OPPOSITION No B 2 635 095
Natural Balance Foods Limited, Drakes Drive, Crendon Industrial Park, Long Crendon, Aylesbury, Buckinghamshire HP18 9BA, United Kingdom (opponent), represented by Tennant IP Limited, 10 Llanthewy Road, Newport NP20 4JR, United Kingdom (professional representative)
a g a i n s t
Australasian Conference Association Limited, 148 Fox Valley Road, Wahroonga, New South Wales 2076, Australia (applicant), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative).
On 22/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 635 095 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 482 343, namely against some of the goods in Classes 29 and 30. The opposition is based on European Union trade mark registrations No 4 440 848 and No 13 793 187. 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 same in earlier EUTMs No 4 440 848 and No 13 793 187, namely the following:
Class 29: Prepared meals, snack foods; snack bars; snack foods and snack bars containing fruits, nuts, herbs and spices; low carbohydrate snack foods; prepared food mixes; none of the aforesaid goods including potato chips and crisps.
Class 30: Confectionery; nutritional confectionery; chocolates; sweets; biscuits; cookies; cereals; flour and preparations made from flour; prepared meals; snack and snack foods; low carbohydrate cereals; cereal products, bars and snacks; low carbohydrate confectionery; none of the aforesaid goods including potato chips and crisps.
The contested goods are the following:
Class 29: Prepared nuts; nut and seed spreads; nut butters; snack foods in this class; snack foods in this class comprising primarily of dried fruits, preserved fruits, prepared fruits, nuts, and/or seeds; nutbased snack bars; fruit (prepared, dried or preserved) based snack bars; cooked, dried, frozen or preserved fruits; cooked, dried, frozen or preserved vegetables; cooked, dried, frozen or preserved meals; food products in this class containing or made from vegetables or fruits; mixtures in this class comprised primarily of dried fruits, prepared nuts, seeds.
Class 30: Cereals and products made from or containing cereals including breakfast cereals; grain based snack foods; cereal based snack foods; oat based snack foods; wheat based snack foods; muesli based snack foods; all snack foods in this class including chips; grain based snack bars; cereal based snack bars; oat based snack bars; wheat based snack bars; muesli based snack bars; all snack bars in this class; all rice-based snack foods in this class; crackers; flavoured crackers; rice-based crackers; energy bars; cereal bars; preserved herbs; fruit sauces; seed-based snack bars.
Some of the contested goods are identical to goods on which the opposition is based, for example the contested snack foods in this class in Class 29 and the opponent’s snack foods in Class 29. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.
- 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 assumed to be identical are directed at the public at large. The degree of attention will be average.
- The signs
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NATURALLY NOOD
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Earlier trade marks |
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).
Earlier EUTM No 4 440 848 is a figurative mark composed of the verbal element ‘nākd.’ in standard lower case letters.
Earlier EUTM No 13 793 187 is a figurative mark composed of the stylised verbal elements ‘EAT’ and ‘nākd.’ The verbal element ‘nākd.’ is clearly the dominant element, due to its size and central position in the sign.
The contested sign is a word mark composed of two verbal elements, ‘NATURALLY NOOD’. As a word mark, it has no elements that could be considered more dominant (visually eye-catching) than the other.
The element ‘nākd.’ of the earlier marks has no direct meaning in any language of the European Union. However, it is reasonable to assume that part of the English-speaking public would pronounce it as the word ‘naked’. Therefore, it cannot be excluded that part of the English-speaking public will perceive it as a non-obvious misspelling of that word. As it is not descriptive, allusive or otherwise weak for the relevant goods, this element is distinctive in both earlier marks.
The element ‘NOOD’ of the contested sign has no direct meaning in any language of the European Union apart from Dutch, where it means ‘emergency, distress, need’. However, because it may be pronounced similarly to the word ‘nude’, it cannot be excluded that part of the English-speaking public will perceive it as a non-obvious misspelling of that word. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘EAT’ of earlier EUTM No 13 793 187 has no meaning in any European language apart from English. As a basic English word, it may be understood by the majority of the relevant public and will be perceived as an incentive to buy and consume the relevant goods (foodstuffs). Therefore, for that part of the public, it is non-distinctive in relation to these goods. It is has a normal degree of distinctiveness for the rest of the public.
