OPPOSITION DIVISION
OPPOSITION No B 2 700 741
Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg,
Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte
PartGmBB, Maximiliansplatz 14, 80333 Munich, Germany (professional
representative)
a g a i n s t
ΛΕΟΝΟΡΑ ΣΜΑΤΣΗ ΚΑΙ ΣΙΑ Ο.Ε., ΛΟΥΚΙΑΝΟΥ 24, 10675 ΑΘΗΝΑ, Greece
(applicant), represented by Dimitra Sakarellou, Kodrigtonos 11, 10434 Athens,
Greece (professional representative).
On 13/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 700 741 is partially upheld, namely for the following
contested goods:
Class 29: Oils and fats; Birds eggs and egg products; Dairy products and
dairy substitutes; Processed fruits, fungi and vegetables (including nuts and
pulses); Fish, seafood and molluscs; Dahls; Salted nuts; White pudding;
Steamed cakes of smashed fish and yam (hampen); Steamed or toasted cakes
of fish paste (kamaboko); Beef stew; Coconut shrimp; Filled potato skins; Chile
rellenos; Puffed pork rind; Custard style yoghurts; Mincemeat made from fruits;
Extracts for soups; Roast beef flavoured extract; Olives stuffed with almonds;
Olives stuffed with red peppers; Olives stuffed with red peppers and almonds;
Olives stuffed with pesto in sunflower oil; Olives stuffed with feta cheese in
sunflower oil; Bottled vegetables; Yoghurt desserts; Artificial milk based
desserts; Fruit desserts; Desserts made from milk products; Prepared meals
consisting substantially of seafood; Prepared meals containing [principally]
eggs; Prepared meals consisting primarily of meat substitutes; Prepared meat
dishes; Ready cooked meals consisting wholly or substantially wholly of game;
Ready cooked meals consisting wholly or substantially wholly of poultry; Ready
cooked meals consisting wholly or substantially wholly of meat; Prepared
dishes consisting principally of meat; Prepared snails [escargot]; Prepared
salads; Candied nuts; Fish jellies; Bouillon; Stock [prepared]; Soups; Bouillon
concentrates; Broth [soup]; Chicken stock; Clam juice; Fish stock; Beef
bouillon; Vegetable stock; Veal stock; Preparations for making bouillon;
Chowder; Caponata; Spiced nuts; Frozen prepared meals consisting principally
of vegetables; Frozen appetizers consisting primarily of seafood; Frozen
appetizers consisting primarily of chicken; Frozen pre-packaged entrees
consisting primarily of seafood; Frozen french fries; Frozen cooked fish;
Quenelles; Stewed apples; Consommes; Radish cubed kimchi (kkakdugi);
Meat boiled down in soy sauce (tsukudani meat); Potato pancakes; Fish
crackers; Chicken croquettes; Croquettes; Stock cubes; Soup cubes; Stuffed
cabbage rolls; Banana chips; Fish sausages; Vegetarian sausages; Cooked
meals consisting principally of fish; Cooked meat dishes; Cooked dish
consisting primarily of chicken and ginseng (samgyetang); Cooked dish
Decision on Opposition No B 2 700 741 page: 2 of 14
consisting primarily of soybean paste and tofu (doenjang-jjigae); Cooked dish
consisting primarily of rich soybean paste and tofu (cheonggukjang-jjigae);
Cooked dish consisting primarily of stired-fried beef and fermented soy sauce
(Sogalbi); Cooked dish consisting primarily of stir-fried chicken and fermented
hot pepper paste (dak-galbi); Cooked dish consisting primarily of fermented
vegetable, pork and tofu (kimchi-jjigae); Bombay mix; Mixes for making broths;
Mixes for making soup; Fruit-based snack food; Nut-based snack foods;
Vegetable-based snack foods; Soy-based snack foods; Meat-based snack
foods; Tofu-based snacks; Gumbo; Faggots [food]; Vegetable burgers; Soy
burger patties; Tofu burger patties; Fish cakes; Potato flakes; Potato-based
gnocchi; Dolmas; Nuts, prepared; Hash brown potatoes; Omelets; Organic nut
and seed-based snack bars; Vegetable-based entrees; Shepherd's pie;
Breaded and fried jalapeno peppers; Preparations for making soup; Vegetable
marrow paste; Eggplant paste; Potato sticks; Potato fritters; Potato dumplings;
Potato salad; Spicy beef broth (yukgaejang); Soup pastes; Mashed potato;
Dairy puddings; Pre-cooked soup; Pre-cooked miso soup; Pre-cooked curry
stew; Pre-packaged dinners consisting primarily of seafood; Pre-packaged
dinners consisting primarily of game; Rhubarb in syrup; Onion rings; Rosti
[fried grated potato cakes]; Dips; Dairy-based dips; Chicken salad; Antipasto
salads; Legume salads; Caesar salad; Fritters; Scotch eggs; Powdered milk for
food purposes; Potato-based snack foods; Potato snacks; Matzo ball soup;
Canned soups; Soup powders; Instant miso soup; Bisques; Instant soup;
Instant stew; Soup concentrates; Condensed tomatoes; Soya [prepared];
Tzatziki; French fries; Tofu; Snack foods based on vegetables; Snack foods
based on nuts; Snack foods based on legumes; Nut-based food bars; Chili con
carne; Chile con queso; Potato chips; Yuca chips; Soy chips; Vegetable chips;
Chicharron; Chop suey; Casseroles [food]; Stews; Falafel; Hazelnuts,
prepared; Sugar-coated fruits on a stick; Canned pork and beans; Vegetable
soup preparations; Ox bone based broth (seolleongtang); Fish with chips; Fish
in olive oil; Fish croquettes; Roast chestnuts; Roasted nuts; Corned beef hash;
Chilled dairy desserts; Chilled meals made from fish; Chilled foods consisting
predominately of fish.
