OPPOSITION No B 2 764 796

MSI GmbH, Hugenottenstr. 126, 61381 Friedrichsdorf, Germany (opponent), represented by Wolpert Rechtsanwälte, Kaiser-Friedrich-Promenade 87, 61348 Bad Homburg, Germany (professional representative)

a g a i n s t

Fresh Nuts GmbH, Pinkertweg 10, 22113 Hamburg, Germany (applicant), represented by Nicola Novaro, Via Marconi 14, 18013 Diano Castello (Imperia), Italy (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 796 is partially upheld, namely for the following contested goods:

Class 29: Fruit, preserved; crystallized fruit; dried fruit; candied fruit; crystallised fruit; almond butter; ground almond; processed almonds; ground almonds; prepared almonds; salted nuts; edible nuts; preserved nuts; seasoned nuts; flavoured nuts; flavored nuts; blanched nuts; candied nuts; dried nuts; ground nuts; nuts, prepared; processed nuts; roast nuts; roasted nuts; cashew nuts (prepared -); nuts being cooked; nuts being dried; processed betel nuts; shelled nuts; mixtures of fruit and nuts; processed fruits, fungi and vegetables (including nuts and pulses); snack mixes consisting of dehydrated fruit and processed nuts; processed seeds; edible seeds; edible sunflower seeds; processed edible seeds; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; crystallised ginger.

Class 30: Fruit pies; fruit cakes; fruit vinegar; fruit ices; almond cake; almond pastries; almond confectionery; almond paste; sugar almonds; almonds covered in chocolate; coated nuts [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; sandwich spread made from chocolate and nuts; sweet rice with nuts and jujubes (yaksik); sesame paste; sesame snacks; sesame seeds; sweetmeat made of sesame oil; cornflakes; cornflour; cornmeal; sesame seeds; gingerbread; gingersnaps; preserved ginger; preserved ginger [condiment].

2.        European Union trade mark application No 15 675 473 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 15 675 473 for the word mark ‘NRG’. The opposition is based on European Union trade mark registration No 14 230 312 for the word mark ‘NRG-5’. 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.

1. The goods

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

Class 5: Nutritional supplement meal replacement bars for boosting energy; dietetic food preparations adapted for medical use; protein dietary supplements; vitamins and vitamin preparations; vitamin and mineral supplements; mineral food supplements; mineral preparations for medical purposes.

Class 29: Powdered eggs; prepared meals containing [principally] eggs; instant mashed potato; potato purée; edible oils and fats; soups; whole milk powder; edible fats.

Class 30: Food energy bars being food substitutes; bakery goods; bread biscuits; bread concentrates; long-life pastry; chocolate-based ready-to-eat food bars; extruded food products made of wheat; cereals; cereal bars; hardtack [biscuits]; malt biscuits; malt biscuits; biscuits for human consumption made from cereals; food preparations based on grains; cereal bars and energy bars; cereal based foodstuffs for human consumption; malt extract for food; foodstuffs made from cereals; high-protein cereal bars; bars based on wheat; dried ready meals containing dough; prepared meals containing [principally] rice; oat flakes; chips [cereal products]; muesli; instant noodles; rice; farinaceous food pastes; processed wheat; processed cereals for food for human consumption; cereal bars; rusks.

The contested goods are the following:

Class 29: Fruit paste; fruit jams; fruit marmalade; stewed fruit; fruit powders; fruit conserves; fruit, preserved; fruit preserves; fruit jellies; crystallized fruit; dried fruit; candied fruit; fruit purees; sliced fruit; aromatized fruit; crystallised fruit; fruit pulps; almond butter; ground almond; processed almonds; ground almonds; prepared almonds; salted nuts; edible nuts; preserved nuts; seasoned nuts; flavoured nuts; flavored nuts; blanched nuts; candied nuts; dried nuts; ground nuts; nuts, prepared; processed nuts; roast nuts; roasted nuts; cashew nuts (prepared -); nuts being cooked; nuts being dried; processed betel nuts; shelled nuts; mixtures of fruit and nuts; processed fruits, fungi and vegetables (including nuts and pulses); snack mixes consisting of dehydrated fruit and processed nuts; processed seeds; edible seeds; edible sunflower seeds; processed edible seeds; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; ginger jam; crystallised ginger.

Class 30: Fruit pies; fruit cakes; fruit vinegar; fruit ices; fruit teas; fruit sauces; almond cake; almond pastries; almond confectionery; almond paste; sugar almonds; almonds covered in chocolate; coated nuts [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; sandwich spread made from chocolate and nuts; sweet rice with nuts and jujubes (yaksik); sesame paste; sesame snacks; sesame seeds; sweetmeat made of sesame oil; cornflakes; cornflour; cornmeal; sesame seeds; gingerbread; gingersnaps; preserved ginger; preserved ginger [condiment].