The element ‘NATURALLY’ of the contested sign will be associated with ‘nature, in a natural manner’ by the English-speaking public and by other parts of the relevant public, as many equivalents of this word in other languages have the same etymology (the Latin word ‘nātūra’) and the same root, ‘natur(a)’, for example in French, Spanish, Polish, Bulgarian, Danish, Slovak, Hungarian and Dutch. Bearing in mind that the relevant goods are foodstuffs, for the part of the public that associates ‘NATURALLY’ with nature, this element is weak/non-distinctive.
Conceptually, for the majority of the relevant public, the signs either have no concept at all or will be associated with different concepts (‘EAT’ versus ‘NATURALLY’ and ‘need, distress’ in Dutch). Therefore, for that part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs or the signs are conceptually not similar.
However, part of the English-speaking public may associate the signs with the concept of being undressed, naked or nude. It must be stressed that this concept is not immediately perceptible; it does not derive directly from the semantic content of the verbal elements of the marks but is a result of a play on words and requires some mental steps and imagination. Moreover, as this concept is unusual and not obvious in relation to the relevant goods, it is not likely to be perceived during the purchasing of the goods by the relevant consumers, who have an average degree of attention.
Therefore the signs are conceptually similar to a low degree for part of the English-speaking public, which will deduce this concept from the non-obvious misspellings.
Visually, the signs coincide in some of the letters of their verbal elements, namely ‘NA’ and ‘D’. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same letters, but they cannot, for that reason alone, be regarded as visually similar.
Moreover, it is established case-law that consumers are not in the habit of artificially dissecting trade marks and analysing their individual parts; rather, they see and perceive a mark in its entirety. Therefore, even the repetition of the structure of letters ‘N**D’ in the distinctive elements of the signs (‘nākd.’ versus ‘NOOD’) cannot lead to the conclusion that there is any visual similarity between the signs as a whole.
Therefore, it is concluded that the signs are not visually similar.
Aurally, the mere commonality in the sounds of the letters ‘NA’ and ‘D’ cannot lead to the conclusion that there is any aural similarity between the signs, since the signs as a whole have different lengths, rhythms and intonations.
Therefore, it is concluded that the signs are not aurally similar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. As the signs have been found conceptually similar to a low degree for the part of the English speaking public exclusively, and dissimilar in all the aspects of comparison for the remaining public, the examination of likelihood of confusion will proceed in relation to the English speaking part of the public.
- 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.
According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.
- Global assessment, other arguments and conclusion
The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
Moreover, for reasons of procedural economy, the goods were not compared but were assumed to be identical. The above assumptions constitute the best light in which the opponent’s case can be assessed. However, even taking into account this assumed identity and enhanced distinctiveness, the Opposition Division does not consider that the contested application will give rise to a likelihood of confusion.
In the present case, the signs are visually and aurally not similar and conceptually similar only to a low degree.
Firstly, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). In the present case, there is no visual similarity between the signs.
Secondly, the use of fanciful misspellings will not lead the relevant consumers to the conclusion that the goods come from the same undertaking or economically linked undertakings, especially taking into account that these are misspellings/abbreviations of different words.
Therefore, the Opposition Division is of the opinion that the absence of any visual and aural similarity between the signs prevails over the remote conceptual similarity, even in the hypothetical scenario that the goods are identical and the earlier marks have enhanced distinctiveness.
The opponent argues that the applicant uses the word ‘nood’ alone or the expression ‘get nood’ to describe its goods, not ‘NATURALLY NOOD’. However, when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).
The opponent refers to the judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24. In this paragraph, the Court stated ‘In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.’ Therefore, the quoted judgment concerned the impact of the earlier mark’s enhanced distinctiveness when, unlike in the present case, there is conceptual similarity deriving from similar images with analogous semantic content (a bouncing feline) and the finding of this judgment cannot be directly applicable.
Considering all the above, even assuming that the goods are identical and that the earlier marks enjoy enhanced distinctiveness, there is no likelihood of confusion on the part of the English-speaking public. Therefore, since it has previously been established that the signs are dissimilar for the remaining public and one of the required conditions of Article 8(1)(b) EUTMR is not satisfied, the opposition must be rejected.
On 01/12/2016, the applicant requested proof of use of the opponent’s earlier European Union trade mark No 4 440 848. Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to request the opponent to submit proof of use and for it to be examined.
Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
COSTS
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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Catherine MEDINA |
Anna ZIÓŁKOWSKA |
Boyana NAYDENOVA |
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.