OPPOSITION No B 2 730 599

Dileo Pietro S.p.A., S.S. 271 Km. 51,260 Zona Industriale Jesce, 75100 Matera, Italy (opponent), represented by Dimitri Russo S.r.l., Via G. Bozzi, 47°, 70121 Bari, Italy (professional representative)

a g a i n s t

Andreas Köhler & Konrad Paulus Sonnenburg, Mühlweg 28, 06114 Halle, Germany (applicant), represented by Dr. Meyer-Dulheuer & Partners LLP, Franklinstr. 61-63, 60486 Frankfurt am Main, Germany (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 599 is partially upheld, namely for the following contested goods:

Class 30: Baked goods, confectionery, chocolate and desserts; ice creams, frozen yogurts and sorbets; pineapple fritters; French toast; flavoured popcorn; snack food products consisting of cereal products; snack food products made from potato flour; snack foods prepared from maize; snacks manufactured from muesli; banana fritters; baozi [stuffed buns]; flaky pastry containing ham; pretzels; brioches; bean jam buns; frankfurter sandwiches; buckwheat jelly (memilmuk); burritos; calzones; chalupas; cheeseburgers [sandwiches]; chimichanga; Chinese steamed dumplings (shumai, cooked); grain-based chips; crisps made of cereals; chow mein; chow mein [noodle-based dishes]; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; crackers flavoured with cheese; crackers flavoured with spices; crepes; egg pies; empanadas; enchiladas; chocolate-based ready-to-eat food bars; fajitas; pastries consisting of vegetables and fish; rice-based prepared meals; prepared meals in the form of pizzas; prepared meals containing [principally] pasta; pies containing meat; meat pies; meat pies [prepared]; fresh pies; fresh pizza; fresh sausage rolls; Stir fried rice cake [topokki]; egg rolls; spring rolls; prawn crackers; fried corn; chilled pizzas; frozen pastry stuffed with meat; frozen pastry stuffed with vegetables; filled baguettes; pasta containing stuffings; Chinese stuffed dumplings (gyoza, cooked); filled bread rolls; vegetable pies; pellet-shaped rice crackers (arare); rice based dishes; meals consisting primarily of pasta; corn kernels being toasted; toasted sandwiches; toasted cheese sandwich; toasted cheese sandwich with ham; chips [cereal products]; cereal-based snack food; gimbap [Korean rice dish]; mincemeat pies; flapjacks; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; hot sausage and ketchup in cut open bread rolls; millet cakes; hot dog sandwiches; snack food products made from cereal flour; snack food products made from rice flour; snack food products made from soya flour; snack foods made from corn; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; puffed corn snacks; cereal snack foods flavoured with cheese; jiaozi [stuffed dumplings]; canapes; caramel coated popcorn with candied nuts; kimchi pancakes (kimchijeon); sticky rice cakes (chapsalttock); shrimp dumplings; preserved pizzas; Korean-style pasta soup [sujebi]; glutinous pounded rice cake coated with bean powder (injeolmi); stir-fried noodles with vegetables (japchae); Cheese curls [snacks]; macaroni with cheese; pumpkin porridge (Hobak-juk); lasagne; seaweed flavoured corn chips; corn, roasted; corn chips; vegetable flavoured corn chips; macaroni salad; microwave popcorn; sandwiches containing fish fillet; sandwiches containing meat; steamed buns stuffed with minced meat (niku-manjuh); caramel coated popcorn; crackers filled with cheese; mung bean pancakes (bindaetteok); nachos; ready-made dishes containing pasta; noodle-based prepared meals; canned pasta foods; pasta salad; okonomiyaki [Japanese savory pancakes]; pasta dishes; pastries consisting of vegetables and meat; pastries consisting of vegetables and poultry; pies; pies containing fish; pies containing poultry; pies containing vegetables; pies containing game; pies [sweet or savoury]; stir-fried rice; pancakes; green onion pancake [pajeon]; prepared savory foodstuffs made from potato flour; savory pastries; pizza crust; pizza bases; prepared pizza meals; pizzas; pizzas [prepared]; candy coated popcorn; pot pies; puffed cheese balls [corn snacks]; popcorn; quesadillas; quiches; ramen [Japanese noodle-based dish]; ravioli; ravioli [prepared]; rice mixed with vegetables and beef [bibimbap]; rice crisps; prepared rice dishes; rice dumplings; rice dumplings dressed with sweet bean jam (ankoro); rice crackers; rice cakes; rice biscuits; rice salad; rice-based snack food; risotto; salted tarts; samosas; sandwiches; sandwiches containing fish; sandwiches containing chicken; sandwiches containing minced beef; sandwiches containing salad; pork pies; rice crackers [senbei]; sesame snacks; snack foods made from wheat; snack food products made from cereal starch; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; cheese flavored puffed corn snacks; spaghetti and meatballs; canned spaghetti in tomato sauce; extruded wheat snacks; crumble; sweet rice with nuts and jujubes (yaksik); tabbouleh; taco chips; tacos; tamales; frozen pizzas; frozen pastry stuffed with meat and vegetables; tortilla snacks; tortilla chips; tortillas; Korean traditional rice cake [injeolmi]; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; uncooked pizzas; processed unpopped popcorn; boxed lunches consisting of rice, with added meat, fish or vegetables; hot dogs (prepared); ready to eat savory snack foods made from maize meal formed by extrusion; pre-baked pizzas crusts; prepared meals containing [principally] rice; snack foods consisting principally of bread; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack foods consisting principally of extruded cereals; meals consisting primarily of rice; wonton chips; wontons; soft pretzels; wholewheat crisps; poultry and game meat pies; wrap [sandwich]; sausage rolls; meals; onion biscuits. prepared foodstuffs in the form of sauces; pasta-based prepared.

