OPPOSITION No B 2 431 834

Pally Holland B.V., Galvanibaan 12, 3439 MG Nieuwegein, The Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)

a g a i n s t

Valerio Cesano, 46 avenue de New York, 75016 Paris, France (applicant).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 431 834 is upheld for all the contested goods, namely:

Class 30: Baked goods.

2.        European Union trade mark application No 13 119 409 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods in Classes 29, 30, 40 and 43 of European Union trade mark application No 13 119 409 and subsequently limited the extent of the opposition to the goods in Class 30, namely to baked goods. The opposition is based on European Union trade mark registration No 7 066 079. 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 30: Biscuits, waffles, biscuits and gingerbread.

After the applicant’s restriction of the goods made on 19/01/2015, and the opponent’s limitation of the extent of the opposition included in its observations dated 13/01/2017, the contested goods are the following:

Class 30: Baked goods.

The contested baked goods include, as a broader category the opponent’s gingerbread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

PALLY	PALLYNA
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. The Opposition Division will evaluate the likelihood of confusion in relation to the part of the public, for example non-English-speaking consumers, that does not understand the words ‘PALLY’ and ‘PALLYNA’.

Both marks are word marks and are meaningless for the abovementioned part of the relevant public, and therefore they are distinctive.

Visually and aurally, the signs coincide in the sequence of letters and sounds ‘PALLY’. The difference between the signs is confined to the additional last two letters, ‘NA’, of the contested sign, which make that sign longer than the earlier mark. The earlier mark is pronounced in two syllables, PA-LLY, whereas the contested mark is pronounced in three syllables, PA-LLY-NA.

The word ‘PALLY’ constitutes the entire earlier mark and the first five letters out of seven of the contested sign.

Moreover, the relevant public generally tends to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the fact that the earlier mark is totally incorporated in the contested sign at its beginning has to be taken into account when assessing the likelihood of confusion between the marks.

Therefore, the marks are visually and aurally similar to a higher than average degree.

Conceptually, neither of the signs has a meaning for the non-English-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,  § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the goods are identical, the degree of attention of the public is average and the earlier mark has a normal degree of distinctiveness.

The signs coincide visually and aurally in the letter sequence ‘PALLY’, which forms the entire earlier mark and the first five out of seven letters of the contested sign.

The Opposition Division considers that the remaining two letters, ‘NA’, at the end of the contested sign are not capable of creating sufficient difference to safely exclude the likelihood of confusion between the signs, in particular because the identity between the goods increases the likelihood of confusion.

Moreover, 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union 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 7 066 079. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, he 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

Steve HAUSER

Alexandra APOSTOLAKIS

Benoit VLEMINCQ

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.