Class 30: Flavourings; Processed grains, starches, and goods made thereof,
baking preparations and yeasts; Sugars, natural sweeteners, sweet coatings
and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Ice,
ice creams, frozen yogurts and sorbets; Baked goods, confectionery, chocolate
and desserts; Baozi [stuffed buns]; Jiaozi [stuffed dumplings]; Okonomiyaki
[Japanese savory pancakes]; Ramen [Japanese noodle-based dish];
Uncooked pizzas; Prepared savory foodstuffs made from potato flour; French
toast; Salted tarts; Pretzels; Savory pastries; Millet cakes; Dried seaweed rolls
[gimbap]; Corn, roasted; Pizza bases; Flapjacks; Cheese-flavored biscuits;
Meals consisting primarily of pasta; Meals consisting primarily of rice; Sweet
rice with nuts and jujubes (yaksik); Wontons; Chips [cereal products]; Egg rolls;
Empanadas; Enchiladas; Processed unpopped popcorn; Noodle-based
prepared meals; Pasta-based prepared meals; Rice-based prepared meals;
Prepared rice dishes; Prepared pizza meals; Prepared meals containing
[principally] rice; Prepared meals containing [principally] pasta; Prepared meals
in the form of pizzas; Ready to eat savory snack foods made from maize meal
formed by extrusion; Prepared foodstuffs in the form of sauces; Dry and liquid
ready-to-serve meals, mainly consisting of pasta; Dry and liquid ready-to-serve
meals, mainly consisting of rice; Pizzas [prepared]; Chocolate-based ready-to-
eat food bars; Buckwheat jelly (Memilmuk); Pastries consisting of vegetables
and fish; Stir fried rice cake [topokki]; Calzones; Frozen pastry stuffed with
meat and vegetables; Frozen pastry stuffed with vegetables; Frozen pizzas;
Decision on Opposition No B 2 700 741 page: 3 of 14
Frozen pastry stuffed with meat; Quesadillas; Mincemeat pies; Chinese stuffed
dumplings (gyoza, cooked); Chinese steamed dumplings (shumai, cooked);
Quiches; Sticky rice cakes (Chapsalttock); Glutinous pounded rice cake coated
with bean powder (injeolmi); Kimchi pancakes (kimchijeon); Pumpkin porridge
(Hobak-juk); Korean-style pasta soup [sujebi]; Crackers made of prepared
cereals; Crackers filled with cheese; Crackers flavoured with herbs; Prawn
crackers; Crackers flavoured with meat; Crackers flavoured with vegetables;
Crackers flavoured with spices; Crackers flavoured with cheese; Rice crackers;
Rice crackers [senbei]; Crepes; Meat pies; Meat pies [prepared]; Lasagne;
Sausage rolls; Hamburgers being cooked and contained in a bread roll;
Macaroni salad; Macaroni with cheese; Soft pretzels; Tamales; Snack foods
consisting principally of bread; Snack food products made from cereal flour;
Snack food products made from soya flour; Snack foods made from corn and
in the form of puffs; Snack foods made from corn and in the form of rings;
Snack food products made from rice flour; Snack foods made from wheat;
Snack foods made of whole wheat; Cereal snack foods flavoured with cheese;
Cheese flavored puffed corn snacks; Cereal-based snack food; Rice-based
snack food; Snack foods made from corn; Snacks manufactured from muesli;
Tortilla snacks; Extruded wheat snacks; Snack foods consisting principally of
extruded cereals; Snack foods prepared from maize; Filled baguettes; Onion
biscuits; Hamburgers contained in bread rolls; Burritos; Brioches; Nachos;
Shrimp dumplings; Rice dumplings dressed with sweet bean jam (ankoro);
Rice dumplings; Fresh sausage rolls; Fresh pies; Pies; Pies [sweet or savoury];
Poultry and game meat pies; Pastries consisting of vegetables and meat;
Vegetable pies; Egg pies; Pastries consisting of vegetables and poultry; Pies
containing poultry; Pork pies; Pies containing meat; Pies containing game; Pies
containing vegetables; Pies containing fish; Pizzas; Wholewheat crisps; Pasta
containing stuffings; Korean traditional rice cake [injeolmi]; Pasta dishes; Rice
based dishes; Ready-made dishes containing pasta; Preserved pizzas; Candy
coated popcorn; Caramel coated popcorn; Popcorn; Microwave popcorn;
Flavoured popcorn; Caramel coated popcorn with candied nuts; Pre-packaged
lunches consisting primarily of rice, and also including meat, fish or vegetables;
