OPPOSITION No B 2 681 149

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Star Exclusivas S.L., C/ Jornalers (Pol. Industrial) 33, 46260 Alberic (Valencia) Spain (applicant), represented by José Miguel Muñoz Orgaz, Calle José María de Haro, 61 Planta 13-I, 46022 Valencia, Spain (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 149 is partially upheld, namely for the following contested goods and services:

Class 29:        Preserved, frozen, dried and cooked fruits and vegetables; processed nuts; nut-based snack foods; jellies, jams, compotes; milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, bakery goods, pastry, cakes and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; sauces (condiments); spices.

Class 35:        Retailing and wholesaling in shops, commercial establishments and via global computer networks, of all kinds of bakery goods, cakes, pastry, confectionery, snacks, appetisers and all kinds of foodstuffs.

2.        European Union trade mark application No 14 763 684 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 763 684. The opposition is based on European Union trade mark registration No 10 692 176. 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 and services

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

Class 29:        Preserved, dried and cooked fruits and vegetables (except potato crisps); jellies, jams, stewed fruits, fruit puree; milk and milk products, except whipped cream, beaten whipped cream and milkshakes.

Class 30:        Tea, cocoa, chocolate, chocolate goods; pastry and confectionery, biscuits; rice; flour and preparations made from cereals; bread; ices; honey; cakes, waffles; cakes mainly consisting of ice cream; sweet spreads, namely nut nougat creams and chocolate spreads.

The contested goods and services are the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; processed nuts; nut-based snack foods; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, bakery goods, pastry, cakes and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 35:        Retailing and wholesaling in shops, commercial establishments and via global computer networks, of all kinds of bakery goods, cakes, pastry, confectionery, snacks, appetisers and all kinds of foodstuffs.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

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

Jellies, jams, milk are identically contained in both lists of goods in Class 29.

The contested milk products include, as a broader category, the opponent’s milk products, except whipped cream, beaten whipped cream and milkshakes. 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 preserved, frozen, dried and cooked fruits and vegetables include, as broader category, the opponent’s preserved, dried and cooked fruits and vegetables (except potato crisps). 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 processed nuts are included in the broad category of the opponent’s preserved, dried and cooked fruits and vegetables (except potato crisps). Therefore, they are identical.

The contested compotes are identical to the opponent’s fruit puree, as they are synonyms.

The contested nut-based snack foods are similar to a high degree to the opponent’s dried fruits, as they can have the same producers, end users and distribution channels. Furthermore, they can be in competition.

The contested edible oils and fats are similar to the opponent’s milk products, since milk products include butter. They have the same purpose and can have the same end users. Furthermore, they are in competition.

The contested meat, fish, poultry and game; meat extracts; eggs differ from the opponent’s goods in Classes 29 and 30. Although they are foodstuffs, they do not normally have the same producers and are sold in different sections of supermarkets. Furthermore, they are not in competition. Therefore, they are dissimilar.

Contested goods in Class 30

Tea, cocoa; flour and preparations made from cereals; bread; pastry; cakes and confectionery; ices are identically contained in both lists of goods and services, albeit with slightly different wording.

The contested bakery goods are identical to the opponent’s preparations made from cereals because bakery goods are included in the opponent’s broad category of preparations made from cereals.

The contested sauces (condiments) are similar to a high degree to the opponent’s preserved and cooked fruits and vegetables (except potato crisps), as they have the same purpose. They can have the same producers, end users and distribution channels. Furthermore, they can be in competition.

The contested coffee and artificial coffee are similar to the opponent’s tea, as they can have the same end users, distribution channels and methods of use. Furthermore, they can be in competition.

The contested honey, treacle are similar to the opponent’s jams, as they have the same purpose. They can have the same end users, distribution channels and methods of use. Furthermore, they can be in competition.

The contested yeast, baking-powder are similar to the opponent’s flour, as they can have the same producers, distribution channels and relevant public.

The contested spices are similar to the opponent’s preserved vegetables, as they have the same purpose. They can have the same producers, end users and distribution channels.

The contested sugar is similar to the opponent’s honey, as they can have the same end users and distribution channels. Furthermore, they can be in competition.

The contested tapioca and sago are similar to a low degree to the opponent’s preparations made from cereals, as they can have the same producers, end users and distribution channels.

The contested rice is similar to a low degree to the opponent’s preparations made from cereals, as they can have the same end users and distribution channels.

The contested salt; mustard; vinegar; ice are dissimilar to the opponent’s goods in Classes 29 and 30. Although they belong to the food industry, these goods differ in purpose. They do not normally have the same commercial origin or producers and are sold in different sections of supermarkets. Furthermore, these goods are neither in competition nor complementary.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities related to the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing and wholesaling in shops, commercial establishments and via global computer networks, of all kinds of cakes, pastry, confectionery are similar to a low degree to the opponent’s cakes; pastry and confectionery.

The contested retailing and wholesaling in shops, commercial establishments and via global computer networks, of all kinds of bakery goods, snacks, appetisers are similar to a low degree to the opponent’s preparations made from cereals because the goods that are the subject of the contested retailing and wholesaling services are included in or overlap with the opponent’s goods.

The contested retailing and wholesaling in shops, commercial establishments and via global computer networks, of all kinds of foodstuffs are similar to a low degree to the opponent’s preserved, frozen, dried and cooked fruits and vegetables in Class 29. This is because the opponent’s goods are considered identical to the foodstuffs that are the subject of the contested retail services.

