OPPOSITION No B 2 708 611

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

Exquisite Fruits S.L., Plaza del Prado 21, 46701 Gandia, Spain (applicant), represented by Condés Patentes y Marcas, Calle Antonio Sacramento Escutor N° 11 Bajo Izda, 46013 Valencia, Spain (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 611 is upheld for all the contested goods, namely:

Class 31:        Fruit, fresh; Vegetables, fresh.

2.        European Union trade mark application No 15 124 803 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all of the goods of European Union trade mark registration No 15 124 803. The opposition is based on, inter alia, European Union trade mark registration No 13 424 999. 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 13 424 999.

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; Ajvar [preserved peppers]; Protein milk; Weed extracts for food; Alginates for culinary purposes; Non-alcoholic eggnog; Apple purée; Oysters, not live; Sausages; Beans, preserved; Broth; Bouillon concentrates; Fat-containing mixtures for bread slices; Butter; Buttercream; Dates; Curd; Eggs; Yolk of eggs; Powdered eggs; Albumen for culinary purposes; White of eggs; Peas, preserved; Peanut butter; Peanuts, prepared; Gherkins; Low-fat potato chips; Fatty substances for the manufacture of edible fats; Fish; Salted fish; Fish preserves; Fish fillets; Foods made from fish; Canned fish; Isinglass for food; Fish meal for human consumption; Mousses (Fish -); Fish roe, prepared; Meats; Meat, preserved; Broth concentrates; Meat jellies; Meat, preserved; Salted meats; Fruit chips; Fruit preserved in alcohol; Fruit jellies; Fruit pulp; Fruit salads; Fruit-based snack food; Jellies; Prawns, not live; Poultry, not live; Gelatine; Jellies; Vegetables, cooked; Vegetables, dried; Vegetable preserves; Canned vegetables; Mousses (Vegetable -); Vegetable salads; Toasted laver; Herrings; Lobsters, not live; Ginger jam; Yoghurt; Vegetable soup preparations; Chocolate nut butter; Tripe; Frosted fruits; Potato chips; Potato flakes; Potato fritters; Cheese products; Caviar; Kefir [milk beverage]; Hummus [chickpea paste]; Kimchi [fermented vegetable dish]; Animal marrow for food; Bone oil, edible; Coconut butter; Coconut oil and fat [for food]; Coconut, desiccated; Coconut oil; Fruit, stewed; Condensed milk; Jams; Garlic [preserved]; Soups; Crayfish, not live; Croquettes; Crustaceans, not live; Kefir [milk beverage]; Rennet; Salmon; Spiny lobsters, not live; Liver; Liver pâté; Flaxseed oil for culinary purposes; Lecithin for culinary purposes; Lentils, preserved; Corn oil; Ground almonds; Margarine; Marmalade; Blue mussels [not live]; Milk; Ferments (Milk -) for culinary purposes; Milk beverages, milk predominating; Milk products; Milk shakes; Whey; Prepared nuts; Fruit, stewed; Preserved fruits; Frozen fruits; Fruits, tinned [canned (Am.)]; Fruit salads; Edible oils; Olives, preserved; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pectin for culinary purposes; Vegetable juices for cooking; Piccalilli; Pickles; Mushrooms, preserved; Pollen prepared as foodstuff; Cranberry sauce [compote]; Fermented milk; Curds; Colza oil for food; Ryazhenka [fermented baked milk]; Raisins; Cream [dairy products]; Seeds, prepared; Anchovy; Sardines; Sauerkraut; Fruit peel; Shellfish, not live; Ham; Whipped cream; Snail eggs for consumption; Pork; Lard for food; Sea-cucumbers, not live; Silkworm chrysalis, for human consumption; Sesame oil; Tahini [sesame seed paste]; Shrimps, not live; Sour cream; Soya beans, preserved, for food; Soya milk [milk substitute]; Sunflower seeds, prepared; Sunflower oil for food; Bacon; Edible fats; Suet for food; Soup (Preparations for making -); Tuna fish; Tofu; Tomato purée; Tomato purée; Tomato juice for cooking; Truffles, preserved; Clams, not live; Aloe vera prepared for human consumption; Edible birds’ nests; Game; Sausages; Sausages in batter; Meats; Bouillon (Preparations for making -); Onions, preserved.

The contested goods are the following:

Class 31:        Fruit, fresh; Vegetables, fresh.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 29

The contested fruit, fresh is similar to a low degree to the opponent’s preserved, frozen, dried and cooked fruits. They can have the same end users and distribution channels. Furthermore, they are in competition.

The contested vegetables, fresh are similar to a low degree to the opponent’s preserved, frozen, dried and cooked vegetables. They can have the same end users and distribution channels. Furthermore, they are in competition.

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 similar to a low degree are directed at the public at large.

The degree of attention is considered to vary between average and low. A lower degree of attention can be associated, in particular, with habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43), such as the goods under comparison.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘EXQUISIT/EXQUISITE’ is not meaningful in certain territories, for example Poland. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

The earlier mark is a figurative sign containing a single verbal element, ‘EXQUISIT’, in upper case letters in a standard typeface, except for the letter ‘Q’ in a slightly stylised typeface. It also contains two figurative elements, namely a line below the word ‘EXQUISIT’ and, above this word, a figurative element consisting of a large number of irregularly drawn lines.

