OPPOSITION DIVISION
OPPOSITION No B 2 452 228
Evgueni Lerner, Monsheimer Str. 12c, 67549 Worms, Germany (opponent),
represented by Boehmert & Boehmert Anwaltspartnerschaft mbB –
Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany
(professional representative)
a g a i n s t
Joint-stock Company Franzeluța S.A., combinat de panificație din Chișinău, str.
Sarmizegetusa nr. 30 Chișinău 2032, Republic of Moldova (holder), represented by
Emil Mindicanu, Valerian Prescurea 27-29, Sector 4, Bucuresti, Romania
(professional representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 452 228 is partially upheld, namely for the following
contested goods:
Class 30: Coffee, tea, cocoa and artificial coffee; rice; preparations made
from cereals; bread, pastry and confectionery; sugar, honey,
treacle; mustard; sauces (condiments); spices; vinegar.
2. International registration No 1 196 240 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 196 240 (word mark), namely
against all the goods in Class 30. The opposition is based on European Union trade
mark registration No 8 747 016 (figurative mark). The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 452 228 page: 2 of 6
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.
a) The goods
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.
The goods on which the opposition is based are the following:
Class 29: Canned vegetables; gherkins; vegetable salads; olives; olive oil;
canned fruits; cooked fruits; cooked fruits; compotes; jams; preserved
fruits; marmalade.
Class 30: Pastries; cocoa products; confectionery; biscuits; confectionery
products; gingerbread; noodles; pasta; spaghetti; vermicelli;
confections; pasta; tarts; waffles; rusks; shortbread, bread; sweets;
jellied fruits; halva; honey, mustard; cornflakes.
Class 31: Grains (cereals); cereal seeds, unprocessed.
The contested goods are the following:
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.
Mustard; honey; bread; pastry and confectionery are identically contained in both lists
of goods.
The contested cocoa is included in the broad category of the opponent’s cocoa
products. Therefore, they are identical.
The contested coffee, tea, and artificial coffee are similar to the opponent’s cocoa
products. They can coincide in end user, distribution channels and method of use.
Furthermore, they are in competition.
The contested sugar is similar to the opponent’s honey. They can coincide in end
user and distribution channels. Furthermore, they are in competition.
The contested preparations made from cereals includes, as a broader category, the
opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad
Decision on Opposition No B 2 452 228 page: 3 of 6
category of the contested goods, they are considered identical to the opponent’s
goods.
The contested sauces (condiments); spices are highly similar to the opponent’s
mustard. They have the same purpose. They can coincide in producer, end user and
distribution channels. Furthermore, they are in competition.
The contested vinegar is similar to a low degree to the opponent’s mustard. They can
coincide in end user and distribution channels.
The contested rice is lowly similar to the opponent’s pasta. They can coincide in end
user, distribution channels and method of use.
The contested treacle is similar to a low degree to honey. They can coincide in end
user and distribution channels. Furthermore, they are in competition.
The contested tapioca and sago; flour; ices; yeast, baking-powder; salt; ice are
dissimilar to the opponent’s goods in Class 30. Their nature, purpose and method of
use are different. They are not in competition with each other. Furthermore, they are
usually not complementary to each other and their distribution channels, sales outlets
and producers are different. The same reasoning concerns the aforesaid contested
goods and the opponent’s goods in Classes 29 and 31.
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 various degrees)
are directed at the public at large. The degree of attention is considered to be
average.
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
Decision on Opposition No B 2 452 228 page: 4 of 6
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 figurative mark composed of the following letters, words and
numbers: ‘F’, ‘Franzeluta’ and ‘FONDAT IN 1947’. The elements ‘F’ and ‘Franzeluta’
are written in slightly stylised characters, whereas the phrase ‘FONDAT IN 1947’ is
depicted in rather standard letters. The elements ‘F’ and ‘Franzeluta’ are much larger
than the phrase ‘FONDAT IN 1947’. The earlier sign has also some figurative
elements, namely a red-gold-beige circle in which the letter ‘F’ and three ears of grain
appear (above) and a rectangular red-beige-white background with a rounded bottom
side in which the word ‘Franzeluta’ is depicted (below). To the latter element another
figurative component is attached, that is, a rectangular where the aforesaid phrase
‘FONDAT IN 1947’ appears.
