OPPOSITION No B 2 659 202

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

Coviran, S.C.A., Ctra. Nacional 432 Km. 431, 18230 Atarfe (Granada), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 659 202 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 744 833, namely against all of the goods in Classes 29 and 30. The opposition is based on German trade mark registration No 302 014 064 707. 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; fruit, stewed.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices and ice creams; sugar, honey, treacle; yeast; baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 29:        Meat; fish; poultry, not live; game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies; jams; fruit, stewed; eggs; milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Contested goods in Class 29

Meat; fish; poultry, not live; game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies; jams; fruit, stewed; eggs; milk and milk products; edible oils and fats are identically contained in both lists of goods (including synonyms, such as the contested poultry, not live in Class 29 referring to the same goods as the opponent’s poultry).

Contested goods in Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice are identically contained in both lists of goods.

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 relevant goods are directed at the public at large.

It is considered that the relevant public’s degree of attention at the moment of choosing the goods is, on the whole, average. Nevertheless, the Opposition Division accepts the opponent’s argument that, as some of the foodstuffs at issue can be inexpensive goods purchased on a daily basis (for example certain milk products, plain flour, bread, sugar and cooking salt), the habitual buying behaviour associated with those goods can result in a lower degree of attention.

3. The signs

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 is a composite sign comprising a fairly standard representation of the word ‘EXQUISIT’. According to Duden Online Wörterbuch (www.duden.de), it is an adjective meaning ‘ausgesucht, erlesen, vorzüglich’, which can be translated into English as ‘exquisite’, ‘selected’, ‘fine’ or ‘excellent’. This term is directly descriptive of the quality of the goods at issue. Moreover, the public will perceive it as merely laudatory. The opponent argues that the applicant did not furnish any proof for supporting such a finding. The Opposition Division notes, however, that the fact alone that this term exists as such in the relevant language with an evident meaning and will be perceived, without further reflection, as highlighting objective or desirable characteristics of the goods concerned, is sufficient for establishing that the earlier mark’s sole verbal element is devoid of any distinctive character.

In the upper part of the earlier mark there is a black-and-white figurative element reminiscent of fine embroidery, or lace, with foliage pattern. In principle, figurative elements of signs have a lesser impact in their overall impressions than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components. Nevertheless, in the present case, the figurative element occupies roughly half of the earlier mark’s space and has a conspicuous position in the upper part of the sign. Moreover, this figurative element is unusual. In that regard, it is recalled that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). The Opposition Division finds that the figurative element in the upper part of the mark, albeit lacking any clear meaning, being ornamental and having a limited capacity to indicate commercial origin, has at least the same weight as that of the sign’s verbal element which is non-distinctive. However, the horizontal line underneath the word ‘EXQUISIT’ in the earlier mark is very simple and merely serves a decorative purpose, as if underscoring the verbal element and/or marking the lower border of the sign. It has no distinctive character on its own.

The contested sign comprises a slightly stylised representation of the word ‘EXQUISITÉ’ in white, in a font resembling handwriting, and in title case. It is depicted with a partial underscore in orange colour against a black rectangle. Notwithstanding the different spellings, namely the additional ‘É’ in its ending, for the relevant public this term will allude to the same meaning(s) as the word ‘EXQUISIT’ in the earlier mark. It can be reasonably assumed that the contested sign’s word ‘EXQUISITÉ’ will be perceived as a French version of the German term. Taking into account the mental step required due to the misspelling of the term, it is considered that this element is weak for the goods at issue. Underneath the word ‘EXQUISITÉ’, and towards the right, the word ‘COVIRAN’ is depicted in fairly standard, bold lettering. This term is arbitrary from the perspective of the relevant public and is endowed with an average degree of distinctiveness. The figurative elements, namely the black backdrop and the interrupted orange line are commonplace shapes which are mere carriers of the sign’s verbal elements. They have no distinguishing capacity on their own.

It follows that, conceptually, both signs will be associated with the meaning(s) conveyed by the words ‘EXQUISIT’ and ‘EXQUISITÉ’, without this impression being altered by any relevant semantic content from the other elements present in either of the signs. The opponent admits that the terms at issue ‘both have the meaning of “superior” or “delicious” with respect to the goods in dispute’. However, contrary to the opponent’s claim that the signs are conceptually identical, the Opposition Division finds that the limited distinctiveness of these elements can only lead to the finding of a low degree of conceptual similarity between the signs.  

It should also be noted that, where some elements of a trade mark are descriptive or non-distinctive, they are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 24 and the case-law cited).