2.        European Union trade mark application No 15 294 903 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 294 903 , namely against all the goods in Class 30. The opposition is based on the following earlier marks:

• Italian trade mark registration No 1 062 823 ;
• Italian trade mark registration No 1 483 159 .

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE – Italian trade mark registration No 1 062 823

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Italian trade mark registration No 1 062 823.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application was 31/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Italy from 31/03/2011 to 30/03/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 30:        Bakery goods; biscuits; sponge fingers [cakes]; panettone; salty biscuits; flour; preparations made from cereals; pastries; honey; sauces [condiments]; spices; yeast; coffee, tea; sugar; rice.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 21/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/02/2017 to submit evidence of use of the earlier trade mark. On 20/02/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Printouts of stills from videos taken from YouTube. The descriptions of the videos are in Italian. The videos were published on various dates as follows:

• 05/05/2013 in relation to biscuits and showing the logo ;

• 19/09/2014 in relation to biscuits and showing the logo ;
• 11/09/2014 in relation to biscuits and showing the logo ;

• 16/09/2012 in relation to biscuits and showing the logo .

• Printouts from Facebook (in Italian), dated 2015. They show restaurants, trucks and trade fairs where the following logos are visible: , , , , .

• Photos extracted from Facebook, dated 2014-2015. The photos show biscuits packaged under the mark .

• Two printouts from amazon.it. The documents are dated in the relevant period and show that biscuits were sold under the mark .

• Five newspaper articles in Italian, dated July- August 2012, 04/05/2015, 21/10/2015, 07/05/2015 and 06/06/2015. The documents have not been translated, but images of biscuits sold under the mark  are visible.

• Printouts of a Google search for the words ‘dileo pietro’ that was restricted to the period 2011 to 2016. The results show links related to the opponent.

• Article from Italian Quality Experience (dated 2015) describing the company as producing and selling a vast range of biscuits.

• Article from AZIENDAinFIERA, dated July 2011, in which it is written that the opponent’s company sells biscuits.

• Technical data (nutritional values, packaging information, ingredients, etc.) of biscuits bearing the logo .

• Eight invoices, all dated in the relevant period (2011/2012); four are addressed to companies in Italy and four are addressed to foreign companies (in the USA, Israel and Australia).

Place of use

The language of the documents, namely on the articles and invoices, demonstrates that the place of use is Italy. Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within the relevant period.

Extent of use

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The documents listed above, in particular the articles, the photos and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The articles and the invoices demonstrate that the mark was genuinely used.

Some invoices show that the products were sold to Israel, the USA and Australia. According to Article 15(1)(b) EUTMR, the affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes also constitutes use within the meaning of Article 15(1) EUTMR. Therefore, these invoices have to be taken into account.

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36 to 38, and the case-law cited therein).

