OPPOSITION No B 2 588 773
Grupo Ybarra Alimentación, S.L., Carretera Isla Menor, Km. 1800, 41703 Dos Hermanas (Sevilla), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12, 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Olivetta SA, 76 Mohy El Deen Abou El Ezz St, Dokki, 12311 Giza, Egypt (applicant), represented by Konstantinos Tomaras, Feidiou 14, 10678 Athens, Greece (professional representative).
On 23/03/2017, the Opposition Division takes the following
1. Opposition No B 2 588 773 is upheld for all the contested goods.
2. European Union trade mark application No 13 893 871 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 893 871. The opposition is based on, inter alia, European Union trade mark registration No 11 627 254.The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 627 254.
- The goods
The goods on which the opposition is based are the following:
Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats; Crayfish, not live; Coconut oil; Linseed oil for culinary purposes; Corn oil; Palm kernel oil for food; Palm oil for food; Sesame oil; Edible oils; Olives, preserved; Preserved garlic; Ajvar [preserved peppers]; Albumen for culinary purposes; Toasted laver; Alginates for culinary purposes; Clams [not live]; Almonds, ground; Aloe vera prepared for human consumption; Anchovy; Herrings; Peas, preserved; Tuna fish; Milk shakes; Milk beverages, milk predominating; Bacon; Lobsters, not live; Potato fritters; Preparations for making bouillon; Broth; Animal marrow for food; Meat; Poultry, not live; Game, not live; Pork; Meat, preserved; Meat, tinned [canned (Am.)]; Meat extracts; Fruit peel; Caviar; Onions, preserved; Fruit chips; Sauerkraut; White of eggs; Coconut, desiccated; Isinglass for food; Rape oil for food; Cranberry sauce [compote]; Compotes; Broth concentrates; Jams; Frozen fruits; Potato flakes; Whipped cream; Silkworm chrysalis, for human consumption; Croquettes; Crustaceans, not live; Curd; Rennet; Dates; Pickles; Fruit salads; Vegetable salads; Seaweed extracts for food; Milk ferments for culinary purposes; Fish fillets; Fruits, tinned [canned (Am.)]; Frosted fruits; Fruit preserved in alcohol; Fruit, preserved; Fruit, stewed; Shrimps, not live; Gelatine; Meat jellies; Sunflower oil for food; Soya beans, preserved, for food; Lard for food; Coconut fat; Fat-containing mixtures for bread slices; Fatty substances for the manufacture of edible fats; Edible fats; Beans, preserved; Fish meal for human consumption; Liver; Bone oil, edible; Processed fish spawn; Eggs; Snail eggs for consumption; Powdered eggs; Hummus [chickpea paste]; Jellies for food; Fruit jellies; Ham; Vegetable juices for cooking; Vegetable soup preparations; Kefir [milk beverage]; Kimchi [fermented vegetable dish]; Kumys [kumyss] [milk beverage]; Milk products; Spiny lobsters, not live; Prawns, not live; Milk; Albumin milk; Condensed milk; Soya milk [milk substitute]; Lecithin for culinary purposes; Lentils, preserved; Peanuts, processed; Cocoa butter; Butter; Buttercream; Peanut butter; Coconut butter; Margarine; Shellfish, not live; Mussels, not live; Ginger jam; Marmalade; Black pudding; Fish mousses; Vegetable mousses; Cream [dairy products]; Edible birds’ nests; Nuts, prepared; Olive oil for food; Oysters, not live; Potato chips; Low-fat potato chips; Raisins; Tahini [sesame seed paste]; Liver pâté; Pectin for culinary purposes; Gherkins; Sea-cucumbers, not live; Fish, not live; Fish, preserved; Salted fish; Fish, tinned [canned (Am.)]; Piccalilli; Foods prepared from fish; Pollen prepared as foodstuff; Non-alcoholic egg nog; Charcuterie; Prostokvasha [soured milk]; Fruit pulp; Apple purée; Tomato purée; Cheese; Fruit-based snack food; Ryazhenka [fermented baked milk]; Salted meats; Sausages; Sausages in batter; Salmon; Sardines; Suet for food; Processed sunflower seeds; Processed seeds; Mushrooms, preserved; Smetana [sour cream]; Preparations for making soup; Soups; Whey; Tofu; Tomato juice for cooking; Tripe; Truffles, preserved; Vegetables, cooked; Vegetables, preserved; Vegetables, tinned [canned (Am.)]; Vegetables, dried; Yolk of eggs; Yogurt.
Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Meat tenderizers, for household purposes; Chicory [coffee substitute]; Gluten additives for culinary purposes; Marinades; Sea water for cooking; Peppers [seasonings]; Capers; Seaweed [condiment]; Farinaceous foods; Dressings for salad; Almond confectionery; Gruel, with a milk base, for food; Star aniseed; Aniseed; Aromatic preparations for food; Rice; Oat-based food; Crushed oats; Husked oats; Oatmeal; Saffron [seasoning]; Sugar; Candy; Palm sugar; Cereal bars; High-protein cereal bars; Stick liquorice [confectionery]; Cocoa-based beverages; Coffee-based beverages; Chocolate-based beverages; Tea-based beverages; Baking soda [bicarbonate of soda for cooking purposes]; Rusks; Buns; Puddings; Cocoa; Coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Unroasted coffee; Cinnamon [spice]; Sweetmeats [candy]; Caramels [candy]; Barley meal; Crushed barley; Husked barley; Cereal preparations; Beer vinegar; Chewing gum; Chocolate; Chow-chow [condiment]; Chutneys [condiments]; Cloves [spice]; Noodle-based prepared meals; Condiments; Oat flakes; Chips [cereal products]; Corn flakes; Fruit coulis [sauces]; Preparations for stiffening whipped cream; Custard; Cream of tartar for culinary purposes; Turmeric for food; Curry [spice]; Couscous [semolina]; Confectionery; Natural sweeteners; Pies; Pasties; Essences for foodstuffs, except etheric essences and essential oils; Spaghetti; Spices; Binding agents for ice cream; Sausage binding materials; Thickening agents for cooking foodstuffs; Malt extract for food; Starch for food; Leaven; Ferments for pastes; Noodles; Vermicelli [noodles]; Wheat flour; Cookies; Petit-beurre biscuits; Crackers; Wheat germ for human consumption; Glucose for culinary purposes; Gluten prepared as foodstuff; Waffles; Fruit jellies [confectionery]; Groats for human food; Bean meal; Halvah; Cheeseburgers [sandwiches]; Meal; Ices; Ice cream; Ice; Ice, natural or artificial; Garden herbs, preserved [seasonings]; Hominy; Infusions, not medicinal; Royal jelly; Golden syrup; Ginger [spice]; Meat gravies; Ketchup [sauce]; Cocoa beverages with milk; Coffee beverages with milk; Chocolate beverages with milk; Yeast; Linseed for human consumption; Macaroons [pastry]; Macaroni; Corn meal; Corn, milled; Corn, roasted; Malt biscuits; Malt for human consumption; Maltose; Peanut confectionery; Dough; Pastry; Mayonnaise; Marzipan; Molasses for food; Peppermint sweets; Mint for confectionery; Honey; Flour-milling products; Mustard; Mustard meal; Chocolate mousses; Dessert mousses [confectionery]; Muesli; Nutmegs; Bread; Unleavened bread; Gingerbread; Breadcrumbs; Bread rolls; Potato flour for food; Almond paste; Fondants [confectionery]; Soya bean paste [condiment]; Pasta; Cakes; Meat pies; Rice cakes; Petits fours [cakes]; Lozenges [confectionery]; Pesto [sauce]; Pepper; Allspice; Pizzas; Baking powder; Powders for ice cream; Cake powder; Pralines; Ham glaze; Cake frosting [icing]; Confectionery for decorating Christmas trees; Pastries; Bee glue; Quiches; Ravioli; Rice-based snack food; Cereal-based snack food; Liquorice [confectionery]; Relish [condiment]; Spring rolls; Popcorn; Flavorings, other than essential oils, for beverages; Flavorings, other than essential oils, for cakes; Flavorings, other than essential oils; Sago; Celery salt; Cooking salt; Salt for preserving foodstuffs; Soya sauce; Tomato sauce; Sauces [condiments]; Pasta sauce; Sandwiches; Seasonings; Semolina; Hominy grits; Soya flour; Sorbets [ices]; Artificial coffee; Sushi; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tarts; Tea; Iced tea; Tortillas; Pancakes; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vinegar; Frozen yogurt [confectionery ices].
Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt; Crayfish, live; Olives, fresh; Chicory roots; Bran mash for animal consumption; Locust beans; Algarovilla for animal consumption; Algae for human or animal consumption; Foodstuffs for animals; Pet food; Almonds [fruits]; Menagerie animals; Products for animal litter; Live animals; Christmas trees; Trees; Bushes; Aromatic sand for pets [litter]; Rice, unprocessed; Peas, fresh; Hazelnuts; Oats; Poultry, live; Preparations for egg laying poultry; Bagasses of cane [raw material]; Berries, fresh fruits; Beverages for pets; Beet; Lobsters, live; Bulbs; Lime for animal forage; Sugarcane; Fishing bait, live; Coconut shell; Chestnuts, fresh; Barley; Animal fattening preparations; Stall food for animals; Onions, fresh vegetables; Mash for fattening livestock; Rye; Cereal seeds, unprocessed; Citrus fruit; Coconuts; Rape cake for cattle; Hop cones; Copra; Rough cork; Wreaths of natural flowers; Raw barks; Bred stock; Crustaceans, live; Juniper berries; Chicory [salad]; Spinach, fresh; Flowers, natural; Flowers, dried, for decoration; Strengthening animal forage; Fruit, fresh; Dog biscuits; Wheat germ for animal consumption; Grains [cereals]; Groats for poultry; Grains for animal consumption; Plant seeds; Silkworms; Cocoa beans, raw; Beans, fresh; Rice meal for forage; Linseed meal for animal consumption; Flax meal [fodder]; Fish meal for animal consumption; Meal for animals; Hay; Garden herbs, fresh; Cuttle bone for birds; Fish spawn; Silkworm eggs; Eggs for hatching, fertilised; Spiny lobsters, live; Lettuce, fresh; Lentils, fresh; Yeast for animal consumption; Lemons, fresh; Linseed for animal consumption; Hops; Unsawn timber; Undressed timber; Maize; Maize cake for cattle; Malt for brewing and distilling; Peanut meal for animals; Peanut cake for animals; Peanuts, fresh; Shellfish, live; Mussels, live; Mushroom spawn for propagation; Oranges; Nuts [fruits]; Cola nuts; Edible chews for animals; Nettles; Marc; Oysters, live; Straw [forage]; Straw litter; Bird food; Straw mulch; Palms [leaves of the palm tree]; Palm trees; Potatoes, fresh; Sanded paper for pets [litter]; Sod; Fish, live; Sea-cucumbers, live; Cucumbers, fresh; Fodder; Peppers [plants]; Pine cones; Plants; Aloe vera plants; Plants, dried, for decoration; Seedlings; Pollen [raw material]; Leeks, fresh; Roots for food; Draff; Distillery waste for animal consumption; Rose bushes; Rhubarb; Salt for cattle; Bran; Seed germ for botanical purposes; Sesame; Mushrooms, fresh; Residual products of cereals for animal consumption; Oil cake; Wheat; Trunks of trees; Truffles, fresh; Litter peat; Grapes, fresh; Vegetables, fresh; Vine plants; Residue in a still after distillation; Wood chips for the manufacture of wood pulp; Marrows.
The contested goods are the following:
Class 29: Preserved vegetables (in oil); Olive oil for food; Olive paste; Pickles; Carrots; Gherkins; Processed onions; Pickled onions; Onions, preserved; Soft cheese; Blended cheese; Cheddar cheese; Processed cheese; Cheese sticks; Cheese mixtures; Cream cheese; Ripened cheeses; Cheese substitutes; Cheese containing spices; Olive oil; Linseed oils [edible]; Extra-virgin olive oil; Oils and fats; Cooking oils; Blended oil [for food]; Sunflower oil for food; Vegetable salads; Vegetables, preserved; Frozen vegetables; Pickled peppers; Processed eggplant; Pickled vegetables; Pickled fruits; Preserves, pickles; Mixed pickles; Spicy pickles; Piccalilli.
Class 31: Carrots (Fresh -); Onions; Unprocessed onions; Onions, fresh vegetables; Vine plants; Salad vegetables [fresh]; Vegetables, fresh; Unprocessed peppers; Fresh peppers; Fresh chilies; Chillies (Fresh -); Capsicums; Eggplants.
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 preserved vegetables (in oil); preserves, pickles are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.
The contested olive oil for food, olive oil; linseed oils [edible]; extra-virgin olive oil; oils; cooking oils; blended oil [for food]; sunflower oil for food are included in the broad category of the opponent’s edible oils. Therefore, they are identical.
The contested olive paste is included in the broad category of the opponent’s olives, preserved. Therefore, they are identical.
The contested pickles; onions, preserved; vegetable salads; vegetables, preserved; frozen vegetables are identically contained in both lists of goods, although with slightly different wordings.
The contested carrots overlap with the opponent’s vegetables, cooked, since, in this class, the carrots can be processed in different ways such as frozen, cooked and dried. Therefore, they are identical.
The contested gherkins, pickled onions; pickled peppers; pickled vegetables; pickled fruits; pickles; mixed pickles; spicy pickles; piccalilli are included in the broad category of the opponent’s pickles. Therefore, they are identical.
The contested processed onions; processed eggplant overlap with the opponent’s frozen vegetables, since freezing is one of the many ways to process food. Therefore, they are identical.
