OPPOSITION No B 2 693 169

Sotya Dietéticos, S.A., Jarama, s/n, 28891 Velilla de San Antonio (Madrid), Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

SC Depal SRL, Bucuresti, Sector 6, Bulevardul Timisoara, nr 17B parter, Bloc 106B, Bucuresti, Rumania (applicant), represented by Bogdan Alecu, Brasov, strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 169 is partially upheld, namely for the following contested goods:

Class 29: Processed fruits (including nuts and pulses); banana chips; candied nuts; Bombay mix

Class 30: Convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, tortilla bread dishes; baked goods, confectionery, and desserts; bee products; processed grains and goods made thereof, baking preparations.

2.        European Union trade mark application No 14 666 754 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 666 754. The opposition is based on Spanish trade mark registration No 975 163. 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.

1. The goods

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

Class 29: Non-medicinal dietetic food products made of cereals, raisins, almonds, dried fruits, mix of flours, honey and other.

The contested goods are the following:

Class 29: Birds eggs and egg products; dairy products and dairy substitutes; fish, seafood and molluscs; meats; oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); antipasto salads; artificial milk based desserts; banana chips; beef bouillon; beef stew; bisques; blancmanges; bottled vegetables; bouillon; bouillon concentrates; breaded and fried jalapeno peppers; broth [soup]; bulgogi [korean beef dish]; caesar salad; candied nuts; canned pork and beans; canned soups; caponata; casseroles [food]; chicharron; chicken croquettes; chicken salad; chicken stock; chile con queso; Bombay mix.  

Class 30: Convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers, dumplings, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, sandwiches and pizzas, spring and seaweed rolls, steamed buns, tortilla bread dishes; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; sugars, natural sweeteners, sweet coatings and fillings, bee products; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts.  

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; foodstuffs and fodder for animals.

Preliminary remark:

The opponent’s list of goods includes a vague expression, namely ‘and other’. The practice of the Office is to not allow the vagueness of a term contained in the earlier mark to be the sole reason for a finding of similarity. When a vague term is detected in the earlier mark, the vague term will only be afforded its natural and usual meaning, which cannot extend to properties or qualities not expressly mentioned in relation to that vague term.

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

The contested processed fruits (including nuts and pulses); banana chips; candied nuts; Bombay mix are highly similar to the opponent’s non-medicinal dietetic food products made of cereals, raisins, almonds, dried fruits, mix of flours, honey and other. Indeed, the goods at issue are all foodstuffs that can all be produced by the same companies, are targeted at the same public and are likely to be found in the same outlets or in the departments or shelves in such outlets. The contested goods can also be in competition with the earlier goods.

The contested birds eggs and egg products; dairy products and dairy substitutes; fish, seafood and molluscs; meats; oils and fats; processed fungi and vegetables; antipasto salads; artificial milk based desserts; beef bouillon; beef stew; bisques; blancmanges; bottled vegetables; bouillon; bouillon concentrates; breaded and fried jalapeno peppers; broth [soup]; bulgogi [korean beef dish]; caesar salad; canned pork and beans; canned soups; caponata; casseroles [food]; chicharron; chicken croquettes; chicken salad; chicken stock; chile con queso have nothing in common with the opponent’s non-medicinal dietetic food products made of cereals, raisins, almonds, dried fruits, mix of flours, honey and other in terms of nature. While they are all foodstuffs, they satisfy different needs and are neither complementary nor in competition. They are not generally produced by the same companies and even when found in the same outlets, they are placed in different departments or shelves. Therefore the goods at issue are dissimilar.

Contested goods in Class 30

The contested convenience food and savory snacks namely corn, cereal, flour and sesame based snacks, crackers, pancakes, pasta, rice and cereal dishes, pies and pastry dishes, tortilla bread dishes; baked goods, confectionery, and desserts; bee products; processed grains and goods made thereof, baking preparations are at least similar to a low degree to the opponent’s non-medicinal dietetic food products made of cereals, raisins, almonds, dried fruits, mix of flours, honey and other. Indeed, the goods at issue are all foodstuffs and while they may satisfy different needs, they can all be produced by the same companies taking into account they can all be made of cereals, raisins, almonds, dried fruits, mix of flours, honey. They are also likely to be found in the same outlets or in the departments or shelves in such outlets. Some of the contested goods can also be in competition with the earlier goods.

On the other hand, the contested dumplings, sandwiches and pizzas, spring and seaweed rolls, steamed buns, salts, seasonings, flavourings and condiments; chocolate; sugars, natural sweeteners, sweet coatings and fillings, ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; starches, and yeasts and the opponent’s goods are dissimilar. While they are all foodstuffs, they satisfy different needs and are neither complementary nor in competition. They are not generally produced by the same companies and even when found in the same outlets, they are placed in different departments or shelves.

Contested goods in Class 31

The contested agricultural and aquacultural crops, horticulture and forestry products; foodstuffs and fodder for animals and the opponent’s goods are dissimilar. Indeed, while the opponent’s goods may contain some of the contested goods, it remains that the former are processed foodstuffs for humans whereas the latter are either not processed or are directed at animals. Therefore, they have a different purpose. Moreover, they are neither complementary nor in competition; they are not generally produced by the same companies and even when found in the same outlets, they are placed in different departments or shelves.

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 various degrees are directed at the public at large. The degree of attention is deemed average.

3. The signs

GRANOLA
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).

The earlier mark is a word mark that has no meaning for the relevant public and is, therefore, distinctive. The mark has no elements that could be considered clearly more eye-catching (dominant) than other elements

The contested sign is a figurative mark consisting of the capitalized word ‘GRANOLA’, written in bold white letters and placed in a green frame with a black outline. As seen above, this word has no meaning for the relevant public. The sign also contains a device, namely a green leaf which is of limited distinctiveness as it can be perceived as a reference to the natural character of some of the ingredients of the goods. In this respect, it should also be noted that 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 letters ‘GRANOLA’ albeit represented in a specific way in the contested sign. The signs differ in the graphic and figurative elements of the contested sign which, however, have less of an impact on the consumer for the reasons explained above. Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of all their letters. Therefore, the signs are identical.

Conceptually, while the signs at issue are not similar given the presence of a concept in the contested sign which has no counterpart in the earlier mark, namely the concept conveyed by the representation of a leaf, it remains that this element is of limited distinctiveness and will not have much of an impact the attention of the relevant public which will rather be caught by the fanciful word ‘GRANOLA’, present in both signs, which has no meaning.

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.

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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, part of the goods at issue are similar to a various degree and part are dissimilar. The degree of attention displayed by the public is deemed average and the signs are visually highly similar and aurally identical. Account must also be 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, and in particular the abovementioned principle of interdependence, whereby a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the signs, the Opposition Division considers that there is a likelihood of confusion on the part of the Spanish public.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to various degrees to those of the earlier trade mark.

The remaining 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Sandra IBAÑEZ

Martina GALLE

Benoit VLEMINCQ

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.