The contested sign is a word mark composed of a single verbal element
‘FRANZELUTA’.
The word ‘FRANZELUTA’, present in both marks under comparison, has no meaning
and therefore it is distinctive with regard to the goods in question.
The other distinctive element of the earlier mark is the letter ‘F’ as it has no meaning
with regard to the goods in question. Regarding the phrase ‘FONDAT IN 1947’ of the
earlier mark it will be understood by most of the relevant public as ‘founded in
1947’/’established in 1947’. Trade marks, especially in the foodstuff sector, often
contain information concerning the foundation date of their proprietors. In the above
this phrase will be perceived rather as an indication to the date in which the opponent
was established. Therefore, this expression is weak. The figurative elements being
three ears of grain are also weak as they can allude to the nature of the goods in
question. With regard to the rest of figurative elements of the earlier mark, they are of
a decorative character and are therefore non-distinctive. Also the stylisation of the
letters in the earlier sign is decorative and therefore should be defined as secondary.
The contested sign, being a one-word mark, has no element that could be
considered clearly more dominant than other elements. With regard to the earlier
mark the elements ‘F’, depicted in a red circle and ‘FRANZELUTA’ in a red rectangle
are the most dominant elements as they are the most eye-catching.
Visually, the signs coincide in ‘FRANZELUTA’. However, concerning their verbal
elements they differ in the single letter ‘F’ and the expression ‘FONDAT IN 1947’.
Furthermore, the signs differ in the figurative elements of the earlier mark described
above.
Therefore, the signs are similar visually to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‘FRANZELUTA’, present identically in both signs. The pronunciation differs in the
sound of the letter ‛F’ and the phrase ‘FONDAT IN 1947’ of the earlier sign, which
have no counterparts in the contested mark. Therefore, the signs are aurally highly
similar.
It is likely that the public, when referring to the earlier mark, would pronounce only
the word ‘FRANZELUTA’ because the letter ‘F’ will be perceived as the initial letter of
Decision on Opposition No B 2 452 228 page: 5 of 6
this word and also due to the small size in which the phrase ‘FONDAT IN 1947’ is
depicted. In this case the marks under comparison are identical.
Conceptually, although the public in the relevant territory will perceive the meanings
of some elements such as the figurative elements in form of ears of grain of the
earlier mark 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. However, since these differences lay in weak or non-distinctive
elements, their impact is lower.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
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 and non-distinctive elements in the
mark, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
appreciation depends on numerous elements and, in particular, on the degree of
recognition of the mark on the market, the association that the public might make
between the two marks and the degree of similarity between the signs and the goods
and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).
The goods are identical, similar (to various degrees) and dissimilar and they target
the public at large, whose degree of attention is average. The signs are visually
similar to an average degree and aurally similar to a high degree for the relevant
public (when the public refers to the earlier mark only as ‘FRANZELUTA’, they are
identical). The signs are not conceptually similar. Furthermore, the distinctiveness of
the earlier mark is normal.
It should be noted that the distinctive and dominant element of the earlier mark,
namely ‘FRANZELUTA’, coincides with the contested sign.
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).
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
Decision on Opposition No B 2 452 228 page: 6 of 6
versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). Therefore, even a low
degree of similarity between the goods is outweighed by the high similarity (or even
the identity) between the signs.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the relevant public.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to various degrees) to those of the earlier trade
mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
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, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Ana
MUÑÍZ RODRÍGUEZ
Michal KRUK Judit
NÉMETH
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.