OPPOSITION No B 2 700 022

Azimut Consulting Tanácsadó Kft., Kossuth tér 16 I/7, 3000 Hatvan, Hungary (opponent), represented by Interinno Szabadalmi Iroda, Margit krt. 73, 1024 Budapest, Hungary (professional representative)

a g a i n s t

GG Handel i Skara AB, Box 44, 532 21 Skara, Sweden (applicant), represented by Wistrand Advokatbyrå, Lilla Bommen 1, 411 04 Göteborg, Sweden (professional representative).

On  19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 700 022 is upheld for all the contested goods.

2.        European Union trade mark application No 15 103 831 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 103 831. The opposition is based on, inter alia, European Union trade mark registration No 5 931 911. The opponent invoked Article 8(1)(b) and Article 8(4) 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 5 931 911.

1. The goods

The goods on which the opposition is based are the following:

Class 29:        Preserved, frozen, dried and cooked fruits and vegetables; tomato purée; tomato juice for cooking.

Class 32:         Tomato juice (beverage). 

The contested goods are the following:

Class 29:        Vegetables, tinned [canned (am.)]; tomato paste; tomato concentrates [puree]; tomato preserves; condensed tomatoes; processed tomatoes; tomato juice for cooking; vegetables, dried; processed vegetables; vegetables, preserved; vegetables, cooked; preserved vegetables.

Class 30:        Catsup; tomato sauce; vegetable purees [sauces]; sauces; canned sauces.

Class 31:         Fresh tomatoes; 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.

Contested goods in Class 29 

Tomato juice for cooking; ; tomato concentrates [puree]; vegetables, dried; vegetables, preserved; vegetables, cooked; preserved vegetables are identically contained in both lists of goods, despite minor differences in wordings (where applicable).

The contested vegetables, tinned [canned (am.)]; tomato paste; tomato preserves; condensed tomatoes; processed tomatoes; processed vegetables are included in the broader category of, or overlap with, the opponent’s preserved vegetables. Therefore, they are identical.

Contested goods in Class 30

The contested catsup; tomato sauce; vegetable purees [sauces]; sauces; canned sauces are all sauces and condiments which are similar to a high degree to the opponent´s preserved vegetables in Class 29, because they share the same purpose, are in competition with each other and coincide in their pertinent distribution channels, producers and relevant public.

Contested goods in Class 31

The contested fresh tomatoes; vegetables, fresh are similar to a low degree to the opponent´s tomato juice (beverage) in Class 32. Although the former are unprocessed and the latter processed, they can coincide in producer, relevant public and distribution channels. 

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 identical or similar are directed at the public at large. The degree of attention will be at most average for these inexpensive and frequently purchased goods.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the earlier sign are meaningful in certain territories, for example in those countries where Hungarian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the public.

The earlier mark is a 3D mark representing a tin which depicts a stylised pheasant in black and gold in side profile. It is set between the smaller words “Sűrített Paradicsom” and “aranyfácán” against a decorative, red background. The red tin merely indicates the packaging of the goods at issue and is devoid of any distinctiveness. However, the stylised pheasant is not descriptive, allusive or otherwise weak for the relevant goods. It is, therefore, distinctive.

The earlier trade mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered, and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested mark is a figurative sign consisting of a stylised pheasant in black and gold, from the same perspective and in the same stance as in the earlier mark, above the word “Goldfasan”, which is stylised and depicted in black and gold. The depiction of a pheasant together with its description, are not descriptive, allusive or otherwise weak for the relevant goods. Therefore, both elements of the contested sign are distinctive.

Conceptually, both signs will be perceived as depicting a golden pheasant (this coinciding element being distinctive), above a word element which merely reinforces the image. This is because Hungarian public will understand that the word “Goldfasan” of the contested mark means the same as the word “aranyfácán” (Golden pheasant in Hungarian) of the earlier mark, due to the similarity of the words “fasan” and “fácán” (for pheasant), and the fact that “gold” is a generally known English word. It follows that these elements are conceptually identical. The Hungarian public will further understand that the remaining words of the earlier sign “Sűriíett Paradicsom” (concentrated tomato) merely contain descriptive information of secondary importance. The signs are conceptually similar to a high degree.

Visually, the signs coincide in the virtually identical stylised representation of the pheasant, which is distinctive, and the black and gold stylisation of their respective word elements. The word element “fácán” of the earlier sign is also highly visually similar to the “fasan” of the contested mark. The signs differ in that the contested mark features the additional word “Gold”, while the earlier displays the additional words “Sűriíett Paradicsom” and “arany” on a tin against a red background. The tin and the background are non-distinctive components which are being purely decorative, while the wording on the tin is smaller than the figurative element and has less impact in the perception of the public. Therefore, the signs are highly similar.

Aurally, the letters “fá” and “án” of the earlier sign´s “fácán” will be pronounced in a highly similar way to the “fa” and ”an” of the contested sign´s “fasan”. The middle consonant of both signs will be pronounced differently, as will the differing word elements “Gold” of the contested sign and “arany” together with “Sűrített Paradicsom” of the earlier sign, the latter however having very low impact on the overall impression of the sign. Therefore, the signs are aurally similar to a low degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 contested goods have been found partially identical and partially similar to varying degrees to goods covered by the earlier mark. The earlier mark is deemed to have a normal degree of distinctiveness. The signs differ in that the earlier mark is a 3D illustration of how the mark appears on tinned goods against a red background which is purely decorative, and additional information of a secondary nature. These differing elements are non-distinctive components. The additional difference resulting from the verbal elements “aranyfácán” in the earlier mark and “Goldfasan” in the contested sign is insufficient for removing the overall impressions produced by the signs sufficiently far as to enable the relevant public to safely distinguish between them.

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).

Considering all the above, the differing elements are not sufficient for the relevant public to hold the signs apart, and there is a likelihood of confusion on the part of the Hungarian-speaking part of the public in the European Union (even when displaying an average degree of attentiveness). Considering the interdependence principle, the Opposition Division is of the opinion that, in view of the high similarity between the signs (conceptually and visually), there is a likelihood of confusion even for the goods found to be similar to a low degree only.

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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 931 911 pursuant to Article 8(1)(b) EUTMR.

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

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 5 931 911 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) EUTMR.

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

Solveiga BIEZA

Keeva DOHERTY

Judith NEMETH

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.