OPPOSITION No B 2 709 866

Hengstenberg GmbH & Co. KG, Mettinger Straße 109, 73728 Esslingen, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Fior Di Campo S.R.L., Via delle Cappelle, 18/C, 70022 Altamura (BA), Italy (applicant), represented by De Tullio & Partners S.R.L., Viale Liegi, 48/b, 00198 Roma, Italy (professional representative).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 866 is partially upheld, namely for the following contested goods:

Class 29:         Canned fruits; Beans; Canned beans; Dried beans; Preserved fruits; Dried fruit; Milk products; Vegetables, cooked; Dried pulses; Vegetable preserves; Canned pulses; Lentils, preserved; Edible oils; Edible oils and fats; Peas, preserved; Milk products.

Class 30:         Natural starches for food; Farinaceous foods; Processed grains; Pounded wheat; Farinaceous food pastes; Fresh pasta; Dried pasta; Food preparations based on grains; Starch for food.

Class 31:         Cereal seeds, unprocessed; Garden herbs, fresh; Flowers; Fresh fruits and vegetables; Fresh fruits; Unprocessed fruits; Grains [cereals]; Crop seeds; Wheat; Unprocessed wheat; Unprocessed grains for eating; Unprocessed buckwheat; Fresh vegetables; Fresh vegetables; Natural plants; Agricultural products not included in other classes; Crop seeds; Wheat seed; Crop seeds; Crop seeds; Crop seeds; Seeds for horticultural purposes.

2.        European Union trade mark application No 15 211 428 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 15 211 428 for the figurative mark ‘’. The opposition is based on, inter alia, German trade mark registration No 302 013 004 436 of the word mark ‘ORO’. 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 German trade mark registration No 302 013 004 436.

1. 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; compotes; eggs; edible oils and fats.

Class 30: Flour and preparations made from cereals, namely pasta and pasta products; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Grains as well as agricultural, horticultural and forestry products, as far as not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs and malt.

The contested goods are the following:

Class 29: Canned fruits; Beans; Canned beans; Dried beans; Cheese products; Preserved fruits; Dried fruit; Milk products; Vegetables, cooked; Dried pulses; Vegetable preserves; Canned pulses; Lentils, preserved; Edible oils; Edible oils and fats; Peas, preserved; Milk products.

Class 30: Natural starches for food; Farinaceous foods; Sponge cake; Processed grains; Sweetmeats; Pounded wheat; Dough; Fresh bread; Multigrain bread; Bread and buns; Farinaceous food pastes; Fresh pasta; Dried pasta; Bread doughs; Cookie dough; Sponge cake; Sponge cake; Food preparations based on grains; Starch for food; Bakery goods.

Class 31: Cereal seeds, unprocessed; Garden herbs, fresh; Flowers; Fresh fruits and vegetables; Fresh fruits; Unprocessed fruits; Grains [cereals]; Crop seeds; Wheat; Unprocessed wheat; Unprocessed grains for eating; Unprocessed buckwheat; Fresh vegetables; Fresh vegetables; Natural plants; Agricultural products not included in other classes; Crop seeds; Wheat seed; Crop seeds; Crop seeds; Crop seeds; Seeds for horticultural purposes.

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

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

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 canned fruits are included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested beans and canned beans; canned pulses; lentils, preserved; peas, preserved are included in the broad category of, or overlap with, the opponent’s preserved vegetables. Therefore, they are identical.

The contested dried beans and dried pulses are included in the broad category of the opponent’s dried vegetables. Therefore, they are identical.

 

The contested cheese products are dissimilar to the opponent’s goods. The goods under comparison belong to different categories of foodstuffs and they are not in competition with each other, nor are they complementary. Furthermore, their producers do not normally coincide and they are usually sold in different shops or in different sections of a supermarket.  

Preserved fruits; dried fruit; vegetables, cooked; vegetable preserves; edible oils; edible oils and fats are identically contained in the opponent’s list of goods (although partly with slightly modified wording).

The contested milk products (listed twice) include butter. Consequently these goods may have the same purpose, relevant public and be in competition with the opponent’s edible oils and fats. Therefore, they are similar. 

Contested goods in Class 30

The contested natural starches for food; processed grains; pounded wheat; food preparations based on grains; starch for food are similar to the opponent’s flour as they may coincide in producers, relevant public and distribution channels. 

The contested farinaceous foods; farinaceous food pastes include, as broader categories, the opponent’s preparations made from cereals, namely pasta and pasta products. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested fresh pasta; dried pasta are included in the broad categories of the opponent’s preparations made from cereals, namely pasta and pasta products. Therefore, they are identical.

The contested sponge cake (listed three times); sweetmeats; dough; fresh bread; multigrain bread; bread and buns; bread doughs; cookie dough; bakery goods are dissimilar to the opponent’s goods. The goods under comparison belong to different categories of foodstuffs and usually do not originate from the same undertakings. Furthermore, they have different channels of distribution and they are neither in competition, nor complementary.  

Contested goods in Class 31

The contested cereal seeds, unprocessed; crop seeds (mentioned 5 times); wheat seed; seeds for horticultural purposes are included in the broad category of the opponent’s seeds. Therefore, they are identical.

The contested garden herbs, fresh are included in the broad category of the opponent’s horticultural products, as far as not included in other classes. Therefore, they are identical.

 

Flowers; fresh fruits and vegetables; fresh fruits; unprocessed fruits; fresh vegetables; fresh vegetables; natural plants; agricultural products not included in other classes are identically contained in both lists of goods (including synonyms).

The contested grains [cereals]; unprocessed grains for eating are included in the broad category of the opponent’s grains. Therefore, they are identical. 