Pre-baked pizzas crusts; Snack food products made from cereal starch; Snack
food products made from maize flour; Snack food products made from potato
flour; Snack food products made from rusk flour; Snack food products
consisting of cereal products; Ravioli; Ravioli [prepared]; Risotto; Spring rolls;
Rice biscuits; Rice mixed with vegetables and beef [bibimbap]; Sandwiches;
Rice salad; Pasta salad; Samosas; Sandwiches containing minced beef;
Sandwiches containing chicken; Hot dogs (prepared); Frankfurter sandwiches;
Cheeseburgers [sandwiches]; Sandwiches containing salad; Sandwiches
containing fish fillet; Sandwiches containing fish; Sandwiches containing meat;
Hot dog sandwiches; Pineapple fritters; Banana fritters; Pot pies; Puffed corn
snacks; Sesame snacks; Stir-fried noodles with vegetables (Japchae);
Spaghetti and meatballs; Canned spaghetti in tomato sauce; Pellet-shaped rice
crackers (arare); Bean jam buns; Boxed lunches consisting of rice, with added
meat, fish or vegetables; Flaky pastry containing ham; Tacos; Tabbouleh;
Green onion pancake [pajeon]; Mung bean pancakes (bindaetteok); Fried corn;
Tortillas; Crisps made of cereals; Pizza crust; Canned pasta foods; Chalupas;
Chimichanga; Taco chips; Wonton chips; Corn chips; Vegetable flavoured corn
chips; Seaweed flavoured corn chips; Grain-based chips; Rice crisps; Tortilla
chips; Chow mein; Chow mein [noodle-based dishes]; Wrap [sandwich];
Fajitas; Puffed cheese balls [corn snacks]; Fresh pizza; Hot sausage and
ketchup in cut open bread rolls; Toasted sandwiches; Toasted cheese
sandwich with ham; Toasted cheese sandwich; Corn kernels being toasted;
Decision on Opposition No B 2 700 741 page: 4 of 14
Chilled pizzas; Steamed buns stuffed with minced meat (niku-manjuh); Filled
bread rolls.
Class 31: Agricultural and aquacultural crops, horticulture and forestry
products; Live animals, organisms for breeding.
Class 32: Beer and brewery products; Preparations for making
beverages.
2. European Union trade mark application No 14 893 432 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 893 432 . The opposition is based on European
Union trade mark registration No 13 534 854 “NORMA”. The opponent invoked
Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
a) The goods
Among others, the goods on which the opposition is based are the following:
Class 29: Meat, sausage, fish (including processed shellfish, crustaceans and
molluscs), poultry and game; Goods and extracts of meat, sausage, poultry, game
and fish; Preserved, Frozen, Dried, cooked and/or Prepared fruits and Vegetable,
Decision on Opposition No B 2 700 741 page: 5 of 14
Including potatoes, Peanut kernels, Prepared nuts, Ground almonds and cashew
kernels; Vegetable and fruit extracts for culinary purposes; Potato products, namely
fried, boiled, deep-fried or pre-cooked potatoes, French fries, potato croquettes,
potato fritters, potato dumplings, fried potatoes; Sweet and/or savoury snacks,
mainly consisting of dried fruits, nuts, potato products, peanut kernels, almonds and
cashew nut kernels; Meat, sausage, fish, fruit and vegetable jellies; Jams,
marmalade, compotes; Eggs; Milk and milk products, Including buttermilk,
Fermented milk, Curd, Milk preserves, Condensed milk, Butter, Clarified butter,
Cheese products, Curds, Cheese preserves, Kefir [milk beverage], Milk cream,
Yoghurt, including with added fruit, Powdered milk for food purposes, Principally of
milk, Yoghurt, Curds, Desserts consisting of gelatine and/or cream, non-alcoholic
milk and mixed milk beverages, milk predominating or of half milk, including with
added cocoa, chocolate or coffee; Edible oils and fats, including margarine and lard;
Spreads, mainly consisting of milk and/or fats, edible fats and edible fat mixtures;
Delicatessen salads and frozen food, mixed, semi-prepared (including fillings) and
prepared meals, including preserved meals, all mainly consisting of meat, sausage,
fish, poultry, game, prepared fruit and vegetables, pulses, cheese, eggs, potatoes,
corn and/or potato products; Instant soups, Soup concentrates, Soup (Preparations
for making -), In particular meat and vegetable stock cubes.