The contested sign is a figurative sign containing the single verbal element ‘exquisitefruits’ in rather standard lower case letters. The first part, ‘exquisite’, is in bold, whereas the second part, ‘fruits’, is non-bold. The sign also contains four figurative elements placed in a row just above the verbal component ‘exquisite’. These elements, from left to right, are as follows: a green circle, a slightly distorted red circle, a slightly distorted yellow square and an orange diamond square.

Although the contested sign contains the single word ‘exquisitefruits’, the relevant consumers, when perceiving the sign, will break this word down into the elements ‘exquisite’ and ‘fruits’ because these verbal elements are depicted in bold and non-bold letters, respectively, resulting in a visual difference that naturally divides the word into two elements.

As explained above, the words ‘EXQUISIT’ of the earlier mark and ‘exquisite’ of the contested sign are meaningless for the Polish-speaking part of the relevant public and are therefore distinctive.

The verbal component ‘fruits’ of the contested sign will be understood as ‘a living thing that grows in earth, in water, or on other plants, usually has a stem, leaves, roots, and flowers, and produces seeds’ (information extracted from Cambridge Dictionary on 19/06/2017 at www.dictionary.cambridge.org/dictionary/english/plant?a=british) because it is a common English word that is used in commerce, including in Poland. In addition, it should be noted that the word ‘fruits’ can be associated with the Polish word ‘frukty’ (i.e. ‘fruits’/‘owoc jakiejś rośliny’; information extracted from Słownik języka polskiego PWN on 19/06/2017 at www.sjp.pwn.pl/szukaj/frukt.html).

Therefore, the element ‘fruits’ of the contested sign will be associated with ‘products of plant growth’. Bearing in mind that the relevant goods are agricultural foodstuffs, this element is non-distinctive for these goods, namely for fruit, fresh; vegetables, fresh.

The abstract figurative element of the earlier mark in the form of a large number of lines and the figurative element of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The line below the verbal element of the earlier sign has a purely decorative nature and therefore is non-distinctive.

Neither of the signs has elements that could be considered clearly more dominant (visually eye-catching) than other elements.

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, the signs coincide in the element ‘EXQUISIT’, which is distinctive. This verbal element of the earlier sign is fully incorporated in the contested sign, being the beginning of it. However, the signs differ in the additional letter ‘e’ at the end of the word ‘exquisit’ and the word ‘fruits’ of the contested sign. The latter word, as explained above, is non-distinctive. The signs also differ in their figurative elements, that is, the figurative element composed of a large number of lines (earlier mark) and the four-item figurative element (contested sign).

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive sequence of letters ‛exquisit’, present identically in both signs. The pronunciation differs in the sound of the letters ‛efruits’ of the contested mark, which has no counterpart in the earlier sign. As explained above, the verbal element ‛fruits’ is non-distinctive. The pronunciation will be as follows: ‘exquisit’ (earlier mark) and ‘exquisitefruits’ (contested sign). The Opposition Division is of the opinion that the second letter ‘e’ in the contested sign will be hardly audible to the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

4. Distinctiveness of the earlier marks

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. According to the opponent, ‛the earlier marks are of at least average distinctiveness for the goods the opposition is based on’.

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.

5. Global assessment, other arguments and conclusion

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.

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.

As concluded above, the contested goods are similar to a low degree to the opponent’s goods. The signs are visually similar to a low degree and aurally highly similar. The signs are not conceptually similar. Furthermore, the earlier mark has a normal degree of distinctiveness. The public in question is the public at large and its degree of attention will vary between average and low.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The verbal element ‘EXQUISIT’ is fully incorporated in the contested sign’s verbal element ‘exquisitefruits’ as its first part. In addition, consumers tend to remember the similarities rather than the dissimilarities between signs.

Consequently, the Opposition Division finds that the similarities between the signs are not outweighed by the differences. The likelihood of confusion exists despite the low degree of similarity between the goods. Therefore, the signs could be confused with each other.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 424 999. 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.

It follows that the contested trade mark must be rejected for all the contested goods.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include ‘EXQUISIT’ or ‘EXQUISITE’. In support of its argument, the applicant refers to a few trade mark registrations in the European Union trade mark system (e.g. EUTM No 1 179 597 ‘LA EXQUISITA’).

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘EXQUISIT’ or ‘EXQUISITE’.

Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments (e.g. 24/02/2015, B 2 032 335, THE STONE ROSES v stns by Stones). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. They concern other factual and legal circumstances.

Therefore, the above argument of the applicant has to be set aside.

The applicant highlights that it ‘has previous rights and has been using this trade mark for a time since 2012, not just in Spain but also in most of Europe’. The applicant indicates that it is entitled to use Spanish trade mark No 3 103 449 ‘EXQUISITE FRUIT GOURMET PREMIUM’ for fresh fruits in Class 31. In addition, the applicant mentions that its business name is Exquisite Fruits S.L. and that it owns the domain name www.exquisitefruits.com.

In the present case, the comparison relating to likelihood of confusion should be focused on the earlier mark and the contested sign. The existence of other exclusive rights of the applicant (i.e. trade marks, business name and domain name) is not relevant.

Therefore, the applicant’s argument above has to be set aside.

In addition, the applicant argues that its own registrations and other trade marks including the word ‘EXQUISITE’ registered by third parties could coexist with the opponent’s earlier marks.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

André Gerd Günther BOSSE

Michal KRUK

Jessica LEWIS

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.