OPPOSITION DIVISION
OPPOSITION No B 2 821 406
Francisco Gomez Hernandez, Carcassonne, 1, 03310 Jacarilla, Spain (opponent),
represented by Clara Eugenia Martin Alvarez, Vicente Blasco Ibañez, 43, entlo.
drcha., 03201 Elche (Alicante), Spain (professional representative)
a g a i n s t
Filiki Anaptixiaki Single Member P.C., Leoforos Lavriou 204-206, 15354 Glyka
Nera Paianias, Greece (applicant), represented by Emmanouil Theodorakis, 36
Voukourestiou Str., 10673 Athens, Greece (professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 821 406 is upheld for all the contested goods, namely
Class 29: Oils and fats; Processed fruits, fungi and vegetables (including nuts
and pulses); Olives stuffed with almonds; Olives stuffed with red
peppers; Olives stuffed with red peppers and almonds; Olives
stuffed with pesto in sunflower oil; Olives stuffed with feta cheese in
sunflower oil.
2. European Union trade mark application No 15 474 422 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary Remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 474 422 for the figurative mark , namely
against all the goods in Class 29. The opposition is based on, inter alia, Spanish
Decision on Opposition No B 2 821 406 page: 2 of 6
trade mark registration No 3 009 546 for the figurative mark . 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 Spanish trade mark registration No 3 009 546.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Meat, fish, birds and game; meat extracts; processed fruits and
vegetables, dried and cooked; jellies, jams, compotes; eggs, milk and
milk products; edible oils and fats.
The contested goods are the following:
Class 29: Oils and fats; Processed fruits, fungi and vegetables (including nuts
and pulses); Olives stuffed with almonds; Olives stuffed with red
peppers; Olives stuffed with red peppers and almonds; Olives stuffed
with pesto in sunflower oil; Olives stuffed with feta cheese in sunflower
oil.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term including’, used in the applicant’s list of goods, indicates that the specific
goods are only examples of items included in the category and that protection is not
restricted to them. In other words, it introduces a non-exhaustive list of examples
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Oils and fats are identically contained in both lists of goods (including synonyms).
Decision on Opposition No B 2 821 406 page: 3 of 6
The contested processed fruits and vegetables (including nuts and pulses) include as
a broader category the opponent’s processed fruits and vegetables, dried and
cooked. Since the Opposition Division cannot dissect ex officio the broad categories
of the contested goods, they are considered identical to the opponent’s goods.
The contested olives stuffed with red peppers are included in the opponent’s
processed fruits and vegetables. Therefore they are identical.
The contested processed fungi; olives stuffed with almonds; olives stuffed with red
peppers and almonds; olives stuffed with pesto in sunflower oil; olives stuffed with
feta cheese in sunflower oil are similar to the opponent’s processed fruits and
vegetables. The olives in question are processed fruits. However, they are stuffed
with different fillings that contain almonds, pesto (made with pine nuts) and cheese.
They share distribution channels and are directed at the same relevant consumer as
the opponent’s processed fruits and vegetables. Their nature is similar, that is they
are processed foods sold often in the same formats (tins and jars) and found often on
the same shelf in the supermarket. In addition, they are competitive goods and may
be produced by the same company.
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 are directed at the
public at large.
The degree of attention is average, given that the goods in question are not
particularly expensive and are purchased quite frequently.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Spain.
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).
Decision on Opposition No B 2 821 406 page: 4 of 6
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).
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 earlier mark is a figurative mark composed of the letters ‘FG’ in white capital
letters that appear within a grey circle. The letters, that have grey stripes going
through them, have no meaning in relation to the goods at issue and so are
distinctive. Neither the grey circle, a simple geometric shape, nor the graphic
representation of the letters are particularly striking and therefore, these are weak
elements. No one element is more dominant than the others.
The contested sign is a figurative mark with the verbal elements ‘FG eco’. ‘FG’ is
represented in black bold fairly standard characters. The considerations regarding
‘FG’ above are also applicable here. The word ‘eco’ appears below and to the right in
black bold lower case letters, the ‘e’ overlapping slightly the bottom tip of the letter
‘G’. The word ‘eco’ is short for ‘ecológico’, ecological in Spanish, and is descriptive
for the goods in question which may be produced ecologically. Therefore ‘eco’ is non-
distinctive. On the left is a figurative device which represents a stylised tree in black
on a white background within a hexagonal shaped frame that is predominantly green
with hues of blue. This figurative element is weak in relation to the goods at hand that
are either the products of trees or closely related.
Visually, the signs coincide in the distinctive verbal element ‘FG’, present identically
in both signs. They differ in the non-distinctive verbal element ‘eco’ in the contested
sign which has no counterpart in the earlier mark. They differ also in the typefaces
employed and the figurative elements of both marks described above, which are
weak.
Therefore, the signs are visually similar to average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FG’,
present identically in both signs. The pronunciation differs in the sound of the non-
distinctive word ‛eco’ of the contested mark, which has no counterpart in the earlier
sign.
Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the concept of
the tree from the figurative device, which is weak, and the meaning of ‘eco’, non-
distinctive, of the contested sign, 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.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 821 406 page: 5 of 6
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 mentions the ‘reputation’ of the earlier mark in one sentence of its
allegations but no evidence was filed to support this claim which would lead to the
mark being 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 weak elements in the mark as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
According to the case law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.).
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).
In the present case the goods are identical and similar. The signs are visually similar
to an average degree and aurally highly similar. They are not conceptually similar.
The weak figurative device and the non-distinctive word ‘eco’ of the contested sign
have a low impact on differentiating between the signs. The level of attention of the
consumer is considered to be average and the earlier mark has a normal degree of
distinctive character.
The verbal element of the earlier mark is contained in its entirety at the beginning of
the contested sign. Verbal elements have a greater impact on the consumer and it is
here where the consumers’ attention will be focused. This element is also the only
distinctive element in both marks. The remaining elements, as mentioned, are either
non-distinctive or weak and are insufficient to rule out a likelihood of confusion on the
part of the Spanish 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.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand, a variation of the earlier mark, configured in a different way
according to the type of goods or services that it designates (23/10/2002, T-104/01,
Fifties, EU:T:2002:262, § 49).
Decision on Opposition No B 2 821 406 page: 6 of 6
Considering all the above, there is a likelihood of confusion on the part of the
Spanish public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 3 009 546. It follows that the contested trade mark must
be rejected for all the contested goods.
As the earlier right Spanish trade mark registration No 3 009 546 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268) or its claim of family of marks.
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
Renata COTTRELLLynn BURTCHAELLMartin EBERL
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.