Class 30: Coffee, tea, cocoa and artificial coffee, including cocoa powder, coffee
and tea extracts, non-alcoholic coffee, tea, cocoa and chocolate beverages,
including being instant beverages; Rice, tapioca, sago; Flour and preparations made
from cereals, cereals, muesli and wholewheat products; Potato flour, Food starch,
Semolina; Farinaceous food pastes, Noodles and Pasta products, Ready-made
dishes containing pasta and Canned pasta; Delicatessen salads as well as frozen
food, mixed, semi-prepared (including with fillings) and prepared meals, including
preserved meals, mainly consisting of pasta, rice, farinacious foods and/or potato
flour, including the aforesaid goods with added spices and sauces (including salad
dressings) and/or combined with bread or bread rolls; Bread, Sandwiches,
Sandwiches, Pastry and confectionery, Including cookies, Cakes, Long-life bakery
goods, including with sweet and savoury fillings, In particular crispbread, crispy
cakes and Cookies; Sweet and/or savoury snacks mainly consisting of cereals,
cocoa, cakes, chocolate, sugar, honey, potato flour and/or pastries; Pizzas and pizza
products, including preserved; Chocolate, chocolate products and pralines, including
with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or
milk products, in particular yoghurt; Ices, including in the form of ice cream cakes and
powder for edible ices; Sugar (including vanilla and vanilla sugar and glucose for
consumption), Honey, Molasses for food; Confectionery, in particular sweets and
non-medicated chewing gum; Marzipan; Spreadable cocoa mixtures, spreads, mainly
consisting of sugar, cocoa and/or nougat; Yeast, baking powder, essences for baking
(except essential oils); Yeast, baking-powder; Puddings, custard powder and
blancmanges, desserts mainly consisting of starch; Edible salt, Mustard, Pepper,
Vinegar, Sauces, including dressings for salad, salad dressings, powdered sauces
and sauce extracts, Mayonnaise, Tomato ketchup; Spices, Dried seasoning herbs
and Condiments, Spices, Flavourings for soups, Culinary herbs, Preserved
(seasonings); Ice.
Class 31: Grains and agricultural, horticultural and forestry products not included
in other classes; Live animals; Fresh fruits and vegetables; Seeds, including flower
bulbs; Natural plants and flowers; Foodstuffs for dogs, cats, birds, rodents and fish,
including non-medicated supplements for animal foodstuffs and fortifying feed for
animals, and beverages for the aforesaid pets, dietetic foodstuffs for dogs, cats,
birds, rodents and fish, not for medical purposes; Malt; Animal litter.
Decision on Opposition No B 2 700 741 page: 6 of 14
Class 32: Beers, non-alcoholic beers, flavored beers, mixed drinks containing
beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit drinks
and fruit juices, vegetable juices; Smoothies; Syrups and other preparations for
making beverages.
Also, the earlier mark is registered for goods and services in Classes 1, 3, 4, 5, 7, 8,
9, 10, 11, 12, 13, 14, 15, 16, 18, 19, 21, 22, 25, 26, 27, 28, 33, 34, 35, 36, 37, 38, 39,
40, 41, 43 and 44.
The contested goods are the following:
Class 29: Oils and fats; Birds eggs and egg products; Dairy products and dairy
substitutes; Processed fruits, fungi and vegetables (including nuts and pulses); Fish,
seafood and molluscs; Dahls; Salted nuts; White pudding; Steamed cakes of
smashed fish and yam (hampen); Steamed or toasted cakes of fish paste
(kamaboko); Beef stew; Coconut shrimp; Filled potato skins; Chile rellenos; Puffed
pork rind; Custard style yoghurts; Pollen prepared as foodstuff; Mincemeat made
from fruits; Extracts for soups; Roast beef flavoured extract; Olives stuffed with
almonds; Olives stuffed with red peppers; Olives stuffed with red peppers and
almonds; Olives stuffed with pesto in sunflower oil; Olives stuffed with feta cheese in
sunflower oil; Bottled vegetables; Yoghurt desserts; Artificial milk based desserts;
Fruit desserts; Desserts made from milk products; Prepared meals consisting
substantially of seafood; Prepared meals containing [principally] eggs; Prepared
meals consisting primarily of meat substitutes; Prepared meat dishes; Ready cooked
meals consisting wholly or substantially wholly of game; Ready cooked meals
consisting wholly or substantially wholly of poultry; Ready cooked meals consisting
wholly or substantially wholly of meat; Prepared dishes consisting principally of meat;
Prepared snails [escargot]; Prepared salads; Candied nuts; Fish jellies; Bouillon;
Stock [prepared]; Soups; Bouillon concentrates; Broth [soup]; Chicken stock; Clam
