OPPOSITION No B 2 434 556

Krasnyj Octyabr, ul. Malaya Krasnoselskaya d. 7, str. 24, Moscow 107140, Russian Federation (opponent), represented by Foral Patent Law Offices, Kaleju 14-7 Riga, 1050, Latvia (professional representative)

a g a i n s t

Dochirnie pidpryiemstvo "Kondyterska korporatsiia "Roshen", Elektrykiv vul. 26/9

Kyiv  04176, Ucraine (holder), represented by METIDA Law Firm Zabolienė and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 434 556 is partially upheld, namely for the following contested goods:

Class 30:        Confectionery; pastries; biscuits; crackers; sweetmeats [candy]; chocolate; bread; ice cream.

2.        International registration No 1 216 610 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 216 610. The opposition is based on, inter alia, European Union trade mark registration No 10 481 596. 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 10 481 596.

1. The goods

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

Class 30:        Almond confectionery; bakery confectionery being frozen; boiled confectionery; cachou [confectionery], other than for pharmaceutical purposes; chocolate confectionery; chocolate confectionery containing pralines; chocolate confectionery having a praline favour; chocolate confectionery products; chocolate decorations for confectionery items; chocolate flavoured confectionery; chocolate for confectionery and bread; Christmas trees (confectionery for decorating -); clear gums [confectionery]; coated nuts [confectionery]; confectionery; confectionery bars; confectionery chocolate products; confectionery containing jelly; confectionery containing jam; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in frozen form; confectionery in liquid form; confectionery in the form of tablets; confectionery items coated with chocolate; confectionery items formed from chocolate; confectionery made of sugar; confectionery (non-medicated-); confectionery products (non-medicated-); crystal sugar pieces [confectionery]; dairy confectionery; dragees [non-medicated confectionery]; flavoured fillings for confectionery; flavoured sugar confectionery; bread; pastries; ices; flour confectionery; fondants [confectionery]; food supplements (non-medicated-) being glucose confectionery; frozen yoghurt [confectionery ices]; fruit drops [confectionery]; frozen yogurt [confectionery ices]; fruit jellies [confectionery]; ice confectionery; ice confectionery in the form of lollipops; ice cream confectionery; iced confectionery (non-medicated-); ingredients for confectionery; liquorice [confectionery]; liquorice flavoured confectionery; lollipops [confectionery]; lozenges [confectionery]; lozenges [non-medicated confectionery]; mallows [confectionery]; marshmallow confectionery; mint flavoured confectionery (non-medicated-); non-medicated chocolate confectionery; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery candy; non-medicated confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery in the form of lozenges; non-medicated confectionery in the shape of eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing with chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated mint confectionery; non-medicated sugar confectionery; nut confectionery; orange based confectionery; pastilles [confectionery]; pastry confectionery; peanut butter confectionery chips; peanut confectionery; peppermint for confectionery; peppermint pastilles [confectionery], other than for medicinal use; potato flour confectionery; prepared desserts [confectionery]; rock [confectionery]; sherbet [confectionery]; sherbets [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; snack bars containing dried fruits [confectionery]; snack bars containing grains [confectionery]; snack bars containing nuts [confectionery]; snack foods consisting principally of confectionery; stick liquorice [confectionery]; sweets (non-medicated-) in the nature of sugar confectionery; truffles [confectionery]; truffles (rum-) [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy]; chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel wafers; bean-jam filled wafers (monaka); rolled wafers [biscuits]; cocoa; marzipan; chocolate beverages; coffee.

The contested goods are the following:

Class 30:        Confectionery; pastries; biscuits; crackers; sweetmeats [candy]; chocolate; honey; sugar; bread; ice cream; spices.

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.

The contested confectionery; pastries; sweetmeats [candy]; chocolate; bread are identically contained in both lists of goods.

The opponent’s ices are to be understood as ‘ice creams’. Therefore, ices and the contested ice cream are identical.

The contested biscuits include, as a broader category, the opponent’s rolled wafers [biscuits]. 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 crackers are similar to the opponent’s bread as they have the same nature. They also can coincide in producers, relevant public and distribution channels. Furthermore, they are in competition with each other.

The remaining contested honey; sugar; spices and the opponent’s gods in Class 30 are different in nature and are not normally produced by the same manufacturers. The goods at issue are neither complementary nor are they in competition with each other. The fact that they are all foodstuffs that are sold through the same distribution channels to the public at large is not enough to establish a similarity between them since they are generally displayed in different areas or on different shelves in groceries, supermarkets and department stores and the public does not expect such goods to originate from the same companies. Therefore, these goods 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 or similar are directed at the public at large. The degree of attention is expected to be 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). 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 verbal elements of the signs are not meaningful in certain territories, for example, in countries such as Italy and Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public.

The earlier mark is a figurative mark which consists of the word ‘KOROVKA’ and the stylized depiction of a white and brown cow keeping a flower in its mouth standing on a green ground and surrounded by four flowers of different sizes. The word ‘KOROVKA’ is reproduced in a fanciful typeface of white colour with orange spots; the wording is outlined in dark brown and orange. The stylized white flowers are placed in pairs on both sides of the cow.