Furthermore, the fact that third parties refer to the opponent’s mark (especially in articles) is a relevant element confirming that the mark was put to genuine use.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign is used in such a way as to establish a clear link between the goods (biscuits) and the opponent, since on all of the invoices submitted the name of the opponent is clearly indicated, as is the mark under which the biscuits are invoiced. The Opposition Division considers therefore that the evidence demonstrates use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a) ‘… is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered, taking herewith into account the emphasis in the previous paragraph, requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31, and the case-law cited).

With regard to omissions in the mark when used, if the omitted element is in an accessory position in the presentation of the sign and not distinctive, the omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). The same applies with respect to additions to the mark as used.

Having regard to the aforesaid considerations, in order to decide whether the form of the mark as used constitutes use of the form of the mark as registered, the Opposition Division will have to establish if the differing elements between the marks as used and registered are negligible.

In the present case, the earlier mark is registered as follows:

.

The words ‘DI LEO’ are the Italian for ‘of LEO’, ‘LEO’ being a popular Italian given name. When a mark is composed of verbal and figurative components, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The following logos are used:

•  

The mark above is a figurative mark consisting of a red semi-circle containing in its centre the words ‘Di Leo’. Underneath the semi-circle are the verbal elements ‘il FORNO dei DESIDERI’, which translate as ‘the oven of desires’. In relation to biscuits, these verbal elements constitute a non-distinctive slogan, and the addition of these verbal elements does not alter the distinctive character of the mark. Therefore, this logo constitutes use of the mark according to Article 15 EUTMR.

• 

The abovementioned considerations also apply to the mark above. The addition of ‘Bisco Bar’ does not change these findings. These words will be understood by the relevant public as referring to a shop where biscuits (biscotti) are sold. Therefore, as this mark includes only the addition of a non-distinctive element, this addition does not alter the distinctive character of the mark and this logo constitutes use of the mark.

• 

The mark above is a figurative mark consisting of the words ‘Di Leo’ in the middle of the sign. At the top are the verbal elements ‘PREMIATO BISCOTTIFICIO’, which mean award-winning biscuit’. In relation to biscuits, this element is non-distinctive. The other addition, ‘DI LEO PIETRO’, is less dominant than the words ‘Di Leo’. Furthermore, this is the name of the opponent’s company. In principle, the use of the sign as a company name or trade name cannot, in itself, distinguish goods and/or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business. Therefore, it should be considered that this addition in the logo is acceptable.

• 

As mentioned above, the word ‘biscotti’ is non-distinctive in relation to biscuits, as it is the Italian equivalent for ‘biscuits’. Therefore, this addition in the mark above does not alter the distinctive character of the mark as registered and constitutes use of the mark.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The evidence submitted by the opponent contains references only to biscuits in Class 33.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 Italian trade mark registration No 1 483 159.

1. The goods

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

Class 30: Bakery goods; biscuits; sponge fingers [cakes]; panettone; salty biscuits; flour and preparations made from cereals; pastries; honey; cocoa; yeast; coffee; tea; sugar.

The contested goods are the following:

Class 30: Baked goods, confectionery, chocolate and desserts; ice; ice creams, frozen yogurts and sorbets; pineapple fritters; French toast; flavoured popcorn; snack food products consisting of cereal products; snack food products made from potato flour; snack foods prepared from maize; snacks manufactured from muesli; banana fritters; baozi [stuffed buns]; flaky pastry containing ham; pretzels; brioches; bean jam buns; frankfurter sandwiches; buckwheat jelly (memilmuk); burritos; calzones; chalupas; cheeseburgers [sandwiches]; chimichanga; Chinese steamed dumplings (shumai, cooked); grain-based chips; crisps made of cereals; chow mein; chow mein [noodle-based dishes]; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; crackers flavoured with cheese; crackers flavoured with spices; crepes; egg pies; empanadas; enchiladas; chocolate-based ready-to-eat food bars; fajitas; pastries consisting of vegetables and fish; rice-based prepared meals; prepared meals in the form of pizzas; prepared meals containing [principally] pasta; pies containing meat; meat pies; meat pies [prepared]; fresh pies; fresh pizza; fresh sausage rolls; Stir fried rice cake [topokki]; egg rolls; spring rolls; prawn crackers; fried corn; chilled pizzas; frozen pastry stuffed with meat; frozen pastry stuffed with vegetables; filled baguettes; pasta containing stuffings; Chinese stuffed dumplings (gyoza, cooked); filled bread rolls; vegetable pies; pellet-shaped rice crackers (arare); rice based dishes; meals consisting primarily of pasta; corn kernels being toasted; toasted sandwiches; toasted cheese sandwich; toasted cheese sandwich with ham; chips [cereal products]; cereal-based snack food; gimbap [Korean rice dish]; mincemeat pies; flapjacks; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; hot sausage and ketchup in cut open bread rolls; millet cakes; hot dog sandwiches; snack food products made from cereal flour; snack food products made from rice flour; snack food products made from soya flour; snack foods made from corn; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; puffed corn snacks; cereal snack foods flavoured with cheese; jiaozi [stuffed dumplings]; canapes; caramel coated popcorn with candied nuts; kimchi pancakes (kimchijeon); sticky rice cakes (chapsalttock); shrimp dumplings; preserved pizzas; Korean-style pasta soup [sujebi]; glutinous pounded rice cake coated with bean powder (injeolmi); stir-fried noodles with vegetables (japchae); Cheese curls [snacks]; macaroni with cheese; pumpkin porridge (Hobak-juk); lasagne; seaweed flavoured corn chips; corn, roasted; corn chips; vegetable flavoured corn chips; macaroni salad; microwave popcorn; sandwiches containing fish fillet; sandwiches containing meat; steamed buns stuffed with minced meat (niku-manjuh); caramel coated popcorn; crackers filled with cheese; mung bean pancakes (bindaetteok); nachos; ready-made dishes containing pasta; noodle-based prepared meals; canned pasta foods; pasta salad; okonomiyaki [Japanese savory pancakes]; pasta dishes; pastries consisting of vegetables and meat; pastries consisting of vegetables and poultry; pies; pies containing fish; pies containing poultry; pies containing vegetables; pies containing game; pies [sweet or savoury]; stir-fried rice; pancakes; green onion pancake [pajeon]; prepared savory foodstuffs made from potato flour; savory pastries; pizza crust; pizza bases; prepared pizza meals; pizzas; pizzas [prepared]; candy coated popcorn; pot pies; puffed cheese balls [corn snacks]; popcorn; quesadillas; quiches; ramen [Japanese noodle-based dish]; ravioli; ravioli [prepared]; rice mixed with vegetables and beef [bibimbap]; rice crisps; prepared rice dishes; rice dumplings; rice dumplings dressed with sweet bean jam (ankoro); rice crackers; rice cakes; rice biscuits; rice salad; rice-based snack food; risotto; salted tarts; samosas; sandwiches; sandwiches containing fish; sandwiches containing chicken; sandwiches containing minced beef; sandwiches containing salad; pork pies; rice crackers [senbei]; sesame snacks; snack foods made from wheat; snack food products made from cereal starch; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; cheese flavored puffed corn snacks; spaghetti and meatballs; canned spaghetti in tomato sauce; extruded wheat snacks; crumble; sushi; sweet rice with nuts and jujubes (yaksik); tabbouleh; taco chips; tacos; tamales; frozen pizzas; frozen pastry stuffed with meat and vegetables; tortilla snacks; tortilla chips; tortillas; Korean traditional rice cake [injeolmi]; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; uncooked pizzas; processed unpopped popcorn; boxed lunches consisting of rice, with added meat, fish or vegetables; hot dogs (prepared); ready to eat savory snack foods made from maize meal formed by extrusion; pre-baked pizzas crusts; prepared meals containing [principally] rice; snack foods consisting principally of bread; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack foods consisting principally of extruded cereals; meals consisting primarily of rice; wonton chips; wontons; soft pretzels; wholewheat crisps; poultry and game meat pies; wrap [sandwich]; sausage rolls; meals; onion biscuits; prepared foodstuffs in the form of sauces; pasta-based prepared.

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.

As a preliminary remark, it is important to define the opponent’s bakery goods. A bakery is a building where products such as bread, pastries and cake are baked or the shop where they are sold. Therefore, bakery goods can be understood as goods sold in bakeries.