juice; Fish stock; Beef bouillon; Vegetable stock; Veal stock; Preparations for making
bouillon; Chowder; Caponata; Spiced nuts; Frozen prepared meals consisting
principally of vegetables; Frozen appetizers consisting primarily of seafood; Frozen
appetizers consisting primarily of chicken; Frozen pre-packaged entrees consisting
primarily of seafood; Frozen french fries; Frozen cooked fish; Quenelles; Stewed
apples; Consommes; Radish cubed kimchi (kkakdugi); Meat boiled down in soy
sauce (tsukudani meat); Potato pancakes; Fish crackers; Chicken croquettes;
Croquettes; Stock cubes; Soup cubes; Stuffed cabbage rolls; Banana chips; Fish
sausages; Vegetarian sausages; Cooked meals consisting principally of fish; Cooked
meat dishes; Cooked dish consisting primarily of chicken and ginseng (samgyetang);
Cooked dish consisting primarily of soybean paste and tofu (doenjang-jjigae);
Cooked dish consisting primarily of rich soybean paste and tofu (cheonggukjang-
jjigae); Cooked dish consisting primarily of stired-fried beef and fermented soy sauce
(Sogalbi); Cooked dish consisting primarily of stir-fried chicken and fermented hot
pepper paste (dak-galbi); Cooked dish consisting primarily of fermented vegetable,
pork and tofu (kimchi-jjigae); Bombay mix; Mixes for making broths; Mixes for making
soup; Fruit-based snack food; Nut-based snack foods; Vegetable-based snack foods;
Soy-based snack foods; Meat-based snack foods; Tofu-based snacks; Gumbo;
Faggots [food]; Vegetable burgers; Soy burger patties; Tofu burger patties; Fish
cakes; Potato flakes; Potato-based gnocchi; Dolmas; Nuts, prepared; Hash brown
potatoes; Omelets; Organic nut and seed-based snack bars; Vegetable-based
entrees; Shepherd's pie; Breaded and fried jalapeno peppers; Preparations for
making soup; Vegetable marrow paste; Eggplant paste; Potato sticks; Potato fritters;
Potato dumplings; Potato salad; Spicy beef broth (yukgaejang); Soup pastes;
Mashed potato; Dairy puddings; Pre-cooked soup; Pre-cooked miso soup; Pre-
cooked curry stew; Pre-packaged dinners consisting primarily of seafood; Pre-
Decision on Opposition No B 2 700 741 page: 7 of 14
packaged dinners consisting primarily of game; Rhubarb in syrup; Onion rings; Rosti
[fried grated potato cakes]; Dips; Dairy-based dips; Chicken salad; Antipasto salads;
Legume salads; Caesar salad; Fritters; Scotch eggs; Powdered milk for food
purposes; Potato-based snack foods; Potato snacks; Matzo ball soup; Canned
soups; Soup powders; Instant miso soup; Bisques; Instant soup; Instant stew; Soup
concentrates; Condensed tomatoes; Soya [prepared]; Tzatziki; French fries; Tofu;
Snack foods based on vegetables; Snack foods based on nuts; Snack foods based
on legumes; Nut-based food bars; Chili con carne; Chile con queso; Potato chips;
Yuca chips; Soy chips; Vegetable chips; Chicharron; Chop suey; Casseroles [food];
Stews; Falafel; Hazelnuts, prepared; Sugar-coated fruits on a stick; Edible birds'
nests; Canned pork and beans; Vegetable soup preparations; Ox bone based broth
(seolleongtang); Fish with chips; Fish in olive oil; Fish croquettes; Roast chestnuts;
Roasted nuts; Corned beef hash; Chilled dairy desserts; Chilled meals made from
fish; Chilled foods consisting predominately of fish.
Class 30: Flavourings; Processed grains, starches, and goods made thereof, baking
preparations and yeasts; Sugars, natural sweeteners, sweet coatings and fillings,
bee products; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams,
frozen yogurts and sorbets; Baked goods, confectionery, chocolate and desserts;
Baozi [stuffed buns]; Jiaozi [stuffed dumplings]; Okonomiyaki [Japanese savory
pancakes]; Ramen [Japanese noodle-based dish]; Uncooked pizzas; Prepared
savory foodstuffs made from potato flour; French toast; Salted tarts; Pretzels; Savory
pastries; Millet cakes; Dried seaweed rolls [gimbap]; Corn, roasted; Pizza bases;
Flapjacks; Cheese-flavored biscuits; Meals consisting primarily of pasta; Meals
consisting primarily of rice; Sweet rice with nuts and jujubes (yaksik); Wontons; Chips
[cereal products]; Egg rolls; Empanadas; Enchiladas; Processed unpopped popcorn;
Noodle-based prepared meals; Pasta-based prepared meals; Rice-based prepared
meals; Prepared rice dishes; Prepared pizza meals; Prepared meals containing
[principally] rice; Prepared meals containing [principally] pasta; Prepared meals in the
form of pizzas; Ready to eat savory snack foods made from maize meal formed by
extrusion; Prepared foodstuffs in the form of sauces; Dry and liquid ready-to-serve