The contested sign is also a figurative sign. It consists of a sort of rectangular label of orange colour in the middle of which the depiction of a rather realistic cow is placed, within a yellowish oval, and above the word ‘KORIVKA’ reproduced in red capital letters. Below this verbal element the word ‘ROSHEN’ is placed, depicted in yellowish capital letters. This word reproduced twice more, the first depiction being slightly larger and with underlined character, the second oriented upside down, in an identical manner with respect of the last verbal element of the signs, namely the word ‘KORIVKA’, reproduced identically to the one placed in the middle of the sign. The mark is completed by several stylized depiction of flowers distributed both around the verbal elements and placed in a line within two green vertical stripes that cross the yellow background.

While the earlier mark has no elements that could be considered clearly more dominant than other elements, the word ‘KORIVKA’ and the depiction of a cow placed in the middle part of the contested sign are together the dominant element, since they are the most eye-catching by virtue of their central position, size and colours. This is also true due to the fact that the additional words ‘ROSHEN’, although not negligible, due to their colour, which tends to dilute against the yellow background, are readable only with some effort.

The verbal elements of the signs have no meaning for the relevant public and are, therefore, distinctive.

The depiction of a cow, common to both signs, can be perceived as related to milk and milk products, which, although not being exactly the goods found to be identical or similar, can be basic ingredients of or be added to confectionery; pastries; biscuits; crackers; sweetmeats [candy]; chocolate; bread; ice cream in Class 30. These elements are consequently weak for these goods.

Also, account must be taken on the fact that 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).

Visually, the signs coincide in some of the features of most of the letters (namely K-O-R-(-)-V-K-A) which form the distinctive element ‘KOROVKA’ of the earlier mark and the distinctive and dominant element ‘KORIVKA’ of the contested sign. The signs differ in the fourth letter of the words ‘KOROVKA’ and ‘KORIVKA’ and in the additional figurative weak elements consisting of the depiction of a cow and in the additional word elements of the contested sign and figurative elements of both signs which, for the reasons seen above, play a secondary role.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛K-O-R-(x)-V-K-A, present identically in both signs and being part of a distinctive, and in the case of the contested sign, distinctive and dominant, element. The pronunciation differs in the sound of the fourth letter of the words ‘KOROVKA’ and ‘KORIVKA’, namely ‘O’ on one hand and ‘I’ on the other, and in the sound of the additional words ‘ROSHEN’ of the contested sign, which in the context of the contested sign play a secondary role.

As a result, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the figurative elements of both sign evoke the concept of a cow and flowers.  While the flowers, in particular the ones of the contested sign. Might be perceived as a simple decorative elements, the depiction of a cow, included in both signs, will be associated with the meaning explained above, which renders these elements weak. To that extent, the signs are conceptually similar to a low degree.

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 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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute have been found partly identical, partly similar and partly dissimilar.

They are directed at the public at large. The degree of attention is expected to be average.

As regards the signs, they have been found to display an average degree of visual similarity but, on the other hand, also aural similarity to a high degree. From a conceptual perspective, the marks are similar due to the semantic content that arises from the presence of meaningful figurative elements.

It is true that this similarity is in particular due to the depiction of a cow which can clearly suggest a direct reference to milk and milk products, which, although not being exactly the goods found to be identical or similar, can be basic ingredients of or be added to confectionery; pastries; biscuits; crackers; sweetmeats [candy]; chocolate; bread; ice cream in Class 30. However, this circumstance is counterbalanced by the fact that, although being partially weak, the figurative elements of the signs displays a clear resemblance, due to the presence of, for instance, very similar depiction of flowers, having a decorative function, and the use of the same colours, namely orange, brown and green.

Furthermore, in the present case the verbal element of the earlier sign and the word, dominant element of the contested sign are almost identical. In fact, they only differ in one out of seven letters. It is therefore likely to expect that the consumers will refer to the signs in the same manner, obliterating the additional elements of the contested sign.

 

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Also, 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).

In view of the foregoing, due to the visual and aural similarity in the elements which play the most relevant role in the signs, the Opposition Division finds that there is a likelihood of confusion on the Italian- and Spanish-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 identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods 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.

The opponent has also based its opposition on the following earlier trade mark:

• international trade mark registration No 844 698 for the figurative mark  designating Croatia, Germany, Greece and Spain.

The other earlier right invoked by the opponent covers a part of the goods in Class 30 already compared, additional goods in Class 30 such as, coffee-based beverages; coffee, goods in Class 31, namely citrus fruits; hazelnuts and in Class 33, namely hydromel (mead); wine; whisky; vodka; bitters; cocktails; liqueurs; cider which are clearly different to those applied for in the contested trade mark and found to be dissimilar to the goods already compared, namely honey; sugar; spices in Class 30. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods. Given that, to this extent, the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 will decide a different apportionment of costs.

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

The Opposition Division

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.