OPPOSITION No B 2 116 153

Kellogg Company, One Kellogg Square P.O. Box 3599, Battle Creek, Michigan 49016-3599, United States of America, (opponent), represented by Heuking Kühn Lüer Wojtek – Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Neuer Wall 63, 20354 Hamburg,  Germany (professional representative)

a g a i n s t

HFP SA, ul. Magazynowa 5, Bielany Wrocławskie, 55-040 Kobierzyce, Poland, (applicant), represented by Sulima Grabowska Sierzputowska Biuro Patentów i Znaków Towarowych sp. j., IO-1 Building, ul. Puławska 182, 02-670 Warszawa, Poland (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 116 153 is partially upheld, namely for the following contested goods:

Class 29:   Fruit based snacks and chips, dried fruit based snacks, dehydrated fruit based snacks, corn based snacks other than confectionery, candied fruit based snacks, bars (other than confectionary) and snacks based on fruit, nuts or seeds, bars (other than confectionary) and snacks based on organic fruit, nuts or seeds, vegetable based snacks and chips, including organic vegetable based snacks and chips, soya based snacks, potato based snacks, potato chips, low fat potato chips.

Class 30:   Preparations made of flour, cereal products, puffed rice, bread, crisp bread, light bread, extruded bread, coextruded bread, bread for hamburgers, bakery products, cereal waffles, rice waffles; cereals based snacks and chips, puffed wheat and other types of puffed cereals, cereal crisps, corn crisps; confectionery, confectionery containing rice, confectionery containing corn, cakes, biscuits, muesli containing rice, candies, chocolate, candy bars, ice cream,  waffles; pita bread, pies and  dumplings, pizza.  

2.        European Union trade mark application No 11 103 595 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

Preliminary Remarks

Earlier mark European Union trade mark registration No 2 083 855, ‘POPS’ invoked as basis of the opposition, has been cancelled in its entirety and can therefore not be used as basis for the opposition.

European Union trade mark registration No 1 406 016 ‘CORN POPS’, has been cancelled partially.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 103 595. The opposition is based on European Union trade mark registrations No 849 620, ‘POP-TARTS’, No 111 062, ‘COCO-POPS’, No 1 406 016 ‘CORN POPS’ and German trade mark registration No W 59 506 (new register No DD 650 680), ‘CORN POPS’. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

For reasons of procedural economy, the Opposition Division will first deal with the proof of use for the following trade marks: European Union trade mark registrations No 849 620, ‘POP-TARTS’, No 111 062, ‘COCO-POPS’, and German trade mark registration No W 59 506 (new register No DD 650 680), ‘CORN POPS’.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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

The contested application was published on 26/09/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union, from 26/09/2007 to 25/09/2012 inclusive.

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

European Union trade mark registration No  849 620

Class 30:        Pastries, all containing fillings, all adapted for coking in a toaster; tarts              and pies.

European Union trade mark registration No  111 062 

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

German trade mark registration No W 59 506

Class 30: Tea, cocoa, sugar, rice, tapioca, sago, coffee surrogates; Cereal products for human consumption, in particular made from wheat, corn, rice and oats in the form of flakes, semolina, groats, bran, unclosed, roasted and extruded grains, also sweetende, spiced, vitaminized or flavoured; food preparations made from the aforementioned cereal products, in particular breakfast foods, nibbling articles, cereal bars and muesli bars, also mixed with dried fruits and nuts, bakery products, in particular bread, biscuits, cakes; confectionary; ices, honey, treacle, yeast, baking powder, salt for food, mustard, vinegar, sauces (except for salad dressings), spices.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 23/09/2013, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/11/2013 to submit evidence of use of the earlier trade marks. After prolongation and within the time limit, the opponent submitted evidence of use on 28/01/2014.

Concerning the parts of the proof of use which are not in the language of the proceedings (24 to 25 in Italian and 29 – 31 in French), the Opposition Division underlines that according to Rule 22(6) EUTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office.

