OPPOSITION No B 2 792 086

Cloetta Holland B.V., Hoevestein 26, 4903 SC Oosterhout, the Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)

a g a i n s t

Guangzhou Mini King Food Co., Ltd., Rm. 807, 808 (position:601,608), 6&7F, No.1 Qingyi St., Tianhe Dist., Guangzhou, Guangdong, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 792 086 is partially upheld, namely for the following contested goods:

Class 29:        Fruit-based snack food; milk products; nuts, prepared.

Class 30:        Cocoa-based beverages; tea; candy; cereal-based snack food; cereal preparations.

2.        European Union trade mark application No 15 660 962 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 660 962. The opposition is based on Benelux trade mark registrations No 28 519 ‘KING’, No 931 565  and No 931 567 . 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 28 519.

1. The goods and services

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

Class 5:        Peppermint.

Class 30:        Liquorice, peppermint, chocolate and confectionery.

The contested goods and services are the following:

Class 29:        Meat; foods prepared from fish; fruit-based snack food; vegetables, preserved; eggs; milk products; edible oils; fruit jellies; nuts, prepared; albumen for culinary purposes.

Class 30:        Cocoa-based beverages; tea; candy; honey; cereal-based snack food; cereal preparations; wheat flour; soya flour; tapioca; condiments.

Class 35:        Advertising; professional business consultancy; marketing; commercial administration of the licensing of the goods and services of others; commercial intermediation services; providing business information via a web site; sales promotion for others; provision of an on-line marketplace for buyers and sellers of goods and services; personnel management consultancy; relocation services for businesses.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 29

The contested fruit-based snack food; nuts, prepared and the opponent’s confectionery (which could be in the form of snack bars containing a mixture of grains, nuts and dried fruits) coincide in their producer, end user and distribution channels. Furthermore, they are in competition when they are consumed as a ‘healthy snack’. It follows that these goods are similar to a high degree.

The contested milk products include milk beverages in which milk is the predominant ingredient, as well as goods made with milk. The opponent’s peppermint in Class 30 could be in the form of dried leaves for tea (as the leaves on their own are sufficient for a tea to be prepared). The goods under comparison share producer, end user and distribution channels. Furthermore, they are in competition. It follows that these goods are similar.

The contested meat; foods prepared from fish; vegetables, preserved; eggs; edible oils; fruit jellies; albumen for culinary purposes are not similar to any of the opponent’s goods in Classes 5 or 30. Even though some of the opponent’s goods could include some of the contested goods as ingredients and vice versa, this is not enough for a finding of similarity. The goods do not usually have the same nature, purpose or usual origin. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 30

The contested candy is included in the broad category of the opponent’s confectionery. It follows that these goods are identical.

The contested cereal-based snack food can be in the form of snack bars containing a mixture of grains, nuts and dried fruit. They therefore overlap with the opponent’s confectionery. The goods are considered identical.

The contested tea overlaps with the opponent’s peppermint, as the latter can be used as a tea. These goods are considered identical.

The contested cocoa-based beverages overlap with the opponent’s chocolate, insofar as the latter is in the form of drinking chocolate. It follows that these goods are identical.

The contested cereal preparations (which also cover sweet cereal chips) have the same purpose as the opponent’s confectionery, namely to be served as snacks consumed between main meals to satisfy a certain urge or craving for a certain taste. They also have the same producers, end users and distribution channels and are in competition. It follows that these goods are similar.

The contested honey; wheat flour; soya flour; tapioca; condiments are not similar to any of the opponent’s goods in Class 5 or 30. Even though some of the opponent’s goods could include some of the contested goods as ingredients and vice versa, this is not enough for a finding of similarity. The goods do not usually have the same origin, nature or purpose (e.g. the opponent’s peppermint, used as dried tea leaves or as a preparation for confectionery, is not usually used as a condiment). Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 35

The contested services in this class cover a large variety of services such as advertising (e.g. advertising; marketing), which consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity; and business management services (e.g. professional business consultancy), which are services usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The contested services, furthermore, include office function services (e.g. relocation services for businesses), which are for the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. The contested services in this class also include business administration services (e.g. commercial administration of the licensing of the goods and services of others; personnel management consultancy), which consist of organising people and resources efficiently to direct activities toward common goals and objectives.

The contested services, furthermore, cover services rendered around the actual sale of goods and services (e.g. provision of an on-line marketplace for buyers and sellers of goods and services). These services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services) through online platforms. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The services rendered around the actual sale of goods consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop (or at one online platform). This is not the purpose of goods.

The opponent’s goods are products with medical purposes, as well as foodstuffs/beverages. From the description provided above, it follows that the opponent’s goods and the contested services in this class have different natures, purposes, producers/providers and distribution channels. They are neither in competition nor necessarily complementary. It follows that the contested advertising; professional business consultancy; marketing; commercial administration of the licensing of the goods and services of others; commercial intermediation services; providing business information via a web site; sales promotion for others; provision of an on-line marketplace for buyers and sellers of goods and services; personnel management consultancy; relocation services for businesses are dissimilar to the opponent’s goods in Classes 5 and 30.

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 to various degrees are directed at the public at large. The goods can, furthermore, be related to habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

Therefore, the degree of attention when purchasing the relevant goods will vary from below average to average depending on the price of the goods and the frequency of their purchase.

