OPPOSITION DIVISION
OPPOSITION No B 2 634 528
Duru Bulgur Gida San. Ve Tic. Ltd. Sti., Organize Sanayi Bölgesi Pk. 3, Karaman,
Turkey (opponent), represented by Živko Mijatović & Partners, Avenida Fotógrafo
Francisco Cano 91ª, 03540 Alicante, Spain (professional representative)
a g a i n s t
TSI GmbH & Co. KG, Südring 26, 27404 Zeven, Germany (applicant), represented
by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee
73, 28209 Bremen, Germany (professional representative).
On 16/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 634 528 is partially upheld, namely for the following
contested goods:
Class 29: Frozen, preserved, dried and/or cooked fruits and vegetables;
preserved maize; dried, frozen, candied, cooked and/or preserved
fruits and fruit mixes; dried and preserved mushrooms, peas and
beans; the aforesaid goods not containing rice.
Class 30: Farinaceous food pastes, noodles, corn (processed) and corn
products; muesli, cornflakes; corn, roasted; corn for popcorn;
popcorn; ready-to-eat combinations consisting mainly of corn, fat,
sugar and salt for making popcorn; cereal bars, muesli slices; flour
and preparations made from cereals; processed grains (cereals),
wheat and corn products being snacks, chips (cereal products); the
aforesaid goods not containing rice.
2. European Union trade mark application No 13 896 345 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against some of the goods of European Union trade
mark application No 13 896 345 ‘GURU’, namely against all the goods in Classes 29
and 30. The opposition is based on European Union trade mark registration
Decision on Opposition No B 2 634 528 page: 2 of 12
No 438 101, for the figurative sign, . The opponent invoked Article 8(1)(b)
EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely European Union trade mark No 438 101, for
the figurative sign, .
The contested application was published on 07/12/2015. The opponent was therefore
required to prove that the trade mark on which the opposition is based was put to
genuine use in the European Union from 07/12/2010 to 06/12/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade mark
was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 29: Dried pea, dried bean, dried chickpea, dried lentil and dried broad
bean.
Class 30: Macaroni, biscuits, wafers, bakery products; pastry products; cream-
cakes, cakes, pizza, flour, semolina, cornstarch, rice, bulgur (boiled
and pounded wheat), corn, wheat, corn flakes.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 30/06/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
05/09/2016 to submit evidence of use of the earlier trade mark. On 05/09/2016,
within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Decision on Opposition No B 2 634 528 page: 3 of 12
Annex 1: dozens of invoices for the sale of ‘DURU’ products to various clients in
several EU countries. The invoices show sales of tons of products for tens of
thousands of euros and are dated between 2012 and 2015.
Annex 2: press clippings concerning the offer of ‘DURU’ goods in Germany and
the Netherlands.
Annex 3: catalogues of ‘DURU’ products (in German, English, Danish and Turkish,
undated), an undated price list and a catalogue of ‘Adese Markt’ in Hamburg,
Germany, dated in 2011.
Annex 4: photographs of the ‘DURU’ stand at various food exhibitions and fairs in
Germany, France and the United Kingdom; several articles about the presence
of ‘DURU’ at exhibitions and fairs and about sponsorship in France, Latvia and
Germany; several articles about the presence of ‘DURU’ at various events in
Turkey. One of the photographs is dated in October 2010 and the other
photographs are undated. The remaining documents are dated between
February 2014 and June 2015.
Annex 5: undated photographs of shops and sales points in Germany and Turkey
where ‘DURU’ products are offered for sale.
Annex 6: screenshots from the opponent’s website with information about the
history of the opponent’s company dating back to 1935, screenshots from the
websites of Amazon and Ebay showing the offer of ‘DURU’ products for sale
(dated in August 2016), and screenshots from other website concerning the use
of ‘DURU’ (either undated or dated after the relevant period).
Annex 7: a chart with the opponent’s yearly sales figures for 2010-2015 broken
down by countries, including many of the EU countries.
The applicant argues that the opponent did not submit translations of some of the
evidence of use which is not in the language of the proceedings but for example in
German. However, the opponent is not under any obligation to translate the proof of
use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR,
former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the
nature of the documents that have not been translated and are considered relevant
for the present proceedings, namely, invoices, press clippings or catalogues, and
their self-explanatory character, the Opposition Division considers that there is no
need to request a translation.