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 and services found to be identical or similar (to different degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

When assessing the degree of similarity between signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a capacity to indicate commercial origin. It may be more difficult to establish that the public is likely to be confused about the origins of goods or services due to similarities that pertain solely to non-distinctive elements. In the present case, a part of the public in the relevant territory will understand the coinciding element ‘Sweet’ as meaning that something has the pleasant taste characteristic of sugar or honey; therefore, in relation to at least some of the relevant goods, it is non-distinctive, or at least weak, for this part of the public. However, for the rest of the public, such as a significant part of the Bulgarian-, Hungarian-, Lithuanian-, Latvian- and Spanish-speaking parts of the public, it has no meaning and is distinctive. The Opposition Division will first examine the opposition in relation to the part of the public for which ‘SWEET’ has no meaning and is distinctive to an average degree.

The earlier mark is a figurative mark consisting of the verbal element ‘SWEET’ in slightly stylised white title case letters. The verbal element is depicted on a grey oval background, which has limited distinctive character, since it is a simple geometrical shape of a purely decorative nature. The verbal element ‘Sweet’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark consisting of the verbal elements ‘OH’ in pink and red letters, ‘MY’ in brown letters and ‘SWEET’ in stylised title case letters that alternate between pink and red, followed by a brown exclamation mark. These elements are on a gold background. Below these elements, there is another verbal element, ‘Mmmm’, which is followed by an ellipsis, in white letters on a brown background. For the relevant public, the verbal element ‘OH’ indicates an exclamation, and ‘Mmmm’ will be associated by the relevant public with delicious food; therefore, both elements will be perceived as laudatory. The verbal elements ‘MY’ and ‘SWEET’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive. The exclamation mark is used to show that a word is an exclamation and will be attributed little, if any, trade mark significance. The backgrounds of the contested sign have limited distinctive character, since they are simple geometrical shapes of a purely decorative nature. The elements ‘OH’, ‘MY’ and ‘Mmmm…’ are written in relatively smaller letters and, therefore, are less eye-catching than the other elements. As regards verbal elements, ‘SWEET’ is the dominant element.

Visually, the signs coincide in the only verbal element of the earlier mark and in the dominant verbal element of the contested sign, ‘SWEET’, which, in addition, is depicted in both signs in very similar fonts (although in different colours). However, the signs differ in the additional verbal elements of the contested sign, namely ‘MY’, which is distinctive, ‘OH’ and ‘Mmmm …’, which have a lower degree of distinctiveness, and in the figurative elements of the signs, in particular, the backgrounds and colours. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛SWEET’, present in both signs, which forms the entire earlier mark. The pronunciation differs in the sound of the additional verbal elements ‘MY’, which is distinctive, and ‘OH’ and ‘Mmmm…’ of the contested mark, which have a lower degree of distinctiveness. Therefore, the signs are aurally similar to an average degree.

Conceptually, the earlier sign will not convey any particular meaning for the relevant public. This also applies to the element ‘SWEET’ of the contested sign. The verbal elements ‘OH’ and ‘Mmmm…’ of the contested sign will be perceived as explained above. Since the earlier sign will not be associated with any 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.

The applicant argues that the distinctive character of the earlier mark is very low because it lies in the combination of a non-distinctive word and a banal figurative element. The applicant further argues that the word ‘Sweet’ is a basic English word that will be understood in the whole European Union. In support of its arguments, the applicant refers to a previous decision of the Office that led to the refusal under Articles 7(1)(b) and (c) EUTMR of a European union trade mark application consisting of a stylised depiction of the word ‘sweet’. It also refers to a decision of the Boards of Appeal that established that the English word ‘sweet’ is understood throughout the European Union and is non-distinctive in relation to sweet goods (05/07/2016, R 942/2015-4, Sweetly STEVIA SO NATURAL (fig.) / Sweet (fig.)).

Finally, the applicant also argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘sweet’. In support of its arguments, the applicant refers to several trade mark registrations in the European Union.

As regards the applicant’s arguments, it should first be clarified that the Opposition Division is not competent to assess the registrability of the earlier mark.

The Opposition Division does not consider that ‘sweet’ is a basic English word that is understood throughout the European Union. In this respect, it should be taken into account that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). The issue here is a question of fact. The applicant has not submitted evidence that ‘sweet’ is a basic English word understood throughout the European Union. Furthermore, whereas the decision of the Boards of Appeal referred to by the applicant took this view, a different stance has been taken in another, subsequent decision, which states that ‘“SWEETIE” is derived from “SWEET” and there is no reason to believe that the latter would be understood by, for example, consumers in Bulgaria. The contested sign is not a basic English word’ (05/09/2016, R 1064/2015-5, SWEETIES / SWEETIE, § 36). For the sake of completeness, it is also noted that, in the languages taken into consideration, the word corresponding to the English word ‘sweet’ differs significantly (e.g. ‘dulce’ in Spanish). Furthermore, the goods at issue target the public at large, not professionals who may have a basic understanding of English, and it is not an established fact that the relevant public usually has a basic understanding of English, as is the case, for instance, for the Scandinavian countries, the Netherlands and Finland. Therefore, the Opposition Division maintains that the word ‘SWEET’ will not be understood by, at the very least, a significant part of the public taken into consideration.

In addition, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘sweet’.

Therefore the applicant’s arguments are to be set aside and, from the perspective of the public in the part of the relevant territory considered, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services at issue are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually and aurally similar to an average degree. They target the public at large, whose degree of attention is average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar goods come from the same undertaking or at least economically linked undertakings.

Considering all the above and taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), there is a likelihood of confusion, including a likelihood of association, since the relevant public may believe that the contested trade mark is a new version or a brand variation of the earlier figurative mark, originating from the same undertaking as the earlier mark or from an economically linked undertaking. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, in this case the Bulgarian-, Hungarian-, Lithuanian-, Latvian- and Spanish-speaking parts of the public, is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 692 176. It follows that the contested trade mark must be rejected for the goods and services found to be identical and 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Alexandra APOSTOLAKIS

Catherine MEDINA

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.