OPPOSITION No B 2 570 946

Kaufland Česká Republika, v.o.s., Bělohorská 2428/203, 169 00 Praha 6, Czech Republik (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Street Picnic Limited, 92 New Crane Wharf, Wapping, London E1W 3TU, United Kingdom (applicant), represented by Trademark Eagle Limited, Unit 8, Valley Court Offices, Lower Road, Croydon, Hertfordshire SG8 0HF, United Kingdom (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 570 946 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 and services of European Union trade mark application No 13 918 255, namely against some of the goods in Class 30. The opposition is based on international trade mark registration No 1 216 117 designating the European Union, Bulgaria, Croatia, Poland, Romania, and Slovakia and on Czech trade mark registration No 338 773. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

It is noted from the outset that according to the extract from Romarin filed by the opponent on 31/08/2015, there is a partial provisional refusal of protection in respect of the international trade mark registration No 1 216 117 designating the European Union. However, as the outcome of the opposition will be the same, the examination of the opposition will continue in relation to all the earlier trade marks claimed by the opponent, including the earlier mark concerned.

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 international trade mark registration No 1 216 117 designating the EU.

1. The goods

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

Class 29:         Preserved, dried and cooked fruits and vegetables; prepared pulses; dried pulses; canned pulses; preserved food based on meat, fish, poultry, game and vegetables with the addition of noodles.

Class 30:         Dried and fresh pasta; noodles and dumplings; canned noodles, noodles filled with meat and/or vegetables; frozen noodles; food products containing noodles; rice; food products containing rice.

Class 31:        Fresh pulses.

The contested goods are the following:

Class 30:        Rice; flour and preparations made from cereals; breakfast cereal; sandwiches; prepared, cooked and frozen meals consisting predominantly of pasta, pizza, noodles and rice; convenience foods and savoury snacks; pizzas and pizza based dishes; pasta and pasta based dishes; rice and rice based dishes; noodles and noodle based dishes; ravioli; sushi; quiches; biscuits; cakes and cookies; pancakes.

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

Rice (specified twice in the list of goods of the contested sign) and noodles are identically contained in both lists of goods.

The contested preparations made from cereals and breakfast cereal overlap with the opponent’s food products containing rice. Therefore, they are identical.

The contested pasta includes, as a broader category, the opponent’s dried and fresh pasta. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested prepared, cooked and frozen meals consisting predominately of pasta and noodles; pasta based dishes; noodle based dishes are included in the broad category of, or overlap with, the opponent’s food products containing noodles. Therefore, they are identical.

The contested prepared, cooked and frozen meals consisting predominately of rice; rice based dishes and sushi (which refers to a Japanese dish consisting of small balls or rolls of vinegar-flavoured cold rice served with a garnish of vegetables, egg, or raw seafood (information extracted from Oxford Dictionaries on 21/02/2017 at en.oxforddictionaries.com)) are included in the broad category of, or overlap with, the opponent’s food products containing rice. Therefore, they are identical.

Dumplings consist of small pieces of dough wrapped around a filling. They include, inter alia, Italian ravioli, which are small, square cases of pasta filled with meat or cheese, cooked in boiling water and usually eaten with a sauce (information extracted from Cambridge Dictionary on 16/02/2017 at dictionary.cambridge.org). Therefore, the contested ravioli are included in the broad category of the opponent’s dumplings. These goods are identical.

Convenience foods refer to a complete meal that has been pre-prepared commercially and so requires minimum further preparation by the consumer. Savoury snacks refer to a small amount of food eaten between meals. Consequently, the contested convenience foods and savoury snacks include, as broader categories, or overlap with, the opponent’s food products containing noodles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested prepared, cooked and frozen meals consisting predominately of pizza; pizzas and pizza based dishes; sandwiches; quiches and pancakes consist of prepared food designed for ease of consumption; these goods can be sold as hot, ready-to-eat dishes, at room temperature, as shelf-stable products or as refrigerated or frozen products that require minimal preparation (typically just heating). They are similar to the opponent’s canned noodles, noodles filled with meat and/or vegetables. These goods are likely to be manufactured by the same producers and are distributed through the same commercial channels. They also have the same relevant public and at least some of them may be in competition.

The remaining contested biscuits; cakes and cookies as well as flour are dissimilar to the opponent’s goods in Classes 29, 30 and 31. The mere fact that these goods are, broadly speaking, foodstuffs is not sufficient to render them similar, as their natures are quite distinct. Furthermore, the fact that an ingredient such as the contested flour is needed for the preparation of other foodstuffs such as the opponent’s noodles, pasta or pizza is generally not  sufficient in itself to show that the goods are similar either (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). In addition, the goods under comparison usually have different commercial origins and are not normally displayed on the same shelves, even if they are sold in the same establishments. Furthermore, they are not complementary.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

NOE
Earlier trade mark	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).

The earlier mark is a word mark, ‘NOE’, which, for part of the public in the relevant territory, for example for Czech, French, Italian, Portuguese, Polish, Romanian, Slovak or Spanish speakers, will be associated with the biblical name Noah. For the remaining part of the public, it will be perceived as an invented word with no meaning. Irrespective of the different perceptions of this word in the relevant territory, ‘NOE’ has no meaning in relation to the goods in question and, therefore, it is distinctive.