The applicant contests the evidence of use filed by the opponent on the grounds that
the invoices in Annex 1 do not originate from the opponent itself but from other
companies.
According to Article 18(2) EUTMR, use of the EUTM with the consent of the
proprietor is deemed to constitute use by the proprietor. The fact that the opponent
submitted evidence of use of its marks by a third party implicitly shows that it
consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
Consequently, since it can be presumed that the evidence filed by the opponent is an
implicit indication that use has been made with its consent, the applicant’s claim is
unfounded. To this extent, and in accordance with Article 18(2) EUTMR, the
Opposition Division considers that the use made by those other companies was
made with the opponent’s consent and thus is equivalent to use made by the
opponent.
Most of the documents (e.g. invoices, press clippings or catalogues) show that the
place of use is in various countries of the European Union, for example Germany,
Sweden, Poland, Belgium, Denmark or France. This can be inferred from the
Decision on Opposition No B 2 634 528 page: 4 of 12
language of the documents (e.g. German or Swedish) and some addresses in those
countries. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, especially the invoices, provide the Opposition Division with
sufficient information concerning the commercial volume, the territorial scope, the
duration, and the frequency of use.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and (3)
EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the mark as registered is the following:
The mark appears in the evidence mostly in the following forms:
1.
2. DURU
The stylisation of letters in the trade mark as registered and in the trade mark as
used under no 1 is relatively basic and does not depart significantly from the
standard shape of the letters ‘D’, ‘U’ and ‘R’. The word ‘BULGUR’ in the mark as used
under no 1 is a descriptive indication of the kind of goods and it is also quite small.
The rectangular background in the mark as used under no 1 plays only a decorative
role. Consequently, the mark as used differs only in minor elements that do not alter
the distinctive character of the mark as registered. For the above reasons, the
Opposition Division cannot agree with the applicant’s argument that the form of use
of the mark, namely the different stylisation of the script, alters the distinctive
character of the mark.
In view of the above, the Opposition Division considers that the evidence does show
use of the sign as registered within the meaning of Article 18(1), second
subparagraph, point (a), EUTMR.
Decision on Opposition No B 2 634 528 page: 5 of 12
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the
opponent is sufficient to prove genuine use of the earlier trade mark during the
relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods covered by the earlier trade mark.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some of the goods or services for which it is registered it will, for the purposes
of the examination of the opposition, be deemed to be registered in respect only of
those goods or services.
In the present case, the evidence shows genuine use of the trade mark only for the
following goods:
Class 29: Dried bean, dried chickpea, dried lentil and dried broad bean.
Class 30: Rice, bulgur (boiled and pounded wheat), corn, wheat.
Therefore, the Opposition Division will only consider the abovementioned goods in its
further examination of the opposition.
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 goods on which the opposition is based are the following:
Class 29: Dried bean, dried chickpea, dried lentil and dried broad bean.
Class 30: Rice, bulgur (boiled and pounded wheat), corn, wheat.
Decision on Opposition No B 2 634 528 page: 6 of 12
The contested goods are the following:
Class 29: Frozen, preserved, dried and/or cooked fruits and vegetables;
preserved maize; dried, frozen, candied, cooked and/or preserved fruits and fruit
mixes; dessert mixes based on milk, powdered milk and/or fruits, fats and oil of
animal and plant origin, edible oils and edible fats; processed nuts and almonds,
dried, roasted, salted and/or spiced nut kernels, peanut, cashew and almond kernels;
snacks with a base of dried potatoes, potato crisps, potato sticks; dried and
preserved mushrooms, peas and beans; soups, soups being canned or instant
products, soup (preparations for making -), extracts for preparing ready-to-serve
soups; milk and milk products, whey and whey powder, milk creams as food spreads,
butter, peanut butter, cheese products, parmesan, milk cream, yoghurt, kefir [milk
beverage], buttermilk, curds, herb quark, spice quark, dried milk, milk concentrates
for foodstuffs, non-alcoholic mixed milk beverages (milk predominating), including in
the form of instant beverages, coffee creamer; jams; desserts and prepared
desserts, dessert mixes, in particular powdered dessert mixes, all of the aforesaid
desserts based on milk and powdered milk; the aforesaid goods not containing rice.
