OPPOSITION No B 2 736 281
Drustvo za Prerabotka na Ovosje i Zelencuk Trgoprodukt Doo Uvoz-Izvoz Strumica, Ul. Naseleno mesto bez ulicen system bb Dabile, Strumica, Republic of Macedonia (opponent), represented by Nestor Nestor Diculescu Kingston Petersen, 201 Barbu Vacarescu Street, Globalworth Tower, 17th floor, 2nd District, 020276 Bucharest, Romania (professional representative)
a g a i n s t
Adelina Gross, Volframgatan 5, 213 64, Malmö, Sweden (applicant).
On 28/06/2017, the Opposition Division takes the following
1. Opposition No B 2 736 281 is partially upheld, namely for the following contested goods:
Class 29: Ajvar [preserved peppers]; pickled peppers;
Class 30: Peppers [seasonings].
2. European Union trade mark application No 15 217 359 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 217 359. The opposition is based on international registration designating the European Union No 1 107 949. 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 29: Preserved, dried and cooked fruits and vegetables (ajvar).
The contested goods are the following:
Class 29: Ajvar [preserved peppers]; pickled peppers; soft white cheese.
Class 30: Peppers [seasonings].
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 ajvar [preserved peppers]; pickled peppers are included in the opponent’s broad category preserved vegetables. Therefore, these goods are considered identical.
The contested soft white cheese is considered dissimilar to the opponent’s preserved, dried and cooked fruits and vegetables (ajvar). Contrary to the opponent’s argument, the fact that these goods are all foodstuffs is not in itself sufficient to conclude that the goods are similar, as their natures and methods of use are generally quite different. In addition, these goods usually have different commercial origins and are not usually displayed on the same shelves when they are sold in the same establishments. Furthermore, they are not in competition or interchangeable.
Contested goods in Class 30
The contested peppers [seasonings] are related to the opponent’s preserved vegetables in Class 29, as they have the same purpose. They can have the same producers, end consumers and distribution channels. Therefore, they are considered similar.
- 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 goods for everyday consumption, which are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark
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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a figurative mark depicting a jar of a reddish condiment with a black label containing the underlined word ‘MAMA’S’ in a rather standard yellow typeface; underneath this are the Cyrillic words ‘ДОМАШЕН АЈВАР’, in white, and others elements that, due to their size, are negligible. The jar has a beige paper cover containing negligible elements in black and a hanging label depicting a red pepper.
The element ‘MAMA’ of the earlier mark is an English word meaning ‘old-fashioned an informal word for mother’ (information extracted from Collins Dictionary on 11/06/2017 at https://www.collinsdictionary.com/dictionary/english/mama). As regards the apostrophe and the letter ‘S’ that appear after the element ‘MAMA’, these characters will be perceived as denoting the English possessive form. As the element ‘MAMA’S’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘ДОМАШЕН АЈВАР’ of the earlier mark will not be understood by the relevant public and will be perceived as meaningless. In relation to the relevant goods, this element is distinctive.
As regards the shape of the packaging, the Opposition Division considers that, since it does not depart from the norms of the sector, it will not, as such, be attributed any trade mark significance. In fact, to be distinctive, the shape must depart significantly from the shape that is expected by the consumer, and it must depart significantly from the norm or customs of the sector. The more closely the shape resembles the shape that is most likely to be taken by the product in question, the greater the likelihood that it is not distinctive (07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 31). Therefore, the packaging depicted in the earlier mark is considered non-distinctive.
In the light of the above, it is concluded that the verbal elements ‘MAMA’S’ and ‘ДОМАШЕН АЈВАР’ are the only distinctive elements of the earlier mark.
Furthermore, due to its size and central position on the jar, and the fact that is a readable element (unlike the element in Cyrillic), the word ‘MAMA’S’ clearly dominates the overall impression produced by the earlier mark.
The contested sign is a figurative sign composed of two juxtaposed images that coincide in their layout and in the following elements: a white background; the word ‘MUM’S’ in black at the top of the image; below this element, the words ‘AJVAR’ and ‘HOME MADE’ (in black); in the bottom right corner, a depiction of an aubergine, a red pepper and two chilli peppers; and a negligible element that, due to its position and size, is barely noticeable. This last element is likely to be disregarded by the relevant public and will not be taken into consideration. In the first image the word ‘STARK’ (in red) and in the second image the word ‘MILD’ (in green) appears at the bottom of the label in standard lower case letters.
The element ‘MUM’ of the contested sign is an English word meaning ‘informal word for mother’ and ‘one’s mother’ (information extracted from Collins Dictionary on 18/06/2017 at https://www.collinsdictionary.com/dictionary/english/mum and from Oxford Dictionaries on 18/06/2017 at https://en.oxforddictionaries.com/definition/us/mum#mum_Noun_100). As the reasoning explained above with regard to the apostrophe and the letter ‘S’ applies here, the element ‘MUM’S’ will be perceived as the possessive form of the noun ‘mum’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘AJVAR’ refers to a traditional Balkan side dish made of red peppers, garlic and aubergine (information extracted from Collins Dictionary on 18/06/2017 at https://www.collinsdictionary.com/submission/13992/Ajvar). Bearing in mind that the relevant goods are foodstuffs, this element is non-distinctive for these goods, namely ajvar [preserved peppers]; pickled peppers; peppers [seasonings].
