OPPOSITION No B 2 657 370

F.Divella S.p.A., Largo Domenico Divella, 1, 70018 Rutigliano (Bari), Italy (opponent), represented by De Tullio & Partners S.R.L., Viale Liegi, 48/b, 00198 Roma, Italy (professional representative)

a g a i n s t

Dibella Baking Company, Inc., 3524 Seagate Way, Suite 110, Oceanside California, 92056, United States of America (applicant), represented by A2 Estudio Legal, Calle Hermosilla 59, Bajo izquierda, 28001 Madrid, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 657 370 is upheld for all the contested goods.

2.        European Union trade mark application No 14 655 328 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 655 328. The opposition is based on, inter alia, European Union trade mark registration No 12 121 554. The opponent invoked Article 8(1)(b) EUTMR. In relation to other earlier marks, the opponent also invoked Article 8(5) 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 12 121 554.

1. The goods

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

Class 30:         Flour and preparations made from cereals and in particular pasta of all kinds; egg pasta, wholemeal pasta, pasta specialities, fresh pasta, fresh semolina pasta, fresh wholemeal pasta, fresh egg pasta, fresh filled pasta, lasagne, gnocchi; biscuits, muffins, snacks, croissants, pastry, bread, piadina bread; flour and semolina, flour for household use, semolina for household use, flour for professional use, toasted corn flour for bread coating, semolina for professional use; preparations for pizza bases; bases for puff pastry, pies and pizza, yeast, baking-power.

The contested goods are the following:

Class 30:         Snack foods including biscotti, cookies, brownies and baked goods.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 30

The contested snack foods including biscotti, cookies, brownies and baked goods are included in the broad category of the opponent’s snacks. Therefore, they are identical.

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

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). Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for which the words ‘DIVELLA’ and ‘DIBELLA’ are meaningless and are normally distinctive.

The earlier mark has no element which could be considered more dominant than others. However, in the contested sign the word ‘DIBELLA’, together with the label in which it is placed, are the dominant elements, as they are the most visually eye-catching, due to their size and position. The remaining verbal elements of the contested sign, such as the words, ‘Italiano Autentico’, ‘Ricette ai Famiglia’, ‘1863 Cinque Generazioni’, are written in a quite small typeface, some even barely legible, and are not only visually less dominant, but even if these words, or some of them, are understood, they are weak. They would be perceived as information regarding the characteristics of these goods (snack foods), such as the geographical origin (Italiano Autentico), they year of starting the company (1863) and that it has already passed through 5 generations of the same family (Cinque Generazioni) and that the goods are from a family recipe (RICETTE DI FAMIGLIA).  

The figurative element in the form of a landscape of the earlier mark, together with some main features, such as grain/cereals, the sea, some birds, a boat, some houses and the Italian flag colours at the bottom, will be associated with the relevant goods (snacks), such as the place where the grains, of which the snacks could be made, are produced and the country where the products originate from. These elements are weak.

Furthermore, as regards the contested sign, it is composed of a distinctive verbal element ‘DIBELLA’ and of a less distinctive figurative element of a purely decorative nature, namely regarding the one in the form of a label. This is not such an uncommon element and has a more decorative nature. The public will not pay as much attention to this weak element.

Visually, the signs coincide in the sequence of letters ‘D-I-*-E-L-L-A’, the only difference being the slightly fancy typeface in which these letters are written in the marks. These elements are not only the most distinctive ones in both marks, but also the most dominant verbal elements in the contested sign. On the other hand, they differ in the third letter ‘V’ of the earlier mark versus ‘B’ of the word ‘DIBELLA’ of the contested sign, in the figurative elements of both marks and in some other verbal elements of the contested sign, as pointed out above, which are, however, not only less dominant, but also weak and, consequently, they have less impact on the overall impression.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand with respect to the label in the contested sign, since this element is more of a decorative nature and with respect to the landscape of the earlier mark, which is also weak, regarding the relevant goods, as pointed out above.

Regarding the slightly fancy typefaces in which the verbal elements of the marks are written, this stylisation must be considered not that elaborate or sophisticated and they will not lead the consumer’s attention away from the elements they seem to embellish.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /D-I-*-E-L-L-A/, present identically in both signs. Even though in the contested sign there are more verbal elements, due to their size, they will most probably not even be pronounced. This is contrary to the applicant’s opinion that these will (emphasis added) be pronounced. The marks differ in the sound of the third letter ‘V’ versus ‘B’. Furthermore, both marks are pronounced in three syllables /DI-VE-LLA/ versus /DI-BE-LLA/ and have a similar rhythm and intonation. The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The words ‘DIVELLA’ and ‘DIBELLA’ are meaningless. The figurative element of the earlier mark is perceived as referring to a landscape and the portrait of an older woman in the contested sign is perceived as such. Even if the remaining verbal elements of the contested sign are understood, they are less dominant and weak and have less impact on the conceptual perception. Since both marks are perceived as having a different meaning, they are not conceptually similar. However, the impact of this conceptual difference is very limited, as all those elements are weak or non-dominant. The coinciding elements are strong and distinctive.

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 this earlier 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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found identical and the level of attention is average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally to a high degree and the marks are not conceptually similar, but this impact is rather limited, as all elements creating this difference or weak or non-dominant.

A complex mark and another mark which is identical or similar to one of the components of the complex mark can be considered to be similar only if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see, inter alia, 23/10/2002, T-6/01 Matratzen, EU:T:2002:261, § 33; 13/04/2005, T-286/03 Right Guard Xtreme Sport, EU:T:2005:126, § 60, 70-73; 07/07/2005, T-385/03 Biker Miles, EU:T:2005:276, § 39). This applies also to the case at hand. The words ‘DIVELLA’ and ‘DIBELLA’ are not only verbally the most dominant elements in the marks, but also the most distinctive verbal elements, for the reasons set out above in more detail.

It follows that the elements ‘DIVELLA’/’DIBELLA’ significantly influence the overall impression of the signs and are likely to be remembered by the relevant public. The differences between the marks are not sufficient to outweigh the similarities in these elements.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the goods offsets the lesser degree of similarity between the signs.

The applicant argues that its EUTM has reputation, since it was created in the 1800s and was exporting to the New World as from 1910. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 12 121 554. 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.

As the earlier right, EU registration No 12 121 554, ‘DIVELLA (FIGURATIVE)’ 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 ground of the opposition, namely Article 8(5) EUTMR, invoked in relation to other earlier marks.

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

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.