meals, mainly consisting of pasta; Dry and liquid ready-to-serve meals, mainly
consisting of rice; Pizzas [prepared]; Chocolate-based ready-to-eat food bars;
Buckwheat jelly (Memilmuk); Pastries consisting of vegetables and fish; Stir fried rice
cake [topokki]; Calzones; Frozen pastry stuffed with meat and vegetables; Frozen
pastry stuffed with vegetables; Frozen pizzas; Frozen pastry stuffed with meat;
Quesadillas; Mincemeat pies; Chinese stuffed dumplings (gyoza, cooked); Chinese
steamed dumplings (shumai, cooked); Quiches; Sticky rice cakes (Chapsalttock);
Glutinous pounded rice cake coated with bean powder (injeolmi); Kimchi pancakes
(kimchijeon); Pumpkin porridge (Hobak-juk); Korean-style pasta soup [sujebi];
Crackers made of prepared cereals; Crackers filled with cheese; Crackers flavoured
with herbs; Prawn crackers; Crackers flavoured with meat; Crackers flavoured with
vegetables; Crackers flavoured with spices; Crackers flavoured with cheese; Rice
crackers; Rice crackers [senbei]; Crepes; Meat pies; Meat pies [prepared]; Lasagne;
Sausage rolls; Hamburgers being cooked and contained in a bread roll; Macaroni
salad; Macaroni with cheese; Soft pretzels; Tamales; Snack foods consisting
principally of bread; Snack food products made from cereal flour; Snack food
products made from soya flour; Snack foods made from corn and in the form of puffs;
Snack foods made from corn and in the form of rings; Snack food products made
from rice flour; Snack foods made from wheat; Snack foods made of whole wheat;
Cereal snack foods flavoured with cheese; Cheese flavored puffed corn snacks;
Cereal-based snack food; Rice-based snack food; Snack foods made from corn;
Snacks manufactured from muesli; Tortilla snacks; Extruded wheat snacks; Snack
foods consisting principally of extruded cereals; Snack foods prepared from maize;
Filled baguettes; Onion biscuits; Hamburgers contained in bread rolls; Burritos;
Decision on Opposition No B 2 700 741 page: 8 of 14
Brioches; Nachos; Shrimp dumplings; Rice dumplings dressed with sweet bean jam
(ankoro); Rice dumplings; Fresh sausage rolls; Fresh pies; Pies; Pies [sweet or
savoury]; Poultry and game meat pies; Pastries consisting of vegetables and meat;
Vegetable pies; Egg pies; Pastries consisting of vegetables and poultry; Pies
containing poultry; Pork pies; Pies containing meat; Pies containing game; Pies
containing vegetables; Pies containing fish; Pizzas; Wholewheat crisps; Pasta
containing stuffings; Korean traditional rice cake [injeolmi]; Pasta dishes; Rice based
dishes; Ready-made dishes containing pasta; Preserved pizzas; Candy coated
popcorn; Caramel coated popcorn; Popcorn; Microwave popcorn; Flavoured
popcorn; Caramel coated popcorn with candied nuts; Pre-packaged lunches
consisting primarily of rice, and also including meat, fish or vegetables; Pre-baked
pizzas crusts; Snack food products made from cereal starch; Snack food products
made from maize flour; Snack food products made from potato flour; Snack food
products made from rusk flour; Snack food products consisting of cereal products;
Ravioli; Ravioli [prepared]; Risotto; Spring rolls; Rice biscuits; Rice mixed with
vegetables and beef [bibimbap]; Sandwiches; Rice salad; Pasta salad; Samosas;
Sandwiches containing minced beef; Sandwiches containing chicken; Hot dogs
(prepared); Frankfurter sandwiches; Cheeseburgers [sandwiches]; Sandwiches
containing salad; Sandwiches containing fish fillet; Sandwiches containing fish;
Sandwiches containing meat; Hot dog sandwiches; Pineapple fritters; Banana
fritters; Pot pies; Puffed corn snacks; Sesame snacks; Stir-fried noodles with
vegetables (Japchae); Sushi; Spaghetti and meatballs; Canned spaghetti in tomato
sauce; Pellet-shaped rice crackers (arare); Bean jam buns; Boxed lunches consisting
of rice, with added meat, fish or vegetables; Flaky pastry containing ham; Tacos;
Tabbouleh; Green onion pancake [pajeon]; Mung bean pancakes (bindaetteok); Fried
corn; Tortillas; Crisps made of cereals; Pizza crust; Canned pasta foods; Chalupas;
Chimichanga; Taco chips; Wonton chips; Corn chips; Vegetable flavoured corn chips;
Seaweed flavoured corn chips; Grain-based chips; Rice crisps; Tortilla chips; Chow
mein; Chow mein [noodle-based dishes]; Wrap [sandwich]; Fajitas; Puffed cheese
balls [corn snacks]; Fresh pizza; Hot sausage and ketchup in cut open bread rolls;
Toasted sandwiches; Toasted cheese sandwich with ham; Toasted cheese sandwich;
Corn kernels being toasted; Chilled pizzas; Steamed buns stuffed with minced meat
(niku-manjuh); Filled bread rolls.