It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties. Given that the content of this mainly promotional and marketing short documentation, presented in power point slides and with some English titles, consists of the presentation of new marketing initiatives, the Office assumes that the main content can be understood and that a translation was therefore not required.  

The evidence to be taken into account is the following:

• Affidavit: In an affidavit of 28/01/2014, Mr. Markus Dreißigacker, manager of Legal and Corporate Affairs of Kellog Germany GmbH, declared that the trade marks POP-TARTS and COCO-POPS had been used for many years in the United Kingdom, referring especially to the years from 2007 until 2012 where over 12 million units of items of POP-TARTRS and about 200 million units of COCO-POPS were sold. He explains that the trade marks POP-TARTS and COCO-POPS were always printed on the package of the products, and presents examples of packages of COCO-POPS in exhibit 19. He declares that about 40 million Euros had been spent for advertising and promoting the mark COCO-POPS in the years from 2007 to 2012 in the United Kingdom and refers as well to marketing measures in Italy (exhibits 24, 25 and 26). Furthermore he encloses copies of exemplary invoices for the sale of POP-TARTS and COCO-POPS products in the years 2007 to 2012.

• Concerning the German trade mark ‘CORN POPS’, Mr.  Dreißigacker explains that it had been used in Germany for many years for cereal products, mostly in packages of 25g that were offered and sold along with other 25g packages as a mixed assortment under the brand ‘Kellog’s Vartiety’. He submits one example per year of packaging’s in exhibits 16 and 17. The turnover achieved in Germany was according to him from the years 2007 to 2010 about 9 million Euros.

• Referring to the trade mark COCO-POPS, he further declares that this mark had been used extensively in the relevant years in Italy as well and refers to sales of a volume of about 33 million Euros in these years. He explains that the trade mark COCO-POPS were always printed on the package of the products, and presents examples of packages in exhibit 23.

• In exhibit 21, several pictures of the packing of the product (in different flavours) are submitted, always showing the trade mark POP-TARTS printed in the top centre of the packaging.

• Invoices: In exhibits 20 and 22, the opponent presents a collection of samples of invoices for POP-TARTS and COCO-POPS to customers in the United Kingdom, starting in 2007 and all the following years until 2012. The invoices show the signs, the units sold, and the amount invoiced.

• In exhibits 27 the opponent presents a collection of samples of invoices to customers in Italy, starting in 2007 and all the following years until 2012. The invoices show the sign, the units sold, and the amount invoiced.

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The invoices show that the place of use is the United Kingdom and Italy. This can be inferred from the language of the documents (English and Italian), and some addresses in the United Kingdom and Italy. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely the affidavit and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Concerning European Union trade mark registration No 849 620, ‘POP-TARTS’:

The evidence shows that the mark has been used as registered for all the goods for which the mark is registered. The goods pastries, all containing fillings, all adapted for coking in a toaster for which use is proven, fall at the same time under the broad categories of tarts and pies. The goods ‘tarts, pastries and pies’ are often used like synonyms and differences if any between the use of the names pastries, tarts or pies for certain products are very subtle. Hence, these products do not constitute a category that is sufficiently broad enough for it to be necessary to identify them within sub-categories in which actual use had specifically to be proven. Rather, it must be held that it is not possible to make significant subdivisions within that category of goods. Therefore the Opposition Division considers that the use of the sign for pastries is proven and is sufficient to proof use of all the goods for which the sign is registered.

Furthermore, according to the relevant case law, it is considered that the use in the United Kingdom or even in London and its immediate surroundings may be geographically sufficient (see judgment of 15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57 and judgment of 30/01/2015, T-278/13, EU:T:2015:57).  

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).

Concerning European Union trade mark registration No 111 062, ‘COCO-POPS:

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove 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 mark for all the goods covered by the earlier trade mark.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 30:        Preparations made from cereals

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.

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

Concerning German trade mark registration No W59506 (new register No DD 650 680), ‘CORN POPS’:

As already mentioned, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The remaining evidence concerning this earlier right consists of two copies of packaging, one used until 2009, and the other after 2009 onwards. These two documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Not one single invoice was submitted, and neither any other supporting documentation in order to confirm the allegations made in the affidavit. Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark. It follows that this earlier right cannot serve as a basis for the present opposition.

