixes for the preparation of bread; Thin breadsticks; Bread
doughs; Bun mix; Pasta containing eggs; Almond pastries; Fresh bread;
Pastries, cakes, tarts and biscuits (cookies); Semi-baked bread; Crackers;
Cakes; Cake mixes; Foodstuffs made from dough; Non-medicated
confectionery for use as part of a calorie controlled diet; Pizza crust; Pizza
bases; Pizza dough; Bread rolls; Sweet biscuits for human consumption; Pre-
baked pizzas crusts; Pre-baked bread; Wafers [food]; Soft rolls [bread];
Preparations for making pizza bases.
Class 35: Retailing, including via the internet, in relation to food.
2. European Union trade mark application No 15 590 383 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.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 790 346 page: 2 of 8
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 590 383 ‘Dr. Almond’, namely against
all the goods in Class 30 and some of the goods and services in Classes 5 and 35.
The opposition is based on, inter alia, European trade mark registration No 5 155
791 . 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 European Union trade mark registration No 5 155 791.
a) 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.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour (for
food) and preparations made from cereals (not for medical use), bread; pastry and
confectionery, cakes, ices; honey, treacle; yeast, baking-powder; salt, mustard;
vinegar, sauces (condiments); spices; ice.
Class 31: Agricultural, horticultural and forestry products and grains not included in
other classes; live animals; fresh fruits and vegetables; seeds, natural plants and
flowers; foodstuffs for animals, malt.
The contested goods and services are the following:
Class 5: Dietetic preparations and dietary supplements; Food supplements; Bread
products for diabetics; Food for diabetics; Food for medically restricted diets; Food
for diabetics.
Class 30: Spreads made from chocolate and nuts; Ready-made baking mixtures;
Bakery goods; Bread; Unleavened bread; Bread flavoured with spices; Bread and
buns; Bread biscuits; Sandwich spread made from chocolate and nuts; Mixes for the
preparation of bread; Thin breadsticks; Bread doughs; Bun mix; Pasta containing
eggs; Almond pastries; Fresh bread; Pastries, cakes, tarts and biscuits (cookies);
Decision on Opposition No B 2 790 346 page: 3 of 8
Semi-baked bread; Crackers; Cakes; Cake mixes; Foodstuffs made from dough;
Non-medicated confectionery for use as part of a calorie controlled diet; Pizza crust;
Pizza bases; Pizza dough; Bread rolls; Sweet biscuits for human consumption; Pre-
baked pizzas crusts; Pre-baked bread; Wafers [food]; Soft rolls [bread]; Preparations
for making pizza bases.
Class 35: Retailing, including via the internet, in relation to dietetic substances,
dietary supplements and food.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 5
The contested bread products for diabetics; food for diabetics; food for medically
restricted diets; food for diabetics are food products for consumers requiring or
following special diet. These days, traditional food is also used when observing
particular dietary restrictions. Besides, established food manufacturers often produce
two versions of the same product, i.e. sugar- or fat-free and traditional foodstuffs, and
these product versions are normally placed in close proximity to each other on
supermarket shelves. Accordingly, these contested goods and some of the
opponent’s goods such as, for example, preparations made from cereals (not for
medical use), bread are considered similar.
The contested dietetic preparations and dietary supplements; food supplements are
products that are specifically prepared and sold for consumers to follow special
dietary or dietetic requirements, with the purpose of treating or preventing certain
health conditions. Moreover, these goods are often taken as supplements in
combination with other preparations, which makes their nature and method of use
different from that of everyday foodstuff and beverages of the opponent. While
certain of the opponent’s goods in classes 29 (such as dried fruits), 30 (such as tea)
or 31 (such as fresh vegetables) may also form part of an infinite variety of diets
created by the consumer or others, the fact remains that the fundamental purpose of
the goods in conflict is different: the contested goods are aimed to preserve or
recover health, often upon medical advice whereas the opponent’s goods are
everyday beverages and foodstuffs essentially consumed to quench thirst and satiate
hunger, without any dietetic or health considerations. Apart from this, the goods in
conflict are not in competition, either. In summary, these contested goods are
dissimilar to all of opponent’s goods in Classes 29, 30 and 31.