The contested wheat; unprocessed wheat; unprocessed buckwheat are included in the broad category of the opponent’s agricultural products, as far as not included in other classes. Therefore, they are identical. 

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 are directed at the public at large and at business customers (professionals in the agricultural sector or intermediaries). Where the goods at issue are intended for all consumers, the relevant public must be deemed to be composed of the average consumer (26/04/2007, C-412/05 P, Travatan, EU:C:2007:252, § 62 and the case-law cited therein). Given that the general public is more prone to confusion, the examination will proceed in relation to the public at large with an average degree of attention.

3. The signs

ORO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 composed of one word ‘ORO’.

The contested sign is figurative. The golden yellow circle in the centre of the contested sign with small figurative elements below and above it is likely to be seen as a stylised letter ‘O’. This is because it appears between the letters ‘OR’ and ‘BIO’ and intuitively forms together with them the word ‘OROBIO’.

Although, as argued by the applicant, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the letters ‘BIO’ of the contested sign are visually separated from the other letters as they are preceded by a golden yellow circle which is likely to be seen as a stylised letter ‘O’ that is slightly bigger than the remaining letters and in different colour. In addition, the relevant public will immediately grasp the meaning of the word composed by the letters ‘BIO’, in particular in relation to the relevant goods, and will attribute it to the characteristics of the relevant goods thinking that they are organic. As a consequence, this element is non-distinctive.

As to the small figurative elements placed above and below the golden yellow circle of the contested sign, only after a closer examination they may be perceived as representing ears of corn, a detail which may be associated with some of the relevant goods or seen as a decoration. However, due to their number and small size as well as positioning, at first sight they look like an embellishment of the letter ‘O’. For this reason, at least for a part of the public, these elements do not convey any clear, unambiguous and immediately graspable concept.

The word ‘ORO’, which appears in both signs, will be perceived as meaningless by the relevant consumers in Germany. Consequently, this word is distinctive.

The signs have no dominant elements. However, when a sign consists 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).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in in the string of letters ‘ORO’. These letters form a word which is the sole component of the earlier mark and are placed at the beginning of the verbal element of the contested sign where they will catch the primary attention of the consumer for the reasons explained above.

The signs differ in the additional elements of the contested sign, namely the additional letters forming the word ‘BIO’, the stylisation of the letters and in particular the second letter ‘O’ which is also bigger than the other letters of the sign as well as colours and figurative elements. However, as previously explained, the relevant consumers will rather memorise the verbal element of the contested sign than the embellishing figurative elements. Furthermore, the consumers will notice the coincidence in the signs’ common and distinctive verbal element composed of the letters ‘ORO’ while the differentiating word ‘BIO’ of the contested sign will be perceived as an indication of the positive qualities of the goods. Therefore, the signs are visually similar to an average degree.

Aurally, the signs are highly similar since, although the contested sign is longer than the earlier mark, the attention of the relevant German-speaking consumer will be rather attracted to the signs’ common and distinctive element ‘ORO’ than to the non-distinctive differentiating element ‘BIO’ of the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the identifiable word ‘BIO’ of the contested sign evokes a concept, it does not serve to distinguish the marks from a conceptual point of view as this element is non-distinctive and cannot indicate the commercial origin of the goods. The small figurative elements placed above and below the golden yellow circle of the contested sign do not convey any clear, unambiguous and immediately graspable concept. Therefore, at least for those consumers who perceive these figurative elements as purely ornamental, the conceptual comparison does not influence the assessment of similarity of the marks.  

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.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally highly similar. As to the conceptual comparison, although the element ‘BIO’ conveys an easily graspable concept, this non-distinctive element cannot help the consumers to differentiate between the signs and the figurative elements embellishing the letter ‘O’ in the contested sign do not convey any clear, unambiguous and immediately graspable concept at least for a part of the public.

Account is 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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.

In view of the above, although there are some differences between the signs at issue, the Opposition Division considers that due to the fact that the signs coincide in ‘ORO’, which forms the distinctive and sole element of the earlier mark while the additional verbal element of the contested sign is non-distinctive, the consumers may be lead to believe that the contested figurative sign is a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that the signs are short. However, although the earlier mark is composed of three letters and, therefore, it is considered to be a short mark, this has no particular impact in the present case because all the letters ‘ORO’, composing the entire distinctive earlier mark, appear in the contested sign and the differences are placed in other elements of the contested sign which have less impact.

 

The applicant refers to previous decisions of the Office to support its arguments, in particular concerning the weak distinctive character of the element ‘ORO’ in certain languages. However, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the opponent are not relevant to the present proceedings especially when taking into account that the impact of the coinciding and other elements in the perception of the public in the relevant territory is different in those cases than in the present case since ‘ORO’ will be perceived as meaningless by the relevant consumers in Germany.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public in Germany and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 013 004 436. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining, professional part of the public.

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.

The opponent has also based its opposition on international trade mark registration No 1 192 647 of the word mark ‘ORO’ designating Portugal, Austria, United Kingdom, Italy, Benelux. Since these designations are identical to the trade mark which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Even though it must be observed that, the extract from ROMARIN database submitted by opponent shows the broader scope of goods, it is also clear from the same extract that there was a partial cancellation effected for some of the goods at the request of an office of origin. Taking into account that during the first five years the international registration depends on basic registration, the partial cancellation of the earlier German mark registration No 1 192 647 must be considered to have the same effect on the international registration which means that this international registration cannot cover a broader scope of goods.

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

Sandra IBAÑEZ

Justyna GBYL

Adriana VAN ROODEN

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.