Class 31: Almonds [fruits]; fresh almonds; fresh nuts; nuts [fruits]; raw nuts; fresh ginkgo nuts; edible nuts [unprocessed]; unprocessed nuts; fresh fruits, nuts, vegetables and herbs; edible sesame, unprocessed; seeds; sowing seeds; seeds (plant -); grass seeds; crop seeds; agricultural seeds; plant seeds; flower seeds; fruit seeds; sunflower seeds; natural seeds; vegetable seeds; seeds for planting; seeds for vegetables; seeds for fruit; raw ginger.

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

Moreover, in cases of doubt about the exact meaning of the terms used in the list of goods and/or services, these terms have to be interpreted both in the light of the Nice Classification and from a commercial perspective.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested fruit, preserved; crystallized fruit; dried fruit; candied fruit; ground almond; processed almonds; ground almonds; prepared almonds; salted nuts; edible nuts; preserved nuts; seasoned nuts; flavoured nuts; flavored nuts; blanched nuts; candied nuts; dried nuts; ground nuts; nuts, prepared; processed nuts; roast nuts; roasted nuts; cashew nuts (prepared -); nuts being cooked; nuts being dried; processed betel nuts; shelled nuts; mixtures of fruit and nuts; processed fruits (including nuts and pulses); snack mixes consisting of dehydrated fruit and processed nuts; processed seeds; edible seeds; edible sunflower seeds; processed edible seeds; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; crystallised ginger are similar to high degree to the opponent’s cereal based foodstuffs for human consumption in Class 30, which include goods such as cereal based snack bars containing a mixture of grains, nuts and dried fruits. These goods target the same public and share the same distribution channels. Moreover, they can be produced by the same undertakings and be in competition when consumed as ‘healthy snacks’.

The contested processed fungi and vegetables have the same purpose and usual producers as the opponent’s soups, which are a liquid food made by boiling meat, fish or vegetables in water. These goods may also have the same distribution channels and sales outlets. Therefore, they are similar.

The contested almond butter is similar to the opponent’s edible oils and fats. These goods can have the same purpose and can be in competition. They also target the same public.

On the other hand, the contested fruit paste; fruit jams; fruit marmalade; stewed fruit; fruit powders; fruit conserves; sliced fruit; fruit preserves; fruit jellies; fruit purees; aromatized fruit; fruit pulps; ginger jam are considered dissimilar to the opponent’s goods in Classes 5, 29 and 30. The fact that some of the opponent’s goods and these contested foodstuffs are for human consumption is not sufficient for a finding of similarity between them. In this respect, despite being foodstuffs, they do not belong to the same product category and their nature is different. They are not complementary, nor in competition and, although they may all be found in large department stores, the goods under comparison would not be placed next to each other and are not normally produced by the same undertakings.

Contested goods in Class 30

The contested fruit pies; fruit cakes; almond cake; almond pastries; sweetmeat made of sesame oil; gingerbread; gingersnaps are included in the broad category of the opponent’s bakery goods. Therefore, they are identical.

The contested snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; cornflour; cornmeal; cornflakes are included in, or overlap with, the broad category of the opponent’s cereal based foodstuffs for human consumption. Therefore, they are identical.

The contested sweet rice with nuts and jujubes (yaksik) is included in the broad category of the opponent’s prepared meals containing [principally] rice. Therefore, they are identical.

The contested sesame snacks; sesame seeds (listed twice)are similar to high degree to the opponent’s cereal based foodstuffs for human consumption, which include goods such as cereal based snack bars. These goods can all be sold as ‘healthy snacks’, target the same public and share the same distribution channels. Moreover, they can be produced by the same undertakings and be in competition.

The contested almond confectionery; sugar almonds; almonds covered in chocolate; coated nuts [confectionery] are similar to the opponent’s cereal based foodstuffs for human consumption which include goods such as sweet cereal bars. Therefore, these goods can have the same purpose and be in competition. They can target the same public, be distributed through the same channels and can be produced by the same companies.

The contested almond paste; sandwich spread made from chocolate and nuts; sesame paste are similar to the opponent’s edible oils and fats. These goods can have the same purpose and can be in competition. They also target the same public.

The contested fruit ices are similar to the opponent’s broad category bakery goods since they can coincide in end-users and distribution channels and are also in competition with each other (see by analogy 28/10/2016, R 250/2016-5, LOTTE (fig.) / KOALA-BÄREN Schöller lustige Gebäckfiguren (3D), § 55).

The contested fruit vinegar is similar to a low degree to the opponent’s edible oils and fats in Class 29 as they have the same purpose. Moreover, they can coincide in end users and distribution channels.