Contested goods in Class 30
The contested bakery goods; bread; unleavened bread; bread flavoured with spices;
bread and buns; bread biscuits; crackers; thin breadsticks; fresh bread; semi-baked
bread; foodstuffs made from dough; bread rolls; pre-baked bread; soft rolls [bread]
Decision on Opposition No B 2 790 346 page: 4 of 8
are either contained in or partially overlap with the opponent’s general category of
bread. These goods are, therefore, identical.
The contested ready-made baking mixtures; mixes for the preparation of bread; bun
mix; cake mixes; preparations for making pizza bases overlap with several of the
opponent’s goods used for baking since these goods have the same purpose. As a
result, these contested goods are identical with the opponent’s flour (for food);
baking-powder.
The contested spreads made from chocolate and nuts; sandwich spread made from
chocolate and nuts; almond pastries; pastries, cakes, tarts and biscuits (cookies);
cakes; non-medicated confectionery for use as part of a calorie controlled diet; sweet
biscuits for human consumption; wafers [food] all belong to the opponent’s broad
category of pastry and confectionery. These goods are, therefore, identical.
The contested bread doughs; pizza dough; pizza crust; pre-baked pizzas crusts;
pizza bases; pasta containing eggs are contained in and, are, therefore, identical with
the opponent’s broad category of preparations made from cereals (not for medical
use).
Contested services in Class 35
With regard to the contested retailing services, it must be noted that retail services
concerning the sale of particular goods are similar (to a low degree) to these
particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33).
Although the nature, purpose and method of use of these goods and services are not
the same, it should be noted that they display similarities, having regard to the fact
that they are complementary and that those services are generally offered in the
same places as those where the goods are offered for sale. Furthermore, they are
directed at the same public. The goods covered by the retail services and the specific
goods covered by the other mark have to be identical in order to find a similarity, that
is to say, they must either be exactly the same goods or fall under the natural and
usual meaning of the category.
Accordingly, and based on the comparison of the goods in the preceding paragraphs,
there is a low degree of similarity between the contested retailing, including via the
internet, in relation to food and most of the opponent’s goods since these latter
belong to and, therefore, are identical with the generic category of food.
With regard to the remaining contested services in this class, namely retailing,
including via the internet, in relation to dietetic substances, dietary supplements,
since these retailed goods were found to be dissimilar to all of the opponent’s goods
in the preceding paragraphs, the related retailing services of the application must
also be found to be dissimilar to the opponent’s goods.
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 and services found to be identical or similar are
directed at the public at large.
Decision on Opposition No B 2 790 346 page: 5 of 8
The degree of attention may vary from average, in case of everyday foodstuff, to
higher than average, in case of food for diabetics.
c) The signs
Dr. Almond
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).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Since the contested mark is a meaningful word combination in English and the earlier
trade mark also strongly alludes to the concept of almond from the perspective of the
English speaking public, the Opposition Division will restrict the assessment of the
marks to the part of the public for which the signs are meaningless, namely, to the
Czech-, Polish and Hungarian-speaking territories.
The earlier mark is a figurative mark consisting of the word ‘Almondy’ in handwritten
fonts. The word is meaningless in the relevant territory and it is, therefore, distinctive.
The contested sign consists of the words ‘Dr. Almond’. The word ‘Dr.’ is the
commonly used abbreviation for ‘doctor’ being a generic reference to either an
academic title or a profession. This word is rather allusive in relation to some of the
conflicting goods, in particular those in Class 5, indicating their medical purpose or
effect. If confronted with this abbreviation, consumers will assume that those goods
are particularly healthy and consumed upon a medical expert’s supervision or advice.
As far as the remaining goods are concerned, ‘Dr.’ will be perceived as a title that
introduces the element that follows, namely, the word ‘Almond’. In either case, it is
the word ‘Almond’ which has a more distinctive role and, in lack of any meaning, a
normal degree of distinctiveness in relation to the relevant goods and services.