The contested soft cheese; blended cheese; cheddar cheese; processed cheese; cheese sticks; cheese mixtures; cream cheese; ripened cheeses; cheese substitutes; cheese containing spices are identical to the opponent’s milk products, since different types of contested cheese are types of milk products. Therefore, they are included in this broader category.
The contested fats are similar to a high degree to the opponent’s edible oils, as they have the same purpose, can have the same end user and are in competition.
Contested goods in Class 31
Onions, fresh vegetable; vegetables, fresh; vine plants are identically contained in both lists of goods, although with slightly different wordings.
The contested carrots (fresh -); onions; unprocessed onions; salad vegetables [fresh]; unprocessed peppers; fresh peppers; fresh chilies; chillies (fresh -); capsicums; eggplants are included in the broad category of the opponent’s fresh vegetables. Therefore, they are identical.
- 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 a high degree are consumer items that are used on a daily basis, target the public at large and are normally bought in a self-service grocery store or in a supermarket. The degree of attention is considered to be average.
- The signs
ISLA MENOR OLIVETA
Earlier trade mark
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.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.
The earlier mark is a word mark consisting of three verbal elements, ‘ISLA MENOR OLIVETA’. None of these elements can be considered more dominant (visually eye-catching) than other elements, since word marks have no dominant elements because, by definition, they are written in a standard typeface.
The verbal elements ‘ISLA MENOR’ of the earlier mark could be associated by part of the relevant public with the name of the marshes in the Guadalquivir River, which is in the province of Sevilla. For this part of the public, these elements are distinctive, since the public will not associate these marshes with the place of origin of the products. The remaining part of the relevant public will not associate ‘ISLA MENOR’ with the name of the place described above. Therefore, for this part of the public, these elements are also distinctive.
The contested sign is a figurative mark consisting in the verbal element ‘OLIVETTA’, a depiction of a barrel and what seems a vegetable garden.
The figurative elements of the contested sign occupy a large proportion of the sign and are depicted in colour. However, they are not the dominant elements, since their visual impact is outweighed by the impact of the verbal element, which is in the middle of the sign, particularly because it is in bold yellow letters.
Therefore, the contested sign has no element that can be clearly considered more dominant than others. As regards the contested sign, it is composed of a distinctive verbal element and less distinctive figurative elements, since the barrel indicates where the contested goods related to oil could be stored and the garden indicates the origin of the vegetables. Therefore, the verbal element is more distinctive than the figurative elements.
The verbal elements ‘OLIVETTA’ and ‘OLIVETA’ will be perceived by the relevant public as alluding to the Spanish word ‘oliva’. Bearing in mind some of the relevant goods, as described in detail above in section a) of this decision, are related to olives and oils, these verbal elements could be allusive for these goods. Therefore, these verbal elements will be low distinctive olive oil for food; olive paste; olive oil; linseed oils [edible]; extra-virgin olive oil; oils and fats; cooking oils; blended oil [for food]; sunflower oil for food and are distinctive for the rest of the relevant goods.
Visually, the signs coincide in ‘OLIVET*A’. However, they differ in the additional elements ‘ISLA MENOR’ of the earlier mark and in the figurative elements of the contested sign, as stated above.
Therefore, the signs are visually similar to an average degree.
Aurally, for Spanish-speaking part of the relevant public, the pronunciation of the contested sign, ‘OLIVETTA’, and ‘OLIVETA’ of the earlier mark is identical, since words with a double letter ‘t’ are unusual in Spanish and Spanish speakers may pronounce those words as having only one ‘t’. However, the pronunciation differs in the sound of the letters ‛ISLA MENOR’ in the earlier mark, which have no counterparts in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the verbal elements ‘ISLA MENOR’ will be associated by part of the relevant public with a place in Sevilla province, as explained above, and the rest of the relevant public will not associate them with any concept. The non-distinctive figurative elements in the contested sign will be perceived by the relevant public, as mentioned above, as depicting a barrel and a vegetable garden, which will be associated with the way in which the goods are stored and their origin, respectively. As regards the verbal elements ‘OLIVETA’ in the earlier mark and ‘OLIVETTA’ in the contested sign, neither will be associated with any meaning. Consequently, 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.
- 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.
- 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 goods/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 at issue are identical or similar to a high degree. They target the public at large and the degree of attention is considered to be average.
The contested sign and the earlier mark have the letters ‘OLIVET*A’ in common. However, the signs differ in the penultimate letter and the graphic elements of the contested sign, and in the remaining word elements of the earlier mark. Therefore, as explained in section c), the signs are considered visually and aurally similar to an average degree.
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 the 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. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, that is, in the present case, the Spanish-speaking part of the public, is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 627 254. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right European Union trade mark registration No 11 627 254 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.