1. The goods

For reasons of procedural economy, the Opposition Division will deal first with earlier European Union trade mark registration No 849 620, ‘POP-TARTS’:

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

Class 30: Pastries, all containing fillings, all adapted for cooking in a toaster; tarts and pies.

The contested goods are the following:

Class  29: Meat and meat products, poultry, fish, tinned meat, tinned fish; preserved, dried and cooked fruit and vegetables; jellies, jams, compotes; milk and milk products, yoghurts, kefir, milk beverages, cheese, dairy products; edible oils and fats, margarine; fruit based snacks and chips, dried fruit based snacks, dehydrated fruit based snacks, corn based snacks other than confectionery, candied fruit based snacks, bars (other than confectionary) and snacks based on fruit, nuts or seeds, bars (other than confectionary) and snacks based on organic fruit, nuts or seeds, vegetable based snacks and chips, including organic vegetable based snacks and chips, soya based snacks, potato based snacks, potato chips, low fat potato chips; hamburgers, french fries. 

Class 30: Coffee, tea, cocoa; sugar, salt; flour and preparations made of flour, cereal products, groats and barley, rice, puffed rice, bread, crisp bread, light bread, extruded bread, coextruded bread, bread for hamburgers, bakery products, cereal waffles, rice waffles; cereals based snacks and chips, puffed wheat and other types of puffed cereals, cereal crisps, corn crisps; confectionery, confectionery containing rice, confectionery containing corn, cakes, biscuits, muesli containing rice, candies, chocolate, candy bars, ice cream, waffles; casseroles, pita bread, pies and dumplings, pizza, sauces, rice-based sauces, condiments, mayonnaise, mustard.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes, fresh fruit and vegetables, seeds, natural plants and flowers, malt.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

It should be clarified from the outset that the mere fact that the goods to be compared are foodstuffs is not necessarily sufficient to conclude for similarity. The same holds true if one basic ingredient is used for the manufacture of another foodstuff as this fact is generally not sufficient in itself to show that the goods are similar and this is especially the case if such use is optional and not indispensable (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). It is true, that the end users of both the opponent’s and the applicant’s goods are the same, namely the general public, however this fact alone is not sufficent to render them similar.

Contested goods in Class 29

The contested fruit based snacks and chips, dried fruit based snacks, dehydrated fruit based snacks, corn based snacks other than confectionery, candied fruit based snacks, bars (other than confectionary) and snacks based on fruit, nuts or seeds, bars (other than confectionary) and snacks based on organic fruit, nuts or seeds, vegetable based snacks and chips, including organic vegetable based snacks and chips, soya based snacks, potato based snacks, potato chips, low fat potato chips are considered similar to the opponent’s pastries, all containing fillings, all adapted for cooking in a toaster; tarts and pies. The goods can have the same distribution channels and can be in competition with each other, as they can easily be substitutes for consumers who just want to eat something quickly. The producers can be the same, and the relevant public can be composed of the same people as well.

The contested meat and meat products, poultry, fish, tinned meat, tinned fish; hamburgers are dissimilar to pastries, all containing fillings, all adapted for coking in a toaster; tarts and pies as their nature is different, and also their commercial origin. Furthermore they are not substitutes to each other and the distribution channels will be different as well.

The contested preserved, dried and cooked fruit and vegetables; french fries are dissimilar to pastries, all containing fillings, all adapted for cooking in a toaster; tarts and pies as their nature is different, and also their commercial origin. Furthermore, they differ in distribution channels and are not in competition with each other.

The contested jellies, jams, compotes can be the fillings of pastries, tarts and pies. However, this fact does not make these goods similar to pastries, all containing fillings, all adapted for cooking in a toaster; tarts and  pies, as their nature is different, and also their commercial origin. Furthermore, they differ in distribution channels and are not in competition with each other. Therefore these goods are dissimilar.