3. The signs

KING
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 consisting of the single element ‘KING’. As ‘king’ is a fairly basic English word, it will be understood by a significant part of the relevant public with the meaning of ‘a male sovereign prince who is the official ruler of an independent state; monarch’ (information extracted from http://dictionary.reverso.net/english-definition/king). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative mark in black and white consisting of a depiction of what appears to be the head of a cartoon character with human features, wearing a hat and giving a thumbs-up, to the right of which are three elements that appear to be Chinese characters; below these characters, in a smaller typeface and slightly stylised title case letters, are the elements ‘Mini’ and ‘King’.

The element ‘King’ of the contested sign will be perceived by a significant part of the relevant public with the meaning specified above, and the element ‘Mini’ will be perceived by the relevant public with the meaning of ‘something very small of its kind’. It is also likely that the combination of the elements ‘Mini’ and ‘King’ would be perceived as meaning ‘a little king’ by at least part of the relevant public.

As the element ‘King’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘Mini’ of the contested sign will be perceived by the relevant public with the meaning specified above. Bearing in mind that the relevant goods are a variety of foodstuffs and beverages, this element is weaker than average for these goods, as it may be perceived as indicating, for instance, that the products target children, are relatively small or come in packages smaller than the usual.

Furthermore, the depiction of the head will be perceived as such and as it is not per se descriptive, allusive or otherwise weak for the relevant goods, it is considered distinctive. However, the depiction of the thumbs-up is likely to be associated with an affirmative gesture or a gesture of approval. It is therefore considered that the depiction of a thumbs-up is laudatory, as it highlights the qualities of the goods in question. It follows that the depiction of the thumbs-up is weaker than average for the relevant goods.

The figurative depiction of the three apparently Chinese symbols will be associated with the origin of the relevant goods (i.e. China or another Asian country where such logograms are used), which are foodstuffs and beverages. It is therefore considered that this element is weaker than average for the relevant goods.

The elements of the head, the thumbs-up and the Chinese characters in the contested sign are the dominant elements, as they are the most eye-catching, due to their size.

However, when signs consist of both verbal and figurative components (which is the case for the contested sign), 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 element ‘KING’, which is the sole element of the earlier mark and the distinctive verbal element of the contested sign. The signs differ in the dominant elements of the head, the thumbs-up and the Chinese characters of the contested sign (although the thumbs-up and the Chinese characters are of limited distinctiveness). The signs also differ in the verbal element of limited distinctiveness, ‘Mini’, of the contested sign.

Bearing in mind the coinciding distinctive element of the signs and what has been stated above with regard to the distinctiveness and the dominance of the differing elements of the contested sign, the signs are considered visually similar to a low 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 element ‘KING’, which is the only element of the earlier mark and the distinctive verbal element of the contested sign. The pronunciation differs in the sound of the less distinctive element ‘Mini’ of the contested sign, which has no counterpart in the earlier mark.

Bearing in mind what has been said above about the distinctiveness of the elements, it is considered that the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their elements. Both signs will be perceived as referring to the concept of a ‘king’ (which is the only element of the earlier mark and a distinctive, even though not dominant, element of the contested sign). The signs differ in the concepts of the remaining verbal and figurative elements of the contested sign, whose distinctiveness and position within the sign are explained above.

Bearing in mind that the signs coincide in the concept of the distinctive verbal element ‘KING’ and considering that in figurative signs the verbal elements of the sign have a stronger impact than the figurative elements, the signs are considered conceptually similar to an average 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.

5. Global assessment, other arguments and conclusion

As concluded above, the contested goods are partly identical, partly similar to different degrees and partly dissimilar to the goods of the earlier mark; the contested services are dissimilar to the goods of the earlier mark. The degree of attention may vary from below average to average when choosing the relevant goods.

It is taken into account that 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.

Furthermore, the earlier mark enjoys a normal degree of distinctiveness for the relevant public. It has also been established above that the signs are visually similar to a low degree, conceptually similar to an average degree and aurally similar to a high degree, due to the distinctive element ‘KING’, which is the only element of the earlier mark and included as a separate distinctive element in the contested sign. Therefore, due to the abovementioned coincidences in the verbal elements of the signs and taking into account the additional verbal (‘Mini’) and figurative elements of the contested sign, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), such as goods meant for children.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 28 519.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical, similar to a high degree or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks: Benelux trade mark registrations No 931 565  and No 931 567  for the following goods:

Class 5:        Peppermint.

Class 30:        Cocoa and cocoa products; chocolate, chocolate products – and drinks; pastry and confectionery, confectionery; caramels and caramel products, peppermint, peppermint sweets; sweet-products; candy, liquorice, liquorice articles and gum, not all sugarless; snacks not included in other classes.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further verbal (e.g. ‘PEPERMUNT’) and figurative elements that are not present in the contested trade mark.

Furthermore, the goods that they cover are not similar to the remaining contested goods, namely meat; foods prepared from fish; vegetables, preserved; eggs; edible oils; fruit jellies; albumen for culinary purposes in Class 29; and honey; wheat flour; soya flour; tapioca; condiments in Class 30. The goods under comparison do not usually have the same origin, nature or purpose. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

Furthermore, the contested services, namely advertising; professional business consultancy; marketing; commercial administration of the licensing of the goods and services of others; commercial intermediation services; providing business information via a web site; sales promotion for others; provision of an on-line marketplace for buyers and sellers of goods and services; personnel management consultancy; relocation services for businesses in Class 35, are not similar to the goods covered by these other earlier rights. The opponent’s goods are products with medical purposes, as well as foodstuffs/beverages. The opponent’s goods and the contested services in this class have different natures (as goods are tangible, whereas services are intangible), purposes, producers/providers and distribution channels. They are neither in competition nor necessarily complementary. It follows that these goods and services are dissimilar.

Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services and these other earlier rights.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Natascha GALPERIN

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.