The elements ‘HOME MADE’, ‘STARK’ and ‘MILD’ of the contested sign are English words meaning ‘made at home or on the premises or of high-quality ingredients’, ‘devoid of any elaboration’ or ‘severe; violent’ and ‘not powerful or strong; bland’, respectively (information extracted from Collins Dictionary on 18/06/2017 at https://www.collinsdictionary.com/english). Bearing in mind that the relevant goods are foodstuffs, these elements are non-distinctive.
The figurative elements (i.e. the aubergine, the red pepper and the chilli peppers) will be perceived by the relevant public as commonplace or banal. For this reason, they are considered non-distinctive. 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).
Due to their size (more than twice as large as the other elements), colour and position (above the other elements), the element ‘MUM’S’ in the contested sign is the dominant element, as it is the most eye-catching.
Given that the contested sign is composed of two almost identical layouts almost identical, the assessment of the similarity of the signs will be carried out considering each of the duplicated elements (i.e. all the elements except the varying verbal elements ‘stark’ and ‘mild’) as a single element. This is justified by the fact that the consumers will probably perceive the sign at issue as a repetition of two almost identical images and will therefore refer to or recollect it as a single layout.
Visually, the signs distinctive and dominant elements coincide in the letters ‘M*M*’S’. However, they differ in their second letters (‘A’ versus ‘U’), in the fourth letter, ‘A’, of the earlier mark, which has no counterpart in the contested sign, and in the colours of the letters (yellow versus black). Therefore, they coincide in three out of five letters, in the same order and using a similar structure (i.e. they are both possessive nouns ending in an apostrophe and the letter ‘S’).
The signs also differ in the secondary element ‘ДОМАШЕН АЈВАР’, present in only the earlier mark, and in the secondary and non-distinctive elements ‘HOME MADE’, ‘STARK’ and ‘MILD’, present in only the contested sign.
In addition, although the figurative elements are not distinctive and will be perceived as secondary elements, as explained above, the signs also differ in them, since the earlier mark depicts a jar with a black label, a paper cover and a hanging label, whereas the contested sign incorporates a white background and a depiction of an aubergine, a red pepper and chilli peppers.
Therefore, the signs are visually similar to a low degree.
Aurally, with regard to the signs’ distinctive and dominant elements, the earlier mark is pronounced ‘MA/MAS’ and the contested sign is pronounced ‘MAMS’ in English.
To that extent, the signs coincide in the sound of the letters ‘MAM*S’. The pronunciation differs in the sound of the letter ‘A’ in the fourth position of the contested sign. With respect to the signs’ rhythms, the earlier mark is pronounced in two syllables (stressing the first syllable), whereas the contested mark is pronounced as a single syllable.
Admittedly, the contested sign differs in the pronunciation of the descriptive elements ‘HOME MADE’ and ‘STARK’ or ‘MILD’. However, these elements have a limited impact on the overall impression of the contested sign. Account must be taken of the fact that the differing verbal element in the earlier mark, ‘ДОМАШЕН АЈВАР’, is unreadable and therefore cannot be the subject of a phonetic assessment.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks; the distinctive elements ‘MAMA’S’ and ‘MUM’S’ refer to a similar concept, each being the possessive form of a noun meaning ‘mother’. As the signs will be associated with similar meanings, the signs are conceptually highly similar.
However, it should be noted that this conclusion is partly due to the presence of non-distinctive elements in the signs (i.e. the jar in the earlier mark, and the other verbal elements and the figurative elements of the contested sign), and their impact is very limited.
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 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).
The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. They target the public at large, and the degree of attention is deemed to be average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.
The coinciding words of the earlier mark and the contested sign, which are their distinctive elements, are made up of five and four letters, respectively; they differ in only their second letters (‘A’ versus ‘U’) and the fourth letter of the earlier mark (‘MAMA’S’ versus ‘MUM’S’). The difference in the second letter is only visual, because, aurally, the letters are pronounced identically (/MAMA’S/ versus /MAM’S/), and therefore the difference will go unnoticed. The differing elements, namely the figurative elements and the other verbal elements (i.e. ‘HOME MADE’, ‘STARK’ and ‘MILD’) are deemed to be commonplace or descriptive elements.
In view of the foregoing, as the differences between the signs are confined to non-distinctive or secondary elements and aspects, the signs are visually similar to a low degree and aurally similar to an average degree. Furthermore, they are conceptually highly similar, since the coinciding words refer to the same concept.
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 addition, 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/services covered are from the same or economically linked undertakings. Indeed, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, consumers may think that ‘MUM’S’ is connected somehow with the earlier mark, ‘MAMA’S’, either because they are variations used on different types of packaging or because they are used for imported products that target different countries.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 sign 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 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 cannot be successful.
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
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.