Class 31: Agricultural and aquacultural crops, horticulture and forestry products;
Live animals, organisms for breeding.
Class 32: Beer and brewery products; Preparations for making beverages.
The term ‘including’, used in both, the applicant’s and the opponent’s list of goods,
indicates that the specific goods are only examples of items included in the category
and that protection is not restricted to them. In other words, it introduces a non-
exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). The
same is true of the term ‘in particular’, used in the opponent’s list.
On the other hand, the term ‘namely’, which also appears in the opponent’s list, is
exclusive and restricts the scope of protection only to the goods specifically listed.
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
Decision on Opposition No B 2 700 741 page: 9 of 14
The earlier mark is protected not only for individual goods, but also for every
individual category that composes the class heading in this class (Meat, fish
(including …), poultry and game; extracts of meat, Preserved, Frozen, Dried, cooked
and/or Prepared fruits and Vegetable, including (…) Meat, sausage, fish, fruit and
vegetable jellies; Jams, compotes; Eggs; Milk and milk products, including (…);
Edible oils and fats).
The contested mark has been applied for goods which fall within these individual
categories and are therefore, identical, and for two goods which do not fall into the
categories, namely pollen prepared as foodstuff and edible birds' nests. The latter
goods are dissimilar to all the goods protected by the earlier mark, as they have
different providers and nature, they are normally sold through different outlets and
they are not complementary.
Contested goods in Class 30
The earlier mark is protected not only for individual goods, but also for every
individual category that composes the class heading in this class (with the exception
of treacle): Coffee, tea, cocoa and artificial coffee, including (…); Rice, tapioca, sago;
Flour and preparations made from cereals, Bread, Pastry and confectionery,
including (…); Sugar (including …), Honey, Yeast, baking powder, Edible salt,
Mustard, Vinegar, Sauces, including (…); Spices, Ice.
The contested mark has been applied for goods which fall into one of the categories
identified above, (and therefore the goods are identical), with the exception of the
following goods, which cannot be included into any of the categories: Starches,
Noodle-based prepared meals; Spring rolls; Sandwiches; Sandwiches containing
minced beef; Sandwiches containing chicken; Frankfurter sandwiches;
Cheeseburgers [sandwiches]; Sandwiches containing salad; Sandwiches containing
fish fillet; Sandwiches containing fish; Sandwiches containing meat; Hot dog
sandwiches; Sushi.
The contested starches are similar to the opponent’s flour as they can coincide in
producer, end user and distribution channels. Furthermore they are in competition.
The contested noodle-based prepared meals are considered similar to the
opponent’s noodles, since their nature and purpose are similar, they target the same
end users, have similar distribution channels and are in competition, i.e. can be
substituted for each other.
The contested Sandwiches containing minced beef; Sandwiches containing chicken;
Frankfurter sandwiches; Cheeseburgers [sandwiches]; Sandwiches containing salad;
Sandwiches containing fish fillet; Sandwiches containing fish; Sandwiches containing
meat; Hot dog sandwiches are all included in the general category of sandwiches,
protected by the earlier mark, and therefore the goods are identical. The general
category of sandwiches appears on both lists and the goods are logically identical.
The contested spring rolls have a low degree of similarity in relation to cereals as the
goods can coincide in producer, end user and distribution channels.
The contested sushi is a Japanese dish consisting of small balls or rolls of vinegar-
flavoured cold rice served with a garnish of vegetables, egg or raw seafood. It is
therefore different from the opponent’s goods. Although these goods are all
foodstuffs, they have different natures. They are not complementary. They do not
usually have the same distribution channels and are normally manufactured by
Decision on Opposition No B 2 700 741 page: 10 of 14
different kinds of undertakings. Therefore, they are dissimilar, and not only to the
opponent’s goods in Class 30, but also to all the goods protected by the earlier mark.
Contested goods in Class 31
Agricultural crops, horticulture and forestry products; Live animals are equally
included in both lists (included synonyms) and the goods are, therefore, identical.
Aquacultural crops refer to the breeding, rearing, and harvesting of plants and
animals in all types of water environments including ponds, rivers, lakes, and the
ocean), are included in the broad category of the opponent’s agricultural products not
included in other classes. Therefore, they are identical.
Organisms for breeding are included in or overlap with the opponent’s live animals
and the goods are therefore identical.
Contested goods in Class 32
The contested Beer; Preparations for making beverages are also protected by the
opponent’s mark and the goods are, therefore, identical.
The contested brewery products include, as a broader category, the opponent’s
beers. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
b) 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 and at business customers with specific professional knowledge or
expertise.
The degree of attention will vary from average to high, for example it will be average
in relation to beer, whereas it will be higher in relation to live animals; that is to say,
the attention will vary depending on the specialised nature of the goods, the
frequency of purchase and their price.
c) The signs
NORMA
Earlier trade mark Contested sign
Decision on Opposition No B 2 700 741 page: 11 of 14
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.
