OPPOSITION No B 2 650 813
Antonio de la Torre Díaz C/ Doctor Esquerdo, 102, 28007 Madrid, Spain (opponent), represented by Elzaburu, S.L.P. Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Μελιντα ε.π.ε. Λεκκα 21-βι.πα. Ωραιοκαστρου 57013, Thessaloniki, Greece (applicant), represented by Φαίδρα Παπαδημητρίου, Ασκληπιού 67, 10680 Athens, Greece (professional representative).
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 650 813 is upheld for all the contested goods.
2. European Union trade mark application No 14 673 784 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 673 784. The opposition is based on Spanish trade mark registration No 1 011 135. 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 goods
The goods on which the opposition is based are the following:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ices, honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces; spices; ice.
The contested goods are the following:
Class 30: Salt(s), seasonings, flavourings and condiments; sugar(s), natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes therefor; sweet glazes and fillings; treacle; raw sugar; royal jelly; biological honey for human consumption; boiled sugar; honey glazes for ham; sweet spreads [honey]; natural sweeteners; glucose powder for food; tablets (non-medicated -) made of glucose with a caffeine base; sugar; turbinado sugar; castor sugar; fruit sugar; palm sugar; sugar for making conserves of fruit; sugar for making jellies; sugar for making jams; granulated sugar; cube sugar; sugar candy [for food]; sugar, other than for medical use; sugar, honey, treacle; powdered sugar for preparing isotonic beverages; invert sugar; caramelised sugar; brown sugar; sugar coated pine nuts; invert sugar cream [artificial honey]; crystal sugar [not confectionery]; spray crystallized maltose for food; white sugar; honey; herbal honey; maltose; glucose preparations for food; polysaccharides for use as food for human consumption; bee glue; propolis for food purposes; grape sugar; sweeteners (natural -) in granular form; fructose for food; sugar substitutes; honey substitutes; liquid sugar; foodstuffs made of sugar for making a dessert; foodstuffs made of sugar for sweetening desserts; foodstuffs made of a sweetener for sweetening desserts; foodstuffs made of a sweetener for making a dessert; natural ripe honey; natural honey; natural sweeteners in the form of fruit concentrates.
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 list of contested goods contains several items listed more than once, e.g. treacle; for ease of reading they will only appear once in the comparisons below.
The English version of the contested list also contains some terms in plural, such as salts, sugars, which are in singular form in the original Greek version, and will consequently be compared as such, i.e. in their singular form.
Salt, sugar, coffee, tea(s) and cocoa, honey, treacle identically appear on both lists of goods.
Condiments are synonymous and thus identical to the opponent’s sauces.
Seasonings, flavourings are also synonymous and thus identical to the opponent’s spices.
Natural sweeteners, sweet coatings and fillings, sweet glazes and fillings, bee products, sweeteners (natural -) in granular form include, as broader categories, the opponent’s honey. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Biological honey for human consumption; honey glazes for ham; sweet spreads [honey]; herbal honey; natural ripe honey; natural honey fall into the broader category of the opponent’s honey and therefore the goods are identical.
Boiled sugar; raw sugar; glucose powder for food; turbinado sugar; castor sugar; fruit sugar; palm sugar; sugar for making conserves of fruit; sugar for making jellies; sugar for making jams; granulated sugar; cube sugar; sugar candy [for food]; sugar, other than for medical use; powdered sugar for preparing isotonic beverages; invert sugar; caramelised sugar; brown sugar; invert sugar cream [artificial honey]; crystal sugar [not confectionery]; spray crystallized maltose for food; white sugar; maltose; glucose preparations for food; polysaccharides for use as food for human consumption; grape sugar; fructose for food; liquid sugar fall into the broader category of the opponent’s sugar and therefore the goods are identical.
Substitutes for coffee, teas and cocoa are similar to a high degree to the opponent’s coffee, tea and cocoa as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.
Tablets (non-medicated -) made of glucose with a caffeine base, sugar coated pine nuts; sugar substitutes; foodstuffs made of sugar for making a dessert; foodstuffs made of sugar for sweetening desserts are similar to a high degree to the opponent’s sugar as they are either one of the main ingredients or a substance in competition with the opponent’s goods. They can coincide in producer, end user, distribution channels and method of use.
The same applies when comparing royal jelly; bee glue; propolis for food purposes; honey substitutes, foodstuffs made of a sweetener for sweetening desserts; foodstuffs made of a sweetener for making a dessert; natural sweeteners in the form of fruit concentrates with the opponent’s honey: they can coincide in producer, end user, distribution channels and method of use, and they can be in competition. Therefore, they are similar to a high degree.
- 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 mainly directed at the public at large, although some of the goods at hand may also direct the professionals of the food and confectionary industry. The degree of attention will be average.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 “MELINDAS” while the contested sign is a figurative mark consisting of the word “MELINDA” written in standard black upper case letters within a hexagon, all within a rectangle of black borders.
The element “MELINDA” in the contested sign is likely to be associated by the relevant public with a female first name, and it is just as likely that the public will perceive this name’s plural form in the earlier sign, “MELINDAS”. Having no relation to the goods at hand, the distinctiveness of these elements is normal. At the same time, the basic geometrical shapes in the contested sign, i.e. the hexagon and the rectangle, are devoid of distinctive character.
Visually, the signs coincide in “MELINDA” and only differ in the final “S” letter of the earlier sign and the non-distinctive geometrical shapes of the contested sign. Moreover, as the opponent argues, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, 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). In the present case it is entirely reasonable to assume that the public will refer to the contested sign as “MELINDA”.
Therefore, the signs are visually similar to a high degree.
Aurally, the signs coincide in all the sounds of the contested sign, “MELINDA” and they only differ in the final “S” letter of the earlier sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the signs are also highly similar given that the relevant public is likely to perceive the contested sign as a female name and the earlier sign as this name’s plural form.
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
In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).
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 the present case, the signs visually, aurally and conceptually coincide in the only verbal element of the contested sign “MELINDA”. Neither the additional final “S” letter of the earlier sign nor the non-distinctive geometrical shapes of the contested sign are sufficient to enable the consumers to safely distinguish between the signs.
Therefore, when confronted with a sign replicating the opponent’s trade mark with the mere difference of one letter and some non-distinctive shapes, on identical or highly similar goods, the reasonably well informed and reasonably observant and circumspect consumers will readily assume that those goods come from the same or economically linked undertakings.
The Opposition Division has reached this conclusion after having considered the arguments submitted by the applicant in its observations. Notably, the applicant referred to a number of international and national trade mark registrations, in- and outside the EU, containing the term “MELINDA” for goods in Class 30.
In this respect, 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.
Only, under special circumstances, may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded. The mere claim of existence of several marks containing the word “MELINDA” does not prove that consumers would be confronted with this term to such an extent that the normal distinctive character of this word would be affected.
Moreover, in its observations the applicant filed and reiterated its openness to a friendly settlement in accordance with Article 42(4) EUTMR. As, in principle, the Office cannot (and does not wish to) replace the parties, it will only take action in very rare cases where a settlement between the parties appears desirable and if there are good reasons for considering that the proceedings can be ended by a settlement. The applicant, apart from indicating its openness to a friendly settlement and the relevant legal provisions, provided no arguments which would have indicated that a favourable outcome could be likely achieved, or whether any of the parties have taken any efforts of settling the matter among them.
Furthermore, given the unitary character of the European Union trade mark, it is also irrelevant for the present proceedings whether the applicant has intention to operate in the Spanish market, as also pointed out by the opponent.
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 Spanish trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.