Class 30: Coffee, artificial coffee, coffee extracts, coffee concentrates, iced
coffee, cappuccino, cocoa, cocoa-based beverages, chocolate-based beverages,
tea, tea substitutes, tea extracts, tea concentrates, fruit teas, vanilla tea, herbal teas
(not for medical purposes), liquid and/or dry extracts and preparations, in particular
instant powder and syrups for making coffee, tea, cappuccino coffee and cocoa-
based beverages; coffee, tea, cocoa, and cappuccino preparations, ready to drink
and composed primarily of coffee, tea or cocoa powder, including in instant form,
milk cocoa powder, milk cocoa concentrate; farinaceous food pastes, tacos, noodles,
corn (processed) and corn products; muesli, cornflakes; corn, roasted; corn for
popcorn; popcorn; ready-to-eat combinations consisting mainly of corn, fat, sugar
and salt for making popcorn; cereal bars, muesli slices; extruded confectionery, in
particular made of or using nuts, butter, fat, sesame, cocoa and sugar; flour and
preparations made from cereals; sugar, vanilla sugar, sweeteners (natural -), natural
sugar substitutes, essences for foodstuffs, except etheric essences and essential
oils; bread, pastry and confectionery, baked goods, biscuits, long-life baked goods,
savoury and pretzel-type baked goods, pretzel sticks, cakes, ready-made mixes for
pastry and confectionery, baking powder, dough mixes, ready-made pastry, ready-
made desserts and dessert mixes in the form of confectionery, in particular powdered
dessert mixes; processed grains (cereals), wheat and corn products being snacks,
chips (cereal products); puddings, including with added fruit; nougat, nut and
chocolate creams; edible ices; confectionary; confectionery, sponge confectionery;
sweetmeats [candy], in particular caramel sweets, herbal candies, lollipops, wafers
filled with foam sugar, in particular wafers filled with foam sugar; chocolate, chocolate
goods, cocoa products, pralines (filled and non-filled), liquorice (confectionery), fruit
gums; chewing gum; yeast, salt, herbal salts, vinegar, sauces (condiments), spices,
and powders and extracts thereof, condiments, in particular condiments containing
herbs; liquid seasonings, aromatic preparations for food; dried and/or preserved
garden herbs, and powders and extracts thereof, mixed herbs, herbal extracts,
medicinal herbs, preserved or processed extracts of medicinal herbs; mustard,
ketchup, mayonnaise, remoulade; marinades, dressings; the aforesaid goods not
containing rice.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘in particular’ and ‘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
Decision on Opposition No B 2 634 528 page: 7 of 12
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.
Contested goods in Class 29
The contested frozen, preserved, dried and/or cooked fruits and vegetables;
preserved maize; dried, frozen, candied, cooked and/or preserved fruits and fruit
mixes; dried and preserved mushrooms, peas and beans; the aforesaid goods not
containing rice are at least similar to a low degree to the opponent’s dried bean, dried
chickpea, dried lentil and dried broad bean in Class 29 (i.e. various types of legumes)
as they coincide in producer, relevant consumer and distribution channels.
The remaining contested goods, namely dessert mixes based on milk, powdered
milk and/or fruits, fats and oil of animal and plant origin, edible oils and edible fats;
processed nuts and almonds, dried, roasted, salted and/or spiced nut kernels,
peanut, cashew and almond kernels; snacks with a base of dried potatoes, potato
crisps, potato sticks; soups, soups being canned or instant products, soup
(preparations for making -), extracts for preparing ready-to-serve soups; milk and
milk products, whey and whey powder, milk creams as food spreads, butter, peanut
butter, cheese products, parmesan, milk cream, yoghurt, kefir [milk beverage],
buttermilk, curds, herb quark, spice quark, dried milk, milk concentrates for
foodstuffs, non-alcoholic mixed milk beverages (milk predominating), including in the
form of instant beverages, coffee creamer; jams; desserts and prepared desserts,
dessert mixes, in particular powdered dessert mixes, all of the aforesaid desserts
based on milk and powdered milk; the aforesaid goods not containing rice, cover a
wide range of food products including for example various types of desserts, snacks,
ready-made meals or milk products. On the other hand, the opponent’s goods in
Classes 29 and 30 are various types of legumes and cereals serving as basic
ingredients for preparing meals. The goods under comparison are considered to be
dissimilar. They have a different nature, purpose of use and mostly also the method
of use. They are neither in competition nor clearly complementary. Moreover, the
usual commercial origin of the goods is different and these goods are not usually sold
next to each other in supermarkets or food shops.