The contested milk and milk products, yoghurts, kefir, milk beverages, cheese, dairy products; edible oils and fats, margarine are dissimilar to the goods protected by the earlier trade mark in class 30. They have different nature and are not in competition with each other. Furthermore they are not substitutes to each other and the distribution channels will be different as well.

Contested goods in Class 30

The contested pies and cakes are identically contained in both lists of goods (including synonyms).  Therefore, they are identical.

The contested preparations made of flour, cereal products, puffed rice, bread, crisp bread, light bread, extruded bread, coextruded bread, bread for hamburgers, bakery products, cereal waffle, rice waffles; cereals based snacks and chips, puffed wheat and other types of puffed cereals, cereal crisps, corn crisps, waffles; pita bread, dumplings, pizza are considered similar to the opponents goods pastries, all containing fillings, all adapted for cooking in a toaster; tarts and pies, as they all contain flour made of cereals as main ingredient and have therefore the same origin and nature, they are used for the same purpose and targeted at the same consumers. Furthermore, they can coincide in producers and distribution channels. Hence these goods are similar.

The contested confectionery, confectionery containing rice, confectionery containing corn, biscuits, muesli containing rice, candies, chocolate, candy bars, ice cream are various sweet foodstuffs, that mainly serve as desserts or snacks. These goods are similar to the opponent’s pastries, all containing fillings, all adapted for coking in a toaster; tarts and pies as they can have the same nature, purpose, method of use, distribution channels, usual origin and relevant public.

The contested coffee, tea, cocoa; sugar, salt; flour, groats and barley, rice, are dissimilar to the goods covered by the earlier right as they have a different nature and origin. Furthermore, they differ in producer and distribution channels and are not in competition with each other.

The contested casseroles, sauces, rice-based sauces, condiments, mayonnaise, mustard have different nature, purpose and method of use as the opponent’s goods. They come from also from different producers. Those goods are as well found in different sections in supermarkets. Therefore they are dissimilar.

Contested goods in Class 31

The contested agricultural, horticultural and forestry products and grains not included in other classes, fresh fruit and vegetables, seeds, natural plants and flowers, malt have no link with the opponent’s pastries, all containing fillings, all adapted for cooking in a toaster; tarts and pies. The opponent’s goods serve different needs. The origin, purpose and method of use of these goods are different. They do not have the same distribution channels and they are not in competition. 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 are directed at the public at large. The degree of attention is considered to be low, as the goods are cheap ones which can be consumed daily without paying much attention.

3. The signs

POP-TARTS
Earlier trade mark	Contested sign

The relevant territory is 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 common element ‘POP’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian -speaking part of the public.

The earlier mark is a word mark, ‘POP-TARTS’.

The contested sign is a figurative mark composed of the verbal elements ‘POP, COOL’ and ‘SNACK’, written below each other and depicted in black lower and upper case letters whereby the middle word ‘COOL’ is depicted in slightly bigger letters. The verbal elements are not presented horizontally but seem to be slightly curved from left to right. The letter ‘O’ of the verbal element ‘POP’ shows in its middle a small white star which however does not influence that the relevant public clearly identifies the letter ‘O’.

The element ‘POP’ present in both signs has no meaning for the relevant public and is, therefore, distinctive.

The element ‘TARTS’ of the earlier mark will not be understood by the relevant public and is therefore distinctive.

The element ‘COOL’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The verbal element ‘SNACK’ for which the applicant does not claim protection, is a generic term for snack food in the European Union (see decision of 26/05/2016, ‘The Snack Company’, ECLI:EU:T:2016:323) and it is reasonable to assume that the element ’SNACK‘ will be perceived also by the relevant Hungarian public as referring to a snack bar, a place where standard, quick food is served, or food eaten between meals or in place of a meal. Bearing in mind that some of the relevant goods are snacks, or crisps or pies or cake, which are popular snacks, and they are offered in snack bars, it is considered that this element is generic and non-distinctive for these goods. The relevant public understands the meaning of that element and will not pay as much attention to this element as to the other distinctive elements of the marks.

