OPPOSITION No B 2 648 775

Ludwig Schokolade GmbH & Co. KG, Senefelderstr. 44, 51469 Bergisch Gladbach, Germany (opponent), represented by Splanemann Patentanwälte Partnerschaft, Rumfordstr. 7, 80469 München, Germany (professional representative)

a g a i n s t

Haribo Holding GmbH & Co. KG, Hans-Riegel-Straße 1, 53129 Bonn, Germany (holder), represented by Bakker  & Verkuijl B.V., Alexander Office Prinsenkade 9D, 4811 VB Breda, the Netherlands (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 648 775 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 245 974, . The opposition is based on European Union trade mark registration No 8 899 312, ‘FRITT’. The opponent invoked Article 8(1)(b) EUTMR.

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

Class 30: Sweet spreads, namely nut-nougat creams and chocolate creams; nut pastes;  pralines, including with liquid fillings, in particular of wine and spirits; muesli and chocolate bars, in particular filled bars, including with caramel and/or nuts and/or chopped nuts; pastry (sweet and savoury) and confectionery; long-life pastries, including long-life pastries covered with fat-based icing, chocolate and chopped nuts or almonds; sugar confectionery, in particular chewing candy, including fruit-flavoured chewing candy; shaped chocolate goods and confectionery, in particular figures and assortments of figures; sugar; dragees (sugar confectionary) and chewing gum for non-medical purposes; filled chocolate; hollow chocolate bodies containing playthings and/or small toys; rice, groats for food; flour and preparations made from cereals, pasta; bread; honey; baking powder; tinned puddings; all the aforesaid goods included in class 30 also for dietetic non-medical use and, if possible, also in instant form.

The contested goods are the following:

Class 30: Confectionery; liquorice and gum articles; wine gums, fruit gums and sweets.

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 signs

FRITT
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 earlier mark is a word mark ‘FRITT’. Most of the relevant public will not perceive this word as having any meaning, although the Swedish-speaking part of the relevant public will understand it as the Swedish word ‘freely’. In any case, this element is considered distinctive for all the relevant goods.

The contested sign is a figurative mark consisting of the elements ‘HARIBO F!ZZ’ written in standard black upper case letters. Even though the second character of the word ‘F!ZZ’ is the exclamation mark, it is very likely that a part of the relevant public will perceive it only as an inverted letter ‘i’, especially due to its position in the middle of the word where the exclamation marks are not normally used. Moreover, the public normally tends to perceive the verbal elements in the form which is easy to pronounce and/or have a sense.

When taking into account the part of the public that will perceive the sign as it is written (with the exclamation mark), the element has no meaning and is considered distinctive.

However, as regards the other perception of this word, ‘FIZZ’, it will be associated with the meaning of ‘having a lot of bubbles or making a bubbling sound’ by the English-speaking part of the public. Fizzy sweets are an example of a simple acid–base reaction. Bearing in mind that the relevant goods are confectionary, it is considered that this element is weak for these goods. However, for the non-English speaking part of the public, ‘FIZZ’ has no meaning and is considered distinctive.

The word ‘HARIBO’ of the contested sign is meaningless for the public in the relevant territory and as such is considered distinctive for the goods in question.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The examination will be firstly based on a part of the public that will perceive the second verbal element of the contested sign as the word ‘FIZZ’ as it seems more prone to confusion in this case. Furthermore, for the same reasons, since a part of the public may not associate the element ‘FIZZ’ with any meaning, the analysis below will be undertaken considering this part of the public (non-English-speaking part of the public). Following this, all the elements of the marks will be therefore considered distinctive for the relevant goods. This is the best-case scenario for the opponent.

Visually and aurally, the signs only coincide in that they both contain the letters ‘F’, ‘R’ and ‘I’ and in their respective pronunciation. However, this coincidence is irrelevant as these letters form parts of different words and are placed in different positions in both marks, and therefore, they will not be perceptible as separate elements. Furthermore, the signs differ in the remaining letters and in their lengths, namely five letters in the earlier mark and ten letters in the contested sign.

Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

In addition, the earlier mark is composed of one verbal element only while the contested sign contains two words.

As the differences between the signs lie mainly in their beginnings, where consumers generally tend to focus more attention when they encounter a trade mark, and as the coincidence between them is only in three individual letters lost in different words, the signs are visually and aurally dissimilar.

Conceptually, for a part of the public that will not associate the word ‘FRITT’ with any meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

On the other hand, for the Swedish-speaking part of the relevant public which will understand the meaning of the earlier mark as explained above, the signs are not conceptually similar.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

2. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Even applying the principle from the Thomson Life case (06/10/2005, C-120/04, EU:C:2005:594) suggested by the opponent, it cannot reverse this outcome due to the significant differences between the earlier mark ‘FRITT’ and the second verbal element of the contested sign ‘FIZZ’.  

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘FIZZ’ is meaningful and weak. This is because, as a result of the additional differing meaning and the weak character of that element, that part of the public will perceive the signs as being also dissimilar.

Lastly, the same outcome also applies for the part of the public which will perceive the element ‘F!ZZ’ as it is written (with the exclamation mark) as for this part of the public the signs will coincide only in two letters and will be also dissimilar.  

Th finding of no likelihood of confusion would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Consequently, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Steve HAUSER

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

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.