Contested goods in Class 30
The contested corn (processed) and corn products; corn, roasted; corn for popcorn;
popcorn; ready-to-eat combinations consisting mainly of corn, fat, sugar and salt for
making popcorn; the aforesaid goods not containing rice are at least similar to the
opponent’s corn in Class 30. These goods share the same nature (corn-based) and
have the same or similar purpose and method of use. They also coincide in
distribution channels and relevant consumers.
The contested farinaceous food pastes, noodles; the aforesaid goods not containing
rice are similar to a low degree to the opponent’s rice in Class 30 as they can
coincide in the relevant consumer, distribution channels and method of use.
The contested muesli, cornflakes; cereal bars, muesli slices; flour and preparations
made from cereals; processed grains (cereals), wheat and corn products being
Decision on Opposition No B 2 634 528 page: 8 of 12
snacks, chips (cereal products); the aforesaid goods not containing rice are at least
similar to a low degree to the opponent’s bulgur (boiled and pounded wheat), corn,
wheat in Class 30. These goods share the same nature (cereal-based) and have the
same or similar purpose and method of use. They also coincide in distribution
channels and relevant consumers.
The remaining contested goods, namely coffee, artificial coffee, coffee extracts,
coffee concentrates, iced coffee, cappuccino, cocoa, cocoa-based beverages,
chocolate-based beverages, tea, tea substitutes, tea extracts, tea concentrates, fruit
teas, vanilla tea, herbal teas (not for medical purposes), liquid and/or dry extracts
and preparations, in particular instant powder and syrups for making coffee, tea,
cappuccino coffee and cocoa-based beverages; coffee, tea, cocoa, and cappuccino
preparations, ready to drink and composed primarily of coffee, tea or cocoa powder,
including in instant form, milk cocoa powder, milk cocoa concentrate; tacos; extruded
confectionery, in particular made of or using nuts, butter, fat, sesame, cocoa and
sugar; sugar, vanilla sugar, sweeteners (natural -), natural sugar substitutes,
essences for foodstuffs, except etheric essences and essential oils; bread, pastry
and confectionery, baked goods, biscuits, long-life baked goods, savoury and pretzel-
type baked goods, pretzel sticks, cakes, ready-made mixes for pastry and
confectionery, baking powder, dough mixes, ready-made pastry, ready-made
desserts and dessert mixes in the form of confectionery, in particular powdered
dessert mixes; puddings, including with added fruit; nougat, nut and chocolate
creams; edible ices; confectionary; confectionery, sponge confectionery; sweetmeats
[candy], in particular caramel sweets, herbal candies, lollipops, wafers filled with
foam sugar, in particular wafers filled with foam sugar; chocolate, chocolate goods,
cocoa products, pralines (filled and non-filled), liquorice (confectionery), fruit gums;
chewing gum; yeast, salt, herbal salts, vinegar, sauces (condiments), spices, and
powders and extracts thereof, condiments, in particular condiments containing herbs;
liquid seasonings, aromatic preparations for food; dried and/or preserved garden
herbs, and powders and extracts thereof, mixed herbs, herbal extracts, medicinal
herbs, preserved or processed extracts of medicinal herbs; mustard, ketchup,
mayonnaise, remoulade; marinades, dressings; the aforesaid goods not containing
rice, cover a wide range of food products and beverages including for example
coffee, teas, various types of sweet foods, pastry, various sweeteners, seasonings or
flavourings. On the other hand, the opponent’s goods in Classes 29 and 30 are, as
already mentioned above, various types of legumes and cereals serving as basic
ingredients for preparing meals. The goods under comparison are considered to be
dissimilar. They have a different nature, purpose and method of use. They are neither
in competition nor clearly complementary. Moreover, the usual commercial origin of
the goods is different and these goods are not usually sold next to each other in
supermarkets or food shops.