As regards the contested sign, it is composed of distinctive verbal elements and a figurative element of a more decorative nature (the star within the letter ‘o’).

It is true that the star does not convey any meaning in relation to the goods covered by the contested sign. However, its role in the overall impression given by the contested sign is very limited, because consumers are likely to perceive it as a decorative element used to attract attention to the verbal elements in the sign. In itself, it will not be perceived as a badge of commercial origin and, therefore, it lacks any distinctive character. The slightly curved writing of the contested sign does not influence the capacity of the relevant public to clearly identify the verbal elements.

Therefore, the verbal elements are more distinctive than the figurative element.

The contested sign has no elements that could be considered clearly more dominant than other elements. Even if the word element ‘COOL’ might be depicted in a somewhat bigger lettering, the element ‘POP’ is equally visually eye-catching as it is placed on the top of the sign.

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).

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, and from the top to the bottom, which makes the part placed at the left and on the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their first word, namely ‘POP’, which has a normal degree of distinctiveness. The small decorative element of a star will not influence the perception of the letter ‘O’ contained in ‘POP’. However, they differ in their second word ‘TARTS’ in the earlier mark, and ‘COOL’ as well as the non-distinctive element ‘SNACK’ and the decorative and non-distinctive element of a star in the contested sign. They also differ in that the contested sign is a figurative mark.

Therefore, as the signs coincide in their beginning they are considered to be similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive first word, ‛POP’, present identically in both signs. The pronunciation differs in the word ‘TARTS’ of the earlier mark and the words ‘COOL SNACK’ in the contested sign. ‘SNACK’ however is a generic term and the impact of this element is therefore limited, as this word not only appears in the third position, but is also non-distinctive.

Therefore, the signs are aurally similar to an average degree.

Conceptually, as mentioned above, the relevant public will perceive the word the signs have in common, ‘POP’, as meaningless as well as the words ‘TARTS’ and ‘COOL’. ‘SNACK’ is non-distinctive for the relevant public as well as the figurative element of a small white star.

Neither of the signs has a meaning for the 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.

Although ‘SNACK’ will evoke a concept, it is not sufficient to establish any conceptual influence, as this element is non-distinctive and cannot indicate the commercial origin of a  mark resp. the products, as neither does the little white star.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a 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 (see, to that effect, 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 has been concluded above, the goods are partly identical, partly similar and partly dissimilar. They target the general public whose attention is considered to be low. The marks in dispute are visually and aurally similar to an average degree to the extent that they coincide in the verbal element ‘POP’, which appears at the beginning of the marks, where it will catch the primary attention of the consumer. The marks differ in their second words, ‘TARTS’ in the earlier mark and ‘COOL’ in the contested sign, as well as in the verbal non-distinctive element ‘SNACK’ and the figurative elements of the contested sign.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

It should be borne in mind that, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

In addition, the visual similarity between signs may also have an increased importance where the goods are ordinary consumer products (e.g. goods in Classes 29 and 30) that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. This is applicable to the current scenario bearing in mind that the figurative elements of the contested sign merely are decorative (the curved writing and the star) and non-distinctive.

Considering all the above, and in particular taking into account the coincidences between the first elements of the marks, there is a likelihood of confusion on the part of the relevant, namely the Hungarian-speaking public. Consumers could easily believe that the contested sign is a sub-brand of the earlier right. 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 849 620. It follows that the contested trade mark must be rejected for the contested identical and similar 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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The applicant refers to previous decisions of the Office to support its arguments. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 1 406 016 for the word mark ‘CORN POPS’
• European Union trade mark registration No 111 062 for the word mark ‘COCO-POPS’.

As those European Union trade mark registrations 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. For the same reasons, the proof of use regarding European Union trade mark registration No 1 406 016 ‘CORN POPS’ had not to be examined.  

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 shall 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

Magnus ABRAMSSON

Karin KLÜPFEL

Sigrid DICKMANNS

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.