Decision on Opposition No B 2 790 346 page: 6 of 8
Visually, the signs coincide in ‘ALMOND-’ present in both signs, albeit in different
stylization, while they differ in the addition of ‘Dr.’ in the contested sign and the letter
‘Y’ at the end of the earlier mark. As explained above, the abbreviation ‘Dr.’ is either
allusive or will be viewed as an introductory element. It must be noted that while
consumers usually focus on the first part of signs, this principle is not applicable to all
situations and cannot, in any event, undermine the principle that an analysis of the
similarity of two trade marks must take into account the overall impression given by
those marks, since the average consumer normally perceives a mark as a whole and
does not proceed to analyse its various details (see judgment of 10 December 2008
in Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T–228/06,
EU:T:2008:558, paragraph 28 and the case-law cited). This applies to the present
case where the contested sign’s first element will be given less attention for the
reasons explained above, and consumers will rather focus on the contested sign’s
second word ‘ALMOND’. Taking all this into account, the signs are visually similar to
an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‛ALMOND-’, present identically in both signs. The pronunciation differs in the
contested sign’s first two letters ‘Dr’ and in the additional letter at the end of the
earlier mark. As explained above, consumers will pay more attention to the contested
signs’ more distinctive second word which only differs in one letter. Based on all this,
the signs are considered to be similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the meaning
of the abbreviation ‘Dr’ and its distinctiveness. Since this word is only present in the
contested sign, and the other sign has no meaning in the relevant territory, 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.
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 has no meaning in
relation to the goods in question from the perspective of the public in the relevant
territory. Therefore, the distinctiveness of the earlier mark as a whole must be seen
as normal.
GLOBAL ASSESSMENT
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
Decision on Opposition No B 2 790 346 page: 7 of 8
relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).
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).
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). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
The goods and services compared are partly identical, partly similar to varied
degrees and partly dissimilar. The signs are visually and aurally similar while
conceptually not similar. The concept evoked by the contested sign’s word ‘Dr’ will
have less impact on the overall impression of the signs, given the non-distinctive and
generic nature of this word. The signs share six out of the earlier mark’s seven
letters, in the same order. The differences between them are not sufficient to offset
the similarities, in particular in the absence of any additional visual feature.
In their observations, the applicants refer to a German Patent Court decision.
However, it must be noted that decisions of national courts and national offices
regarding conflicts between identical or similar trade marks at national level do not
have a binding effect on the Office since the European Union trade mark regime is an
autonomous system, which applies independently of any national system
(13/09/2010, T-292/08, Often, EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and
outcome should be duly considered, particularly when the decision has been taken in
the Member State that is relevant to the proceedings.
In the present case, the applicants have failed to provide sufficient information with
regard to the actual goods and services, the signs and the relevant territory in the
case which they had cited. In any event, in the present proceedings the word
‘almond’ lacks any meaning in the relevant territories and is, therefore, perfectly
distinctive.
Considering all the above, there is a likelihood of confusion on the part of the Czech-
Polish- and Hungarian-speaking part of the public. As stated above in section c) of
this decision, a likelihood of confusion for only part of the relevant public of the
European Union is sufficient to reject the contested application.
Therefore, the opposition is partially well founded on the basis of the opponent’s
European Union trade mark registration No 5 155 791. It follows that the contested
trade mark must be rejected for the goods and services found to be identical or
similar, even if only to a low degree, to the goods of the earlier trade mark since the
similarities found between the signs are considered sufficient to offset the fact that
some of the goods and services are only similar to a low degree.
The rest of the contested goods and services are dissimilar to the opponent’s goods.
As similarity of goods and services is a necessary condition for the application of
Decision on Opposition No B 2 790 346 page: 8 of 8
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:
Swedish trade mark registration No 383 656 ;
Swedish trade mark registration No 337 254 ‘ALMONDY’;
International trade mark registration No 824 930 ‘ALMONDY’.
Since these marks cover the same or a narrower scope of goods, the outcome
cannot be different with respect to goods and services for which the opposition has
already been rejected. Therefore, no likelihood of confusion exists with respect to
those goods and services.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Michaela SIMANDLOVA Ferenc GAZDA Erkki MÜNTER
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.