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 similar (to various degrees) are directed at
the public at large.
The degree of attention of consumers during the purchase of the goods involved will
vary from average to low. A lower than average degree of attention will occur in
relation to goods that, for instance, are of low prices or bought quite regularly.
Decision on Opposition No B 2 634 528 page: 9 of 12
c) The signs
GURU
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 applicant asserts that the word ‘GURU’ has the meaning of ‘acknowledged
leader or chief proponent’ for all the consumers in the European Union. Although it is
true that this word has such a meaning in many of the EU languages, it is not so in
French where the corresponding word is different, namely ‘gourou’. For the French-
speaking public, the word ‘GURU’ (prounounced /gyry/, i.e. in a different way than
‘GURU’ in English or other languages) will primarily be perceived as a fanciful word
with no meaning.
The word ‘GURU’ of the contested sign is not meaningful in certain territories, for
example in those countries where French is spoken. Consequently, the Opposition
Division finds it appropriate to focus the comparison of the signs on the French-
speaking part of the public.
The element ‘DURU’ of the earlier mark and the word ‘GURU’ of the contested sign
have no meaning for the relevant public and are, therefore, distinctive.
The stylisation of script in the earlier trade mark is not very elaborated and does not
depart significantly from standard upper case or lower case letters. Consequently, the
stylisation plays only an ancillary decorative role.
Visually, the signs coincide in the same string of letters ‘*URU’. The signs also have
the same length and structure as they both consist of only one word composed of
four letters. However, the signs differ in the initial letter ‘D’/’G’ and in the stylisation of
the earlier mark.
Therefore, the signs are visually similar to an average degree.
Decision on Opposition No B 2 634 528 page: 10 of 12
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*URU’,
present identically in both signs. The pronunciation differs in the sound of the initial
letter ‘D’/’G’ of the marks which however presents a certain aural similarity because
both these letters are consonants with short sound made by a quick puff of air
coming from the mouth.
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the relevant public. Since a
conceptual comparison is not possible, the conceptual aspect does not influence the
assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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 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 relevant public.
Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The goods are partially similar (to various degrees) and partially dissimilar. The
earlier trade mark’s distinctiveness is normal and the degree of attention of the
relevant public will vary between low and average.
When assessing likelihood of confusion between two marks, account must 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).
In essence, the marks coincide in the string of three letters ‘*URU’ and differ in the
initial letter ‘D’/’G’. Although the marks are relatively short, as correctly pointed out by
the applicant, the difference in the first letter is not considered sufficient for the
consumer to clearly tell the marks apart in the present case (especially when the low
degree of attention of the public comes into play). It is important to note that both
‘DURU’ and ‘GURU’ are fanciful words having no meaning for the relevant French-
speaking public which means that there is no concept behind any of the marks that
could help the public to differentiate them. On balance, the similarities between the
marks prevail over the dissimilarities and it is, therefore, considered that the overall
impressions created by the marks are similar.
The applicant argues that consumers usually pay greater attention to the beginning
of the mark than to the end and that in this case, the beginning of the marks is
Decision on Opposition No B 2 634 528 page: 11 of 12
different. The Opposition Division observes that the marks here are made of only four
letters which means that the public is more likely to perceive them as a whole at once
than to perceive their beginning, middle part and end gradually. Consequently, the
opponent’s argument must be set aside.
The applicant also asserts that the word ‘GURU’ has the meaning of ‘acknowledged
leader or chief proponent’ for all the consumers in the European Union. Although it is
true that this word has such a meaning in many of the EU languages, it is not so in
French where the corresponding word is different, namely ‘gourou’. For the French-
speaking public, the word ‘GURU’ (prounounced /gyry/, i.e. in a different way than
‘GURU’ in English or other languages) will primarily be perceived as a fanciful word
with no meaning. Consequently, there is no conceptual difference between the marks
for the French-speaking public and the ‘Picasso’ judgment (12/11/2006, C-361/04)
referred to by the applicant cannot apply in this case.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the French-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. 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.
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 rest of the contested goods are dissimilar. As identity/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.
Decision on Opposition No B 2 634 528 page: 12 of 12
The Opposition Division
Inés GARCÍA LLEDÓ Vít MAHELKA María del Carmen SUCH
SANCHEZ
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.