OPPOSITION No B 2 691 734
Meli NV, Handelsstraat 13, 8630 Veurne, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).
a g a i n s t
Rafael Landete Iglesias, Plaza Diputacion 12, 46620 Ayora (Valencia), Spain (applicant), represented by Marks & Us Marcas Y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 691 734 is upheld for all the contested goods.
2. European Union trade mark application No 15 037 336 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 037 336. The opposition is based on, inter alia, Benelux trade mark registration No 108 388. 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 Benelux trade mark registration No 108 388.
- The goods
As a preliminary remark it should be noted that the opponent’s list of goods is different in the notice of opposition to that in the trade mark certificate. Therefore, the list of goods in the trade mark certificate will be used as basis of the decision.
The goods on which the opposition is based are, inter alia, the following:
Class 30: Honey; food products containing honey, nature honey, honey cake, honey biscuits, honey bulbs, honey drops, nougat with honey, royal jelly, pollen, honey in honeycomb.
On 30/11/2016, the applicant limited its list of goods to the following contested goods:
Class 30: Honey; Natural honey; Honey; Sweet spreads [honey]; honey, treacle; Candies (Non-medicated -) with honey; Royal jelly; Bee glue; Propolis for food purposes; Sweetmeats [candy]; Hand made candies; Sweetmeats [candy]; Sweetmeats [candy].
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 30
Honey; natural honey; honey; royal jelly are identically contained in both lists of goods (including synonyms).
The contested sweet spreads [honey] is included in the broad category of the opponent’s food products containing honey. Therefore, they are identical.
The contested candies (Non-medicated -) with honey are included in the broad category of the opponent’s food products containing honey. Therefore, they are identical.
The contested sweetmeats [candy]; hand made candies; sweetmeats [candy]; sweetmeats [candy] overlap with the opponent’s food products containing honey. Therefore, they are identical.
The contested bee glue; propolis for food purposes are similar to the opponent’s honey. The goods are distributed through the same channels and share the same producers and relevant public.
The contested treacle is similar to a low degree to the opponent’s honey. The goods are distributed through the same channels and are directed at the same public. They are also in competition.
- 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 considered to be average.
- The signs
Earlier trade mark
The relevant territory is the Benelux countries.
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, ‘MELI’. The applicant refers to the Greek meaning of this word and also the Latin word ‘MEL’. Furthermore, the applicant refers to equivalent words to ‘MELI’ in French and Italy which is similar to the earlier mark. However, considering that the relevant territory is the Benelux countries, the meaning in Greek is not relevant. Neither is the Latin word or similar words in French or Italian. The word ‘MELI’ has no meaning in the relevant territory.
The contested sign is a figurative mark composed by the verbal element ‘MELIDEA’ which has no meaning in the relevant territory. The figurative element looks like a stylized person, in black, holding some type of bucket. Behind the person are some black figures that could be perceived as some type of flying animals. There are also some additional undistinguishable figurative elements in front of the person. Indeed it cannot be excluded that, as argued by the opponent, some consumers may perceive the figurative element as a beekeeper collecting honey from a hive, surrounded by bees. For these consumers, this element is weak because it evokes the goods. For the remaining part of the public, the figurative element is distinctive but has less impact than the verbal element ‘MELIDEA’.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Furthermore, 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 the letters ‘M-E-L-I’. However, they differ in that the contested sign also have the letters ‘D-E-A’ in the end of its verbal element. Furthermore, the contested sign also contain a figurative element. Therefore, the first part of the verbal element of the contested sign and the sole verbal element of the earlier mark coincide.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Considering all the above, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛M-E-L-I’, present identically in both signs. The pronunciation differs in the sound of the letters ‛D-E-A’ of the contested sign, which have no counterparts in the earlier mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the contested goods are partly identical and partly similar and partly lowly similar. The goods are directed at the public at large with an average level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally the marks in dispute have been found visually and aurally similar to an average degree and conceptually not similar.
The signs coincide in the letters ‘M-E-L-I’, which is the sole verbal element of the earlier mark and fully incorporated in the contested sign. Furthermore, it constitutes the first part of the verbal element of the contested sign and will have the strongest impact on the consumers, since consumers generally tend to focus on the beginning of a sign.
Also, account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks, but must place their trust in the imperfect picture or recollection of them that they have kept in their minds (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26). Moreover, in general, the similarities between trade marks are more likely to be retained in the average consumer’s recollection than their differences.
The additional elements, figurative and letters, of the contested sign do not differentiate the signs from each other in a way that it outweighs both marks similarities.
Therefore, it must be held that it is reasonable to find that the relevant public is likely to confuse the marks in relation to the identical and similar goods, or believe that those goods come from the same undertaking, or as the case may be, economically-linked undertakings. Considering the similarities between the marks the relevant public is also likely to confuse the marks in relation to the goods that are similar to a low degree.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘MELI’. In support of its argument the applicant refers to several European Union trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MELI’. Under these circumstances, the applicant’s claims must be set aside.
Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The decision does not concern the same goods or marks however one decision concern similar marks although in that case the relevant territory is not the same as in the current case which results in a different analysis regarding the meaning of the marks.
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 Benelux trade mark registration No 108 388. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right, Benelux trade mark registration No 108 388, 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).
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
Inés GARCÍA LLEDÓ
Benjamin Erik WINSNER
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.