OPPOSITION No B 2 697 608
Gloria S.A., Av. República de Panamá 2461, Urb. Santa Catalina, Lima, Lima 13, Peru (opponent), represented by Elena Javier Sanchez, Paseo de la Castellana, 123 – esc.dcha. 7°B, 28046 Madrid, Spain (professional representative)
a g a i n s t
Glorioso Mario, Via Mazzini 8, 91029 Santa Ninfa, Italy (applicant).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 697 608 is upheld for all the contested goods.
2. European Union trade mark application No 15 062 334 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 062 334. The opposition is based on Spanish trade mark registration No 3 539 443. 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 goods
The goods on which the opposition is based are the following:
Class 29: Fish; preserved, frozen, dried and cooked fruits and vegetables and legumes; jellies; jams; compotes; eggs; cow's milk and milk products made from cow's milk; edible oils and fats.
The contested goods are the following:
Class 29: Olive oil.
Contested goods in Class 29
The contested olive oil is included in the broad category of the opponent’s edible oils. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention will be low because the goods at issue are common consumer products that are bought quite often and are rather inexpensive.
- The signs
Earlier trade mark
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).
The earlier trade mark is a figurative mark consisting of the word ‘GLORIA‘ written in stylised dark blue characters.
The contested sign consists of an image of a ladder standing on grass, the word ‘GLORIOSO‘ and the inscription ‘- dalla mia terra –‘. The mark is depicted in purple and green.
The element ‘GLORIA’ of the earlier mark will be understood as ‘glory’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘GLORIOSO’ of the contested sign will be understood as ‘glorious’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The words ‘dalla mia terra‘ are not likely to be readily understood by the relevant public.
The image of the ladder and the word ‘GLORIOSO’ in the contested sign are the dominant elements as they are the most eye-catching.
When signs consist of both verbal and figurative components, such as in the case of the contested sign, 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 ‘GLORI*(**)’. This coincidence appears in one of distinctive and dominant elements of the contested sign. However, the marks differ in the letters ‘-A’ / ‘-OSO’ and in the image of the ladder on the grass and the inscription ‘- dalla mia terra –‘ of the contested sign that have no counterparts in the earlier trade mark. The marks also differ in the stylisation of the script and the colours.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GLORI*(**)’, present identically in both signs. The pronunciation differs in the sound of the letters ‘-A’ / ‘-OSO’. The words ‘dalla mia terra‘ in the contested sign are depicted in quite small characters and are not likely to be pronounced by the public when referring to the contested mark aurally.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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.
- Global assessment, other arguments and conclusion
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 versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods have been found identical. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will be low.
The marks are visually, aurally and conceptually similar on account of the coincidence in the string of letters ‘GLORI*(**)’ in the elements ‘GLORIA’ and ‘GLORIOSO’. The stylised word ‘GLORIA’ is the only element of the earlier mark and the word ‘GLORIOSO’ is one of the dominant and distinctive elements of the contested sign. In fact, the word ‘GLORIOSO’ will be perceived by the public as the main commercial identifier of the mark because it is distinctive, co-dominant (together with the image of the ladder) and, being a word, it has a stronger impact on the consumer than the image of the ladder. Consequently, the overall impressions created by the marks are similar.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 539 443. It follows that the contested trade mark must be rejected for all the contested goods.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.