The contested baked goods; pineapple fritters; French toast; snack food products made from potato flour; baozi [stuffed buns]; pretzels; brioches; bean jam buns; frankfurter sandwiches; grain-based chips; empanadas; pies containing meat; meat pies; meat pies [prepared]; fresh sausage rolls; filled baguettes; filled bread rolls; vegetable pies; toasted sandwiches; toasted cheese sandwich; toasted cheese sandwich with ham; canapes; sandwiches containing fish fillet; sandwiches containing meat; pies containing fish; pies containing poultry; pies containing vegetables; pies containing game; pies [sweet or savoury]; pot pies; quesadillas; quiches; salted tarts; sandwiches; sandwiches containing fish; sandwiches containing chicken; sandwiches containing minced beef; sandwiches containing salad; pork pies; snack foods consisting principally of bread; soft pretzels; wholewheat crisps; poultry and game meat pies; wrap [sandwich]; sausage rolls are included in, or at least overlap with, the broad category of the opponent’s bakery goods. Therefore, they are identical.

Pizza is a dish of Italian origin consisting of a flat, round base of dough baked with a topping of tomato sauce and cheese, typically with added meat or vegetables. These products are sold in pizzerias but also in bakeries where catering services are also provided. Therefore, the contested calzones; prepared meals in the form of pizzas; fresh pizza: chilled pizzas; preserved pizzas; pizza crust; pizza bases; prepared pizza meals; pizzas; pizzas [prepared]; frozen pizzas; uncooked pizzas; pre-baked pizzas crusts are included in, or at least overlap with, the broad category of the opponent’s bakery goods. Therefore, they are identical.

The contested desserts include, as a broader category, or overlap with the opponent’s pastries. 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 flavoured popcorn; snack food products consisting of cereal products; snack foods prepared from maize; snacks manufactured from muesli; banana fritters; buckwheat jelly (memilmuk); Chinese steamed dumplings (shumai, cooked); crisps made of cereals; rice-based prepared meals; Stir fried rice cake [topokki]; fried corn; Chinese stuffed dumplings (gyoza, cooked); pellet-shaped rice crackers (arare); rice based dishes; corn kernels being toasted; chips [cereal products]; cereal-based snack food; gimbap [Korean rice dish]; mincemeat pies; flapjacks; snack food products made from cereal flour; snack food products made from rice flour; snack food products made from soya flour; snack foods made from corn; snack foods made from corn and in the form of puffs; snack foods made from corn and in the form of rings; puffed corn snacks; cereal snack foods flavoured with cheese; jiaozi [stuffed dumplings]; caramel coated popcorn with candied nuts; sticky rice cakes (chapsalttock); shrimp dumplings; glutinous pounded rice cake coated with bean powder (injeolmi); cheese curls [snacks]; seaweed flavoured corn chips; corn, roasted; corn chips; vegetable flavoured corn chips; microwave popcorn; caramel coated popcorn; stir-fried rice; candy coated popcorn; puffed cheese balls [corn snacks]; popcorn; ravioli; ravioli [prepared]; rice mixed with vegetables and beef [bibimbap]; rice crisps; prepared rice dishes; rice dumplings; rice dumplings dressed with sweet bean jam (ankoro); rice crackers; rice cakes; rice biscuits; rice salad; rice-based snack food; risotto; rice crackers [senbei]; sesame snacks; snack foods made from wheat; snack food products made from cereal starch; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; cheese flavored puffed corn snacks; extruded wheat snacks; sweet rice with nuts and jujubes (yaksik); tabbouleh; taco chips; tacos; tortilla chips; Korean traditional rice cake [injeolmi]; dry and liquid ready-to-serve meals, mainly consisting of rice; processed unpopped popcorn; boxed lunches consisting of rice, with added meat, fish or vegetables; ready to eat savory snack foods made from maize meal formed by extrusion; prepared meals containing [principally] rice; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack foods consisting principally of extruded cereals; meals consisting primarily of rice; wonton chips; wontons are included in, or at least overlap with, the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested flaky pastry containing ham; crepes; egg pies; pastries consisting of vegetables and fish; fresh pies; spring rolls; frozen pastry stuffed with meat; frozen pastry stuffed with vegetables; millet cakes; pastries consisting of vegetables and meat; pastries consisting of vegetables and poultry; pies; pancakes; savory pastries; samosas; crumble; frozen pastry stuffed with meat and vegetables are included in the broad category of or overlap with the opponent’s pastries, which can be sweet or salty. Therefore, they are identical.

