OPPOSITION No B 2 791 088

Best Foods Productions SRL, Str Moinesti Nr. 55, Sector 6, 061232 Bucuresti, Romania (opponent), represented by Elena Grecu, 1 Piata Pache Protopopescu, Ap. 6, 2nd floor, Sector 2, 021023 Bucharest, Romania (professional representative)

a g a i n s t

S.C. Fabrica de Lapte Brasov S.A., Str. Apei, nr. 109, Baraolt, jud. Covasna, Romania (applicant), represented by Anna Nicoleta Costache Demes, Str. Constantin Lacea nr. 12-14, Biroul 2, 500112 Brasov, Romania (professional representative)

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 791 088 is upheld for all the contested goods.

2.        European Union trade mark application No 15 678 782 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 678 782 . The opposition is based on the following earlier rights:

• European Union trade mark registration No 13 195 334
• Romanian trade mark registration No 127 582

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.

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 13 195 334.

1. The goods

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

Class 29: Milk and dairy products.

The contested goods are the following:

Class 29: Milk and milk products.

Milk is identically included in both lists of goods, and the contested milk products are products that are made from or contain milk. Therefore, they are identical to the opponent’s dairy products.

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 paid by consumers during the purchase of these goods is deemed to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The words in the marks are meaningless for a significant part of the public in the relevant territory (e.g. the Spanish- and Romanian-speaking parts of the public). In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that will perceive the signs as meaningless.

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 words ‘Kalimera’ and ‘KALIMεRA’ have no meaning for the relevant public under consideration, and are therefore distinctive.

The contested sign has no elements that are more distinctive or dominant than others.

The earlier mark is formed of the distinctive and dominant (visually eye-catching) word ‘Kalimera’ and a merely decorative rectangular frame, which is devoid of distinctive character and also has a limited visual impact.

The verbal elements forming both marks are depicted in slightly stylised typefaces. 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). In this case, consumers will focus their attention on the verbal elements forming the marks, rather than on their stylisation or the rectangular frame in the earlier mark.

Visually, when comparing signs in terms of their word elements, the Office considers signs similar insofar as they have in common a significant number of letters in the same position and when they are not highly stylised or when they are stylised in the same or a similar manner. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed).

In this case, the signs have in common the sequence of letters ‘kalim*ra’.

They differ in their colours, in the rectangular frame in the earlier mark, in their slightly stylised typeface, in the fact that one is in upper case whereas the other is in lower case, and in the fact that the contested mark is written in the normal horizontal alignment, whereas the earlier mark is written on a slight curve, with its right side higher than the left side.

Finally, they differ in their sixth letter, which in the earlier mark is a letter ‘e’ and in the contested sign is the Greek letter epsilon, ‘ε’.

Given the above, the signs are visually similar to an average degree.

Aurally, the letter ‘ε’ will be pronounced as ‘e’. The signs are therefore aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the rectangular frame in the earlier mark will be associated with the concept of the shape it depicts. Since the contested mark will not be associated with any meaning, the signs are not conceptually similar.

However, since the rectangular frame is devoid of distinctive character, and has less visual impact than the word in the mark, little weight will be attributed to the concept conveyed by that element.

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 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 the non-distinctive rectangular frame referred to in section c) above.

5. Global assessment, other arguments and conclusion

The goods are identical.

The signs are visually similar to an average degree and aurally identical. The signs are not conceptually similar, based on the concept of the rectangular frame referred to above.

The differing sixth letter in each mark (i.e. ‘e’ versus ‘ε’) is preceded and followed by coinciding letters, which are in fact all the rest of the letters forming the marks. Due to the way in which the differing letters are positioned within the signs, their visual impact is somewhat diluted. In addition, the differing element does not lead to any aural difference between the marks, which are aurally identical.

The signs also differ in their colours and slightly stylised typefaces, in the use of upper and lower case letters, in the rectangular frame in the earlier mark and in their curved or horizontal alignment.

The differing rectangular shape is devoid of distinctive character, and has less visual impact than the word in the mark. Therefore, its impact within the sign is quite limited.

As explained above, the goods for which registration is sought are for mass consumption, and the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Based on this, consumers might believe that the conflicting goods found to be identical come from the same undertaking  or economically-linked undertakings.

Having regard also to the principle of interdependence, it is considered that the significant commonalities between the signs, together with the identity between the goods involved, are clearly enough to outweigh their dissimilarities.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically-linked undertakings. In the present case, although the public in the relevant territory might detect certain visual differences between the signs (i.e. different colours and typefaces, the curved or horizontal alignment of the words, and the use of upper and lower case letters), the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a variation of the earlier mark, configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, or that they will regard the signs as two versions of the same mark.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 195 334. It follows that the contested trade mark must be rejected for all the contested goods.

Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

As earlier European Union trade mark registration No 13 195 334 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.