As regards the dominance of the elements in the signs under comparison, it is considered that none of them has any element that could be clearly considered more visually eye-catching than others. This is on account of the relative sizes of the components in the earlier mark, the different typefaces used in the verbal elements of the contested sign (the word ‘EXQUISITÉ’ is larger in size, but its graphemes are depicted in thinner lines than the bold font used for the somewhat smaller word ‘COVIRAN’), and their specific arrangements that outbalance the visual impact of the individual elements.

Visually, the signs coincide insofar as all of the letters comprising the earlier mark’s sole verbal element, ‘EXQUISIT’, are included in the beginning of the contested sign’s verbal element ‘EXQUISITÉ’. That coincidence, however, must be weighed against the fact that these elements have limited distinctiveness. Moreover, these words differ in the additional letter present in the contested sign, ‘É’, and their different graphical representations. The opponent argues that both signs feature horizontal lines. The Opposition Division notes that such a coincidence does not result in a significant visual similarity, particularly as these lines are non-distinctive. The opponent’s argument that the black-and-white colour combination is predominant in the contested sign just like in the earlier mark does not create a major point of similarity either. Rather, the fact that the contested sign contains the readily perceptible and distinctive element ‘COVIRAN’ reduces the degree of visual similarity. The overall stylisations and the rest of the figurative elements in each sign, albeit with limited distinctiveness, are clearly different, as described above. It is worth mentioning that the earlier mark is depicted in a manner which creates a see-through effect, whereas the contested sign’s background is solid black.

It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

All in all, the degree of visual similarity between the signs is at most low.

Aurally, the pronunciations of the signs coincide in the sequence of the letters ‘EXQUISIT’. However, contrary to what the opponent claims, the words ‘EXQUISIT’ and ‘EXQUISITÉ’ will not be pronounced identically in German, as the last letter, ‘É’, in the contested sign’s ‘EXQUISITÉ’, instead of being silent, will be clearly audible.

Although all of the letters of the earlier mark’s verbal element are included in the contested sign’s first word, the latter’s last letter has an impact. Being a vowel, the additional ‘É’ creates another syllable rendering the lengths of these words different (three syllables vs four syllables). The figurative elements will not be pronounced. However, an important aural difference results from the pronunciation of the contested sign’s word ‘COVIRAN’. Despite its position, the relevant public is likely to enunciate this element when referring to the contested sign, particularly in view of the fact that the first element, ‘EXQUISITÉ’, has weak capacity to indicate commercial origin.

Therefore, the degree of aural similarity between the signs is low.

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 distinctiveness of the earlier mark as a whole lies in the specific combination of the verbal and figurative elements which individually possess limited distinctiveness, as stated above in section c) of this decision. Therefore, the distinctiveness of the earlier mark is below average.

5. Global assessment, other arguments and conclusion

As shown in detail in section c) of this decision, the signs are considered similar to (at most) a low degree from all of the relevant aspects. The tenuous similarity is confined to verbal elements which have limited capacity to indicate commercial origin.

The opponent refers to the judgment of the General Court in the ‘BROTHERS by CAMPER’ case, where the Court held that ‘the element “by CAMPER” will be perceived as subsidiary, also due to the fact that the relevant public will perceive it as a mere indication of the undertaking producing the goods in question’ (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 65). The present case is not comparable to the situation in the cited case-law, as the elements in which the similarity between the signs resides in the present case have feeble distinctiveness for the goods at issue. The contested sign cannot be regarded as a mere reproduction of the earlier mark’s verbal element with slightly varying figurative elements. Since the ‘EXQUISITÉ’ component in the contested sign is weak, consumers will direct their attention to other elements which are capable of functioning as a badge of commercial origin. Consequently, the contested sign’s differentiating verbal element which is distinctive, ‘COVIRAN’, has a strong impact in the perception of the public, even taking into account that the average consumers often place their trust in the imperfect recollection of different trade marks and that their attentiveness will not be enhanced when choosing the goods at issue.

The opponent argues that the distinctiveness of the common element between the signs is only one of the factors that has to be taken into account in the global appreciation of likelihood of confusion and refers to the judgment of the General Court in the ‘PAGESJAUNES.COM’ case where the Court held that the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them’ (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 54).  

In the present case, the different figurative elements in each sign, and also the important additional verbal element in the contested sign, are readily perceptible.

The goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145, § 53).

The differences identified between the signs, especially the visual ones, are sufficient to exclude any likelihood of confusion between the marks, even where the attention of the public will be below average, bearing also in mind that the similar elements are of limited distinctiveness for the relevant public and are not the dominant elements of the signs, for reasons given in section c) of this decision.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods are identical cannot, in this case, compensate for the differences identified between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

Julie GOUTARD

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.