As mentioned above in the preliminary remark, the exact meaning of the terms used in the list of goods and/or services has to be interpreted in the light of the Nice Classification. Therefore, the meaning and nature of the contested preserved ginger and preserved ginger [condiment] in Class 30 has to be interpreted in the context of this class. This class includes substances that sweeten or improve the flavour of food and beverages, like sugar, honey, aromatic substances, preserved herbs, salt and condiments are also in Class 30, with the exception of essential oils which are in Class 3. Goods that may be in other classes when used for different purposes are also included in Class 30 when they are used as seasonings. Therefore, the meaning of the contested preserved ginger and preserved ginger [condiment] must be interpreted as being such goods for use as seasonings. In view of this, the contested preserved ginger and preserved ginger [condiment] are also considered similar to a low degree to the opponent’s edible oils and fats for the same reasons as those outlined above.

The remaining contested fruit teas; fruit sauces are considered dissimilar to the opponent’s goods in Classes 5, 29 and 30. Again, the fact that some of the opponent’s goods and these contested foodstuffs are for human consumption is not sufficient for a finding of similarity between them. In this respect, despite being foodstuffs, they do not belong to the same product category and their nature is different. They are not complementary, nor in competition and, although they may all be found in large department stores, the goods under comparison would not be placed next to each other and are not normally produced by the same undertakings.

Contested goods in Class 31

The meaning and nature of the contested goods in Class 31 must also be interpreted in the context of the class in which they are included. Class 31 covers, inter alia, fresh fruit and vegetables that have not been processed for consumption or conservation and seeds for planting. Therefore, the meaning of the contested goods in this class must be interpreted as being fresh and unprocessed goods or goods being used as seedlings. In view of this, the contested almonds [fruits]; fresh almonds; fresh nuts; nuts [fruits]; raw nuts; fresh ginkgo nuts; edible nuts [unprocessed]; unprocessed nuts; fresh fruits, nuts, vegetables and herbs; edible sesame, unprocessed; seeds; sowing seeds; seeds (plant -); grass seeds; crop seeds; agricultural seeds; plant seeds; flower seeds; fruit seeds; sunflower seeds; natural seeds; vegetable seeds; seeds for planting; seeds for vegetables; seeds for fruit; raw ginger are dissimilar to the opponent’s goods in Classes 5, 29 and 30. These goods do not have the same nature, usual origin and end users. Although some of the contested goods, such as fresh fruits and some of the opponent’s goods may be found in large department stores, the goods under comparison would not be placed next to each other. Moreover, they are neither in competition with each other nor are they 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 to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

NRG-5	NRG
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 marks are both word marks, consisting of the elements ‘NRG-5’ in the earlier mark and the word ‘NRG’ in the contested sign. Bearing in mind the relevant public and the relevant goods, the common letters ‘NRG’ will be perceived as having no meaning and are, therefore, distinctive. The ‘-’ in the earlier mark will merely be perceived as a punctuation mark and a single numeral is generally of little or no inherent distinctive character (see 11/10/2010, R 274/2010-4, ‘77/7’, § 16) and is likely to be associated with a type of reference or particular model of the goods concerned. Therefore, the elements ‘-5’ will have little to no trade mark significance within the earlier mark.

 

Visually and aurally, the signs coincide in the distinctive letters ‘NRG’ and in the sound of these letters, which is the sole element of the contested sign and the element placed at the beginning of the earlier mark, which is also the part that first catches the attention of consumers (since they read from left to right). On the other hand, they differ visually in the additional ‘-‘ and number ‘5’ at the end of the earlier mark and aurally in the sound of the number ‘5’ as pronounced in the different languages of the relevant territory. However, since the signs coincide in their distinctive elements, which is also at the beginning of the earlier mark, and the additional elements, for the reasons outlined above, are only weakly distinctive, if at all, they will have a very limited impact on the overall impression produced by the signs, both visually as well as aurally.

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘-‘ and ‘5’ in the earlier mark will be understood as a punctuation mark and a number. Since only one of the signs will be associated with a meaning, the signs are not conceptually similar.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

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 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 contested goods are identical, similar (to various degrees) or dissimilar to the opponent’s goods and they target the public at large. The degree of attention in relation to the goods in question is considered average.

The signs coincide visually and aurally in the distinctive element ‘NRG’ which forms the beginning of the earlier mark and the whole contested sign. Therefore, the only element of the contested sign is included at the beginning of the earlier mark. As it was stated above in section c) of this decision, the additional elements ‘-‘ and ‘5’, that appear at the end of the earlier mark, have only little impact on the overall impression produced by the mark. Therefore, the signs were found to be visually and aurally similar to high degree and conceptually not similar.

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.

Following the above, it is highly conceivable that the relevant consumer will perceive the signs in dispute as variations of the same mark, configured in  different ways according to the type of goods that they designate (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

Therefore, the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) 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 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

Sam GYLLING

Begoña URIARTE VALIENTE

Frédérique SULPICE

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.