The contested crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; crackers flavoured with cheese; crackers flavoured with spices; prawn crackers; crackers filled with cheese; onion biscuits are included in the broad category of the opponent’s biscuits. Therefore, they are identical.

The contested meals include, as a broader category, or overlap with the opponent’s bakery products. 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 confectionery; chocolate-based ready-to-eat food bars are similar to the opponent’s preparations made from cereals. These goods have the same purpose and are in competition. Furthermore, they have the same distribution channels and are sold in the same outlets. Finally, they have the same relevant public.

The contested chocolate is similar to the opponent’s cocoa. These goods, in addition to having the same nature, have the same distribution channels, are manufactured by the same companies and have the same relevant public.

The contested ice creams, frozen yogurts and sorbets are similar to the opponent’s pastries. These goods are often eaten together (tarte tatin, for example), so they are complementary. They are also in competition, because consumers can choose between them while ordering their desserts. Furthermore, they are sold in the same shops and they target the same relevant public.

The contested burritos; chalupas; cheeseburgers [sandwiches]; chimichanga; enchiladas; fajitas; egg rolls; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; hot sausage and ketchup in cut open bread rolls; hot dog sandwiches; kimchi pancakes (kimchijeon); Korean-style pasta soup [sujebi]; pumpkin porridge (Hobak-juk); steamed buns stuffed with minced meat (niku-manjuh); mung bean pancakes (bindaetteok); nachos; Okonomiyaki [Japanese savory pancakes]; green onion pancake [pajeon]; tamales; tortilla snacks; tortillas; hot dogs (prepared); prepared foodstuffs in the form of sauces are international specialities that are eaten as main courses. They are similar to the opponent’s bakery goods. These goods are not produced by the same producers. Nevertheless, they are either complementary (hamburgers, hot dogs, etc., which require bread) or in competition (or both). Furthermore, they are sold side by side in supermarkets and they target the same public.

The contested prepared savory foodstuffs made from potato flour are similar to the opponent’s preparations made from cereals. These goods have the same purpose and are in competition. Furthermore, they are manufactured by the same undertakings and have the same distribution channels. In addition, they target the same relevant public.

The contested chow mein; chow mein [noodle-based dishes]; prepared meals containing [principally] pasta; pasta containing stuffings; meals consisting primarily of pasta; stir-fried noodles with vegetables (japchae); macaroni with cheese; lasagne: macaroni salad; ready-made dishes containing pasta; noodle-based prepared meals; canned pasta foods; pasta salad; pasta dishes; ramen [Japanese noodle-based dish]; dry and liquid ready-to-serve meals, mainly consisting of pasta; spaghetti and meatballs; canned spaghetti in tomato sauce; pasta-based prepared are similar to a low degree to the opponent’s preparations made from cereals, as these goods can have the same end users and distribution channels. Furthermore, they are in competition.

The contested ice is to be understood as ‘cooling ice’. It has a different nature, purpose and method of use from the opponent’s goods. Furthermore, these goods are not in competition and they are produced by different undertakings. Therefore, they are dissimilar.

The contested sushi is a Japanese dish consisting of small balls or rolls of vinegar-flavoured cold rice served with a garnish of vegetables, egg or raw seafood. It is therefore different from the opponent’s goods. Although these goods are all foodstuffs, they have different natures. They are not complementary. They do not usually have the same distribution channels and are normally manufactured by different kinds of undertakings. Therefore, they are dissimilar.

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 to various degrees are directed at the public at large.

The degree of attention is low, or at most average, given the fact that the goods concerned are relatively cheap goods for everyday consumption.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 contested mark is a figurative mark consisting of a blue incomplete circle containing the word ‘PANDILEO’.

Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33).

In the present case, the verbal element of the contested mark will be understood by at least part of the relevant public as meaning ‘Bread of/from Leo’ because, despite the fact that the Italian word for bread is ‘PANE’, part of the public will still perceive it in the beginning of the mark (‘PAN*’) and will thus interpret the sign as ‘Pan(e) Di Leo’. For some of the contested goods, ‘PAN*’ is therefore weak, while this element has no meaning in relation to other goods. Therefore, it has an average degree of distinctiveness in the latter case.