The contested sign is a figurative sign composed of two word elements: ‘NOO’, written in a bold, orange, lower case slightly stylised font, and ‘NOODLES’, which appears in brackets underneath ‘NOO’ and is written in a thin, orange, upper case standard font. Both word elements are depicted on a dark, slightly stylised label, which is of a purely decorative character. The word element ‘NOO’ must be considered the dominant (most eye-catching) element of the contested sign, as it is clearly much larger than the other verbal element and completely fills the upper part of the label. It has no meaning in the relevant territory and, therefore, it is distinctive. On the other hand, the word element ‘NOODLES’, due to its size, thin typeface and position in the lower part of the label plays a secondary role in the contested sign. This impression may be reinforced by the fact that this word is enclosed in brackets, which in any case must be considered as an element with no ability to indicate commercial origin. ‘NOODLES’ refers in English to ‘long, thin, curly strips of pasta’, and it is likely to be understood with this meaning also by some consumers outside the native English-speaking areas, given its frequent use in the course of trade. It is non-distinctive for this part of the public, as it is descriptive in relation to some of the relevant goods in Class 30 (such as prepared, cooked and frozen meals consisting predominantly of pasta, noodles; noodles and noodle based dishes and pasta and pasta based dishes). For the remaining goods in Class 30, for which this word is not descriptive, such as prepared, cooked and frozen meals consisting predominately of pizza and rice; pizzas and pizza based dishes; pancakes, it has a normal degree of distinctiveness. It also has a normal degree of distinctiveness for the remaining part of the public, for which ‘NOODLES’ has no meaning at all.

Visually, the signs coincide in two letters, ‘NO’, in the earlier mark and in the dominant element of the contested sign. However, they differ in the letters ‘E’ at the end of the earlier mark and ‘O’ at the end of the dominant element of the contested sign, as well as in the word ‘NOODLES’ and the additional figurative elements of the contested sign, which are not present in the earlier sign.

The length of the signs may also influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the present case, the earlier sign consists of only three letters and, therefore, it is a short sign. The same is true of the dominant element of the contested sign, which is also a short word containing only three letters. When comparing these words, it is obvious that the shapes of their final letters are different, which, bearing in mind the above principle, will influence the overall impression each sign creates. Furthermore, although the figurative elements of the contested sign will have a limited impact on the public, as explained above, nevertheless they will not go completely unnoticed. Consequently, and also bearing in mind the importance that will be attributed to the element ‘NOODLES’, as explained above, the signs can at most be considered visually similar to a low degree.

Aurally, for a part of the public (such as Czech-, Estonian-, Italian-, Polish-, Slovak-, Spanish- or Romanian-speaking consumers), the pronunciation of the signs will coincide in the sound of the letters ‛NO’, present identically in the dominant element of the contested sign and in the earlier mark, and will differ in the sounds of the last letters, ‛O’ and ‘E’, of ‘NOE’ and ‘NOO’. For another part of the public, the pronunciation coincides only in the sound of the letter ‘N’ and differs in the sounds of the remaining letters, ‘OE’ and ‘OO’. This is the case, for example, for Dutch-speaking consumers, who will refer to the earlier mark as [nu] and to the dominant element of the contested sign as [no], and for the English-speaking public, which will pronounce them as [nəʊ] and [nu]. Further differences in pronunciation will arise from the sounds of the letters ‘NOODLES’ of the contested sign, which have no counterparts in the earlier mark. Consequently, and taking into account the impact of the word ‘NOODLES’, as explained above, the signs can be regarded as aurally similar to only a low degree.

Conceptually, for the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. On the other hand, the remaining part of the public will understand either both ‘NOE’ and ‘NOODLES’ or only one of them. Irrespective of the different possible scenarios and account taken of the weight given to the element ‘NOODLES’, as explained, the signs are in any case not conceptually similar.

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

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the earlier mark and the dominant element of the contested sign are short words containing only three letters. Consequently, the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

Indeed, as explained in detail in section c) of this decision, the coincidences in the letters ‘NO-’ are of such a nature as to lead to a finding of only a low degree of visual and aural similarity, even for that part of the public for which the element ‘NOODLES’ is not distinctive. Moreover, conceptually, the signs either have no similarities or a conceptual comparison is not possible.

It is, therefore, considered that the differences between the marks are clearly perceptible and outweigh the similarities such that a likelihood of confusion on the part of the public can safely be excluded, even taking into account that the goods are identical or similar. That is even more so the case where the element ‘NOODLES’ is distinctive, since this element will further contribute to differentiating the signs.

Considering all of the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on international trade mark registration No 1 216 117 designating Romania, Bulgaria, Slovakia, Poland and Croatia and on Czech trade mark registration No 338 773.

Since these marks are identical to the one which has been compared and cover the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Jorge ZARAGOZA GÓMEZ

Arkadiusz GORNY

Oana-Alina STURZA

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.