OPPOSITION No B 2 691 544

Productes Alimentaris la Perla, S.L., Goya, 6, 08400 Granollers, Spain (opponent), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

United Sugar Company, P.O. Box 23023, Jeddah 21426, Saudi Arabia (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street, Walthamstow, London E17 9AP, United Kingdom (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 544 is partially upheld, namely for the following contested goods and services:

Class 29:        Meat; fish; poultry; game; Preserved fruits; Preserved vegetables; Dried fruit; Dried vegetables; Cooked vegetables; Cooked fruits; Jellies, jams, compotes, fruit and vegetable spreads; Eggs; Milk; Milk Products; Desserts made from milk products.

Class 30:        Coffee; Artificial coffee and tea; Tea; Cocoa; Cocoa Products; Rice; Tapioca; Rice tapioca; Flour; Cereal Flour; cereal preparations; Preparations made from cereals; Bread; Confectionery; Honey; baking powder; Vinegar; Sauces [condiments]; spices; Ice; Sugar; Sago; Flour preparations for food; Treacle; Yeast; Pastries.

Class 35:        Retail services in relation to foodstuffs; Wholesale services in relation to foodstuffs.

2.        European Union trade mark application No 14 778 617 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 778 617, namely against all the goods and services in Classes 29, 30 and 35. The opposition is based on European Union trade mark registration No 8 288 631 and Spanish national trade mark registration No 2 871 400. The opponent invoked Article 8(1)(a) and (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 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 Spanish national trade mark registration No 2 871 400.

1. The goods and services

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

Class 29:        Meat, fish, poultry and game; meat extracts; fruits and vegetables and canned vegetables, frozen, dried and cooked; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa and coffee substitutes; 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.

The contested goods and services are the following:

Class 29:        Meat; fish; poultry; game; Preserved fruits; Preserved vegetables; Dried fruit; Dried vegetables; Cooked vegetables; Cooked fruits; Jellies, jams, compotes, fruit and vegetable spreads; Eggs; Milk; Milk Products; Desserts made from milk products.

Class 30:        Coffee; Artificial coffee and tea; Tea; Cocoa; Cocoa Products; Rice; Tapioca; Rice tapioca; Flour; Cereal Flour; cereal preparations; Preparations made from cereals; Bread; Confectionery; Honey; baking powder; Vinegar; Sauces [condiments]; spices; Ice; Sugar; Sago; Flour preparations for food; Treacle; Yeast; Pastries.

Class 35:        Advertising; business management; business administration; Office functions; Retail services in relation to foodstuffs; Wholesale services in relation to foodstuffs.

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

Meat, fish, poultry, dried fruits, dried vegetables, cooked vegetables, cooked fruits, jellies, jams, compotes, eggs, milk and milk products are identically contained in both lists of goods and services.

The contested preserved fruits include, as a broader category, the opponent’s canned, frozen, dried and cooked fruits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested preserved vegetables include, as a broader category, the opponent’s canned, frozen, dried and cooked vegetables. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested fruit spreads are included in or overlap with the opponent’s jellies and jams. Therefore, they are identical.

The contested vegetable spreads are included in or overlap with the opponent’s canned and cooked vegetables. Therefore, they are identical.

The contested desserts made from milk products are included in or overlap with the opponent’s milk products. Therefore, they are identical.

Contested goods in Class 30

The contested coffee, artificial coffee, tea, cocoa, rice (listed twice), tapioca (listed twice), flour, cereal preparations, preparations made from cereals, bread, confectionery, honey, baking-powder, vinegar, sauces (condiments), spices, ice, sugar, sago, treacle; yeast; pastries are identically contained in the opponent’s list of goods and services (including synonyms).

The contested flour preparations for food include, as a broader category, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cocoa products include, as a broader category, the opponent’s cocoa. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cereal flour is included in the broad category of the opponent’s flour. Therefore, they are identical.

Contested services in Class 35:

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to foodstuffs and wholesale services in relation to foodstuffs are similar to a low degree to the opponent’s various foodstuffs in Classes 29 and 30.

The remaining contested advertising; business management; business administration; office functions are services consisting of providing:

• assistance to others in the sale and/or the launch of their goods and services;
• assistance to companies in managing their business by setting out the strategy and/or direction of the company;
• assistance to companies in the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors; and
• assistance to companies in the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’.

Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the contested services and all the opponent’s goods are provided by very different types of companies (e.g. food producers versus advertising agencies) and they target different consumers (on the one hand, the general public looking for foodstuffs and, on the other, business owners and operators). Moreover, they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

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 and highly similar are mass produced and relatively cheap everyday items directed at the public at large. The degree of attention is considered to vary from low to average. With regard to the retail and wholesale services found to be similar to a low degree, the degree of attention is considered average.

3. The signs

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 figurative mark consisting of the verbal element ‘Halah’, depicted in a slightly stylised black font. The verbal element does not have a meaning for the relevant public. Underneath the verbal element is a black and white drawing of two women, each putting a long stick in a bucket.

The contested mark is a figurative mark consisting of the verbal element ‘Hala’, depicted in an easily legible light-grey font. To the left of and underneath the verbal element is an abstract device consisting of four thick curved lines pointing in different directions, depicted in blue and grey. The Spanish word ‘hala’ is an interjection expressing encouragement or disbelief and translates as ‘come on!’, ‘wow!’ or ‘hey!’ (see http://www.spanishcentral.com/translate/hala). However, it has no particular meaning in relation to the relevant goods and services, and therefore it cannot be considered weak.

The verbal element ‘Halah’ of the earlier mark does not have a meaning in Spanish and will not be perceived by the relevant public as a misspelling of the word ‘hala’. The earlier mark has no element that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘Hala’. The signs differ in their fonts and their figurative elements, as well as in the additional letter ‘h’ of the earlier mark’s verbal element. Therefore, the signs are similar to an average degree.

Aurally, the signs are identical, as the additional letter ‘h’ of the earlier sign does not influence the pronunciation of the earlier mark.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element of the contested sign, as explained above, the other sign has no meaning for the relevant public when perceived visually. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

However, when the signs are perceived aurally, they are conceptually identical, because of the aural identity between the verbal elements.

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 and services 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

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).

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).

The contested goods are identical or highly similar to the opponent’s goods; the contested services are similar to a low degree or dissimilar to the opponent’s goods. The similarity between the signs results in particular from the fact that they are aurally identical Moreover, as explained in section c) of this decision the verbal elements from which the similarity arises are distinctive to an average degree.

Taking into account all the above, and bearing in mind the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in relation to all the goods found to be identical or highly similar. Due to the aural identity between the conflicting signs, there is also a likelihood of confusion on the part of the relevant public in relation to the services found to be similar to a low degree.

The rest of the contested services 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 services cannot be successful.

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish national trade mark registration No 2 871 400.

The opponent has also based its opposition on European Union trade mark registration No 8 288 631.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

It follows from the above that the contested trade mark application must be rejected in its entirety.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.