The words ‘DI LEO’, identically contained in both marks (but in different typefaces), will be understood as meaning ‘of/from Leo’, ‘Leo’ being a very popular Italian given name. As the element ‘DI LEO’ will be understood by the relevant public, the Opposition Division considers that the consumer will break the contested sign down into its elements as described above.

There is no element that can be considered dominant in the contested sign.

The earlier mark is a figurative mark in the shape of a semi-circle. A sequence of orange and red squares is outlined around the central semi-circle. In the middle the words ‘Di Leo’ are depicted in white against a red background. Underneath the semi-circle, against a yellow background, are the words ‘il FORNO dei DESIDERI’. Below ‘il FORNO dei DESIDERI’, there is a figurative element, which might be perceived by some consumers as a stylised bakery peel (i.e. a tool used for sliding baked goods in and out of the oven). ‘Il FORNO dei DESIDERI’ will be understood as ‘the oven of desires’, which is a mere promotional slogan without distinctive character.

As regards the figurative elements of the earlier mark, the sequence of squares has no meaning in relation to the opponent’s goods, but is mostly ornamental in nature, whereas the bakery peel is allusive to the nature of the goods. Therefore, the public will not attribute much trade mark significance to those elements and will immediately understand that the main badge of commercial origin of the goods marketed under this brand are the verbal elements ‘DI LEO’.

Given their size, the words ‘il FORNO del DESIDERI’ are the least eye-catching elements of the sign.

Furthermore, when a mark is composed of verbal and figurative components, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the letters ‘DI LEO’. They are also similar inasmuch as they are both rounded in shape. They differ in their additional verbal elements, namely ‘PAN’ in the contested sign and ‘il FORNO dei DESIDERI’ in the earlier mark. They also differ in their typefaces and in their additional figurative elements and stylisation.

The only distinctive word of the earlier mark is entirely included in the contested sign, where it plays an independent distinctive role, given that the relevant public will break the contested sign down. Therefore, given the weight conveyed by the elements of the signs, they are visually similar to an average degree.

Aurally, the signs coincide in the sound of the element ‘DI LEO’. They differ in the additional element ‘PAN’ in the contested sign.

According to settled case-law, the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Moreover, the General Court has already assessed that only the dominant part of the mark would normally be pronounced by consumers (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Finally, consumers do not tend to pronounce non-distinctive verbal elements (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 44). Therefore, ‘il FORNO dei DESIDERI’ will most likely not be pronounced in the earlier mark.

Therefore, taking into account the above and considering that the initial element of the contested sign is weak, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the different elements of the signs. As regards the element ‘il FORNO dei DESIDERI’, account should be taken of the fact that non-distinctive elements have no influence in the conceptual comparison (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 45). The remaining figurative elements of the signs, as explained above, will not be considered indicators of commercial origin by the consumers.

Therefore, the marks are conceptually similar to at least an average degree, as the coinciding element ‘DI LEO’ conveys the same meaning in both signs and the beginning of the contested sign alludes to the nature of the goods.

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, despite the presence of non-distinctive and weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 conflicting signs are visually similar to an average degree, aurally highly similar and conceptually similar to at least an average degree.

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods. The degree of attention is low, or average at most, given that the goods concerned are cheap goods for everyday consumption.

The importance of certain visual dissimilarities may be diminished by 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). The consumers, in addition, may be prompted to choose goods from the categories in question in response to a television advertisement, for example, or having heard them being spoken about, in which cases the consumers might retain the phonetic impression of the mark in question as well as the visual aspect (04/06/2013, T-514/11, Betwin, EU:T:2013:291, § 74).

Furthermore, account should be taken of the fact that the sole distinctive verbal element of the earlier mark plays an independent distinctive role in the contested sign.

In addition, Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of goods provided under the opponent’s mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Italian trade mark registration No 1 483 159.

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 likelihood of confusion also exists in relation to goods found to be similar to a low degree. As explained above, there is some interdependence between the factors. In the present case, the strong similarity between the signs outweighs the low degree of similarity between some of the goods.

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 the following earlier trade mark:

• Italian trade mark registration No 1 062 823 .

As explained in the ‘Proof of Use’ section of this decision, use in relation to this mark has been demonstrated only for biscuits in Class 30.

Therefore, since, for the purposes of the present opposition, this mark covers a narrower scope of goods than the one already compared, 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.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.