OPPOSITION No B 2 522 905
Carapelli Firenze, S.p.A., Via Leonardo da Vinci, 31 – Località Sambuca, 50028 Tavarnelle val di Pesa (Firenze), Italy (opponent), represented by María José Garreta Rodríguez Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Medio Piave Group S.p.A., Via Canova 6, 31100 TREVISO, Italy (applicant), represented by Paolo Piovesana, Via F. Baracca 5/A, 30173 Venezia-Mestre, Italy (professional representative).
On 01/03/2017, the Opposition Division takes the following
1. Opposition No B 2 522 905 is upheld for all the contested goods.
2. European Union trade mark application No 13 808 266 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 13 808 266. The opposition is based on, inter alia, European Union trade mark registration No 3 887 932. 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 3 887 932.
- The goods
The goods on which the opposition is based are the following:
Class 29: Edible oils and fats.
After a limitation requested by the applicant, the contested goods are the following:
Class 29: Edible oils except for fruit and cereal based ones.
In response to arguments raised by the Applicant, the Opposition Division recalls that for the comparison of the goods and services as well as of the signs, an assessment is made on the basis of the signs and goods and services as registered rather than how they are actually used in the course of trade (09/06/2010, T-138/09, ‘Riojavina’, EU:T:2010:226, § 50). The GC reiterates that an entrepreneurial decision on how the goods were to be used is irrelevant, the assessment being limited to the goods and services as they are on register (judgment of 08/05/2014, T-575/12, ‘PYROX’, EU:T:2014:242,). Therefore, the Opposition Division will proceed with the comparison of the goods based on their natural meaning, regardless of how the signs are used.
The contested goods are included in the broad category of the opponent’s edible oils. 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 case at hand, the goods found to be identical are daily consumer items addressed to the general public, and normally bought in a self-service grocery store or in a supermarket. The degree of attention is considered to be average.
- The signs
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 earlier mark is the word mark ‘OLYS’.
The contested sign features the verbal element ‘OLYSIR’ written vertically in a black, fairly standard typeface and underlined by a white number ‘5’ enclosed in a black disk.
The verbal elements of the signs have no meaning for the relevant public and will not be broken down into several elements. Likewise, the number ‘5’ enclosed in a disk would not be associated with any meaning other than the concept of a cardinal number. Therefore, all these elements are distinctive.
The signs have no element that could be considered more distinctive or dominant (visually eye-catching) than other elements.
It has to be recalled that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. The initial part is the one that first catches the attention of the reader.
In the present case, it is most likely that the majority of the public will perceive the contested sign as ‘OLYSIS 5’. Therefore, the earlier mark is not only totally included in the beginning of the contested sign but also constitutes the major part of it.
Visually, the signs coincide in the string of letters ‘OLYS’, constituting the entirety of the earlier, distinctive, mark and the majority of the contested sign. They differ only in that the contested sign contains the final two letters ‘IR’, and in the additional number ‘5’ enclosed in a black disk and in the almost standard typeface.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Also, as noted above, the letters in common appear at the beginning of the verbal element of the contested sign, which is generally more striking.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛OLYS’, present in both signs. The pronunciation differs for the contested sign in the sound of the less striking final letters ‘IR’ and in the sound of the number ‘5’.
Therefore, the signs are aurally similar to an average degree.
Conceptually, while the public in the relevant territory will perceive the contested mark as containing the concept of the number ‘5’, the other sign lacks any meaning in that territory. Since one of the signs 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.
- 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
A likelihood of confusion (including a likelihood of association) 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.
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.).
Moreover, the Court has set out the essential principle that 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 the 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 are identical and the signs are visually and aurally similar to an average degree, since the earlier distinctive mark ‘OLYS’ is, for the majority of the public, fully included in the beginning of the contested sign.
The differences only lie in the contested sign and are not particularly prominent, namely the less striking ending, the almost standard typeface and the number five, which is enclosed in a disk and perceived as referring to this number as such.
Based on all the foregoing, these additional elements of the contested sign are not sufficient to clearly differentiate the marks. Indeed, it is considered that, for a sufficiently large part of the public, there are strong coincidences between the signs. Taken together with the identity of the goods and the average degree of attention, it is likely that these consumers will believe that the conflicting goods come from the same undertaking or economically linked undertakings.
Account should also be taken of 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.
Likewise, it should be recalled that the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, the consumers may legitimately believe that the contested mark is a new version or a brand variation of the earlier mark.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 3 887 932. It follows that the contested sign must be rejected for all the contested goods.
As this earlier right 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
Begoña URIARTE VALIENTE
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.