In the present case, the Opposition Division finds it appropriate to focus the
comparison of the signs on the English-speaking part of the relevant public, because
the words shown in the signs are meaningful for this part of the public as will be
explained further on in this decision.
The earlier trade mark is a word mark and, as such, it lacks dominant elements. The
word ‘NORMA’ will be recognized by a relevant part of the public as the name of a
woman, and is distinctive for all the goods at issue.
The contested trade mark is a figurative mark composed of the words ‘nora’s’ and
‘deli’, and a sign that will be recognized as the letters ‘N’ and ‘D’, corresponding to
the initials of ‘nora’ and ‘deli’, respectively. ‘Nora’s deli’ will be understood as a ‘deli’
owned or run by a woman named ‘nora’. In this mark ‘nora’ is the most distinctive
element as the apostrophe and the ‘s’ merely refers to the person in the meaning
previously mentioned. The term ‘deli’ will be recognized as the usual abbreviation of
‘delicatessen’, which will be understood as ‘a store selling cold cuts, cheeses, and a
variety of salads, as well as a selection of unusual or foreign prepared foods’ (Oxford
Dictionaries on line https://en.oxforddictionaries.com/definition/us/delicatessen) and
is, therefore, non-distinctive for a great part of the goods at issue. This mark does not
have elements which are more dominant, that is, more visually outstanding, than
others.
Visually, the signs coincide in ‘nor*a’ and differ in the middle letter “m” present in the
earlier mark, and in the apostrophe, the word ‘deli’, the letters ‘ND’, and the
stylization of the contested mark. However, as seen above, the apostrophe is
subordinated to the word it follows, ‘deli’ is non distinctive for a great part of the
goods and the letters ‘ND’ merely refer to the initials of the words placed below them.
Also, the stylization of the mark is not striking and consequently it does not add an
element of important differentiation between the marks. As for the letter “m” present
in the earlier mark and with no counterpart in the contested mark, account must be
taken of the fact that it is located in the middle of the denomination, which is a part
that consumers tend to focus less on.
Consequently, the marks are visually similar to an average degree. This finding can
be extended to the goods for which “deli” is distinctive, as the denomination “NORA”,
Decision on Opposition No B 2 700 741 page: 12 of 14
very close to “NORMA”, is at the beginning of the sign, which is the part that
consumers tend to focus on.
Aurally, the signs coincide in ‘nor*a’ and differ in the apostrophe, the word ‘deli’ and
the letters ‘ND’, as well as in the letter “m” of the earlier mark with no counterpart in
the contested sign. However, it is very possible that the consumers will not
pronounce the initials ‘ND’ and will refer to the contested mark by ‘nora’s deli’ in
which case, taking into account the lack of distinctiveness of the word ‘deli’ for a great
part of the goods, and the fact that the letter “m” of the earlier mark is located in the
middle of the sign, the marks are aurally similar to a high degree. Again, this finding
can be extended to the goods for which “deli” is distinctive as the denomination
“NORA”, very close to “NORMA”, is at the beginning of the sign, which is the part that
consumers tend to focus on.
Conceptually, as seen above, the earlier mark refers to a woman named ‘NORMA’
and the contested mark refers to a ‘deli’ owned or run by ‘nora’. It is true that the
names “NORMA” and “NORA” are different, as are the rest of the elements contained
in the contested mark: The marks are, therefore, dissimilar from this point of view.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 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.
e) Global assessment, other arguments and conclusion
According to the case law of the Court of Justice, 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. The
comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed
globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors
and, in particular, a similarity between the trade marks and between the goods or
services. Accordingly, a lesser degree of similarity between the goods or services
may be offset by a greater degree of similarity between the marks, and vice versa.
The public concerned is composed by average consumers and professionals and the
level of attention varies from average to high. The contested mark contains a name
of a woman that is visually and aurally highly similar to the name seen in the earlier
mark. Also, the points of dissimilarity are mainly focused on a term that is not
Decision on Opposition No B 2 700 741 page: 13 of 14
distinctive for many of the goods at issue, the initials of the words found in the
contested mark, and a non-striking stylization.
The Opposition Division finds that, in the presence of identical or similar goods,
consumers may be led to believe that the goods at issue originate from the same
undertaking or at least economically linked undertakings, since the consumer could
perceive the contested sign as identifying an establishment, namely a ‘deli,’ run or
owned by a person named very similarly to the person the earlier sign refers to (‘nora’
vs. ‘norma’), and offering a particular range of goods similar to those of the opponent
(delicatessen). In relation to the goods for which “deli” is distinctive the marks are still
close enough for the commercial origin of the goods to be confused by consumers.
Furthermore, the likelihood of confusion exists, also, in relation to the professional
public and to the goods which demand a higher degree of attention, as even
consumers who pay a high degree of attention need to rely on their imperfect
recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
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 trade mark 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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its
Decision on Opposition No B 2 700 741 page: 14 of 14
The Opposition Division
Angela DI BLASIO María Belén IBARRA
DE DIEGO
Michele A.
BENEDETTI-ALOISI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.