OPPOSITION No B 2 659 038

Pragon s.r.o., Imrychova 883, 143 00, Prague 4, Czech Republic (opponent), represented by Propatent – Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Prague 4, Czech Republic (professional representative)

a g a i n s t

N.N.T., Grand'Place (L) 34, 7860 Lessines, Belgium (holder), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 659 038 is partially upheld, namely for the following contested goods and services:

Class 30:        Coffee, tea, cocoa and artificial coffee; liquids and beverages based on chocolate; liquids and beverages based on coffee; liquids and beverages based on cocoa; liquids and beverages based on tea; preparations made from cereals; glucose for culinary use; baking dough; bread, pastry and confectionery products; sugar confectionery; chocolate; pralines; biscuits, cookies; candy; sugar, honey, golden syrup; caramels; condiments based on fruit sauces; spices; seasonings; preserved garden herbs; aromatic preparations for food; edible capsules containing the aforesaid ingredients; fillings consisting of the aforesaid ingredients for edible capsules.

Class 35:        Advertising; business management; business administration; office functions; retail sale or wholesale services for food products, excluding fruit, vegetables and fresh garden herbs; import-export of foodstuffs, excluding fruit, vegetables and fresh garden herbs. 

Class 43:        Services for providing food and drink; food and drink catering.

2.        International registration No 1 260 343 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 260 343. The opposition is based on Czech trade mark registration No 339 675. 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 and services

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

Class 30:        Tea, coffee, cocoa, honey, bread, bakery products of all kinds, products made of legumes, food essences, spices, candies, herbal teas not for medical purposes.

Class 32:        Soft drinks which belong to this class, drinks made of herbs, not for medical purposes, ion drinks, protein, dietary, energy, gelatinous and mineral water, syrups, vegetable and fruit juices, beer.

Class 33:        Alcoholic beverages.

Class 35:        Marketing and marketing studies, import and export of products mentioned in classes 3, 5, 30 and 32, advertising, promotion, business mediation with products mentioned in classes 5, 30 and 32, exhibitions and competitions for commercial and advertising purposes, surveys and market analysis, assistance and advisory in the field of business management, business management.

The contested goods and services are the following:

Class 30:        Coffee, tea, cocoa and artificial coffee; liquids and beverages based on chocolate; liquids and beverages based on coffee; liquids and beverages based on cocoa; liquids and beverages based on tea; rice; tapioca and sago; semolina; flour and preparations made from cereals; glucose for culinary use; gluten prepared as foodstuff; starch for food; farina for food; baking dough; pasta; bread, pastry and confectionery products; sugar confectionery; chocolate; pralines; biscuits, cookies; candy; ices for food; frozen yogurt; custard; sugar, honey, golden syrup; caramels; yeast, baking powder; condiments based on fruit sauces; spices; seasonings; preserved garden herbs; aromatic preparations for food; edible capsules containing the aforesaid ingredients; fillings consisting of the aforesaid ingredients for edible capsules.

Class 35:        Advertising; business management; business administration; office functions; retail sale or wholesale services for food products, excluding fruit, vegetables and fresh garden herbs; import-export of foodstuffs, excluding fruit, vegetables and fresh garden herbs. 

Class 43:        Services for providing food and drink; food and drink catering.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

Contested goods in Class 30

Coffee, tea, cocoa, candy, honey, spices, bread are identically contained in both lists of goods.

The contested edible capsules containing coffee, tea, cocoa, candy, honey, spices, bread; fillings consisting of coffee, tea, cocoa, candy, honey, spices, bread for edible capsules are identical to the opponent’s coffee, tea, cocoa, candy, honey, spices, bread. The goods are identical; the way the goods are sold is specified in the contested good. The same goes for the below mentioned capsules and capsule fillings.

The contested liquids and beverages based on chocolate; liquids and beverages based on cocoa; edible capsules containing liquids and beverages based on chocolate or cocoa; fillings consisting of liquids and beverages based on chocolate or cocoa for edible capsules are identical to the opponent’s cocoa.

The contested liquids and beverages based on coffee; edible capsules containing liquids and beverages based on coffee; fillings consisting of liquids and beverages based on coffee for edible capsules are identical to the opponent’s coffee.

The contested liquids and beverages based on tea; edible capsules containing liquids and beverages based on tea; fillings consisting of liquids and beverages based on tea for edible capsules are identical to the opponent’s tea.

Confectionery is divided into two broad and somewhat overlapping categories, bakers' confections and sugar confections.The contested pastry and confectionery products; sugar confectionery; biscuits, cookies are included in or overlap with the broad category of the opponent’s bakery products of all kinds. Therefore, they are identical. The contested edible capsules containing pastry and confectionery products, sugar confectionery, biscuits, cookies; fillings consisting of pastry and confectionery products, sugar confectionery, biscuits, cookies for edible capsules are likewise identical to the opponent’s bakery products of all kinds.

The contested chocolate, pralines, caramels; edible capsules containing chocolate, pralines, caramels; fillings consisting of chocolate, pralines, caramels for edible capsules are included in the broad category of the opponent’s candies. Therefore, they are identical.

The contested aromatic preparations for food; edible capsules containing aromatic preparations for food; fillings consisting of aromatic preparations for food for edible capsules include as a broader category or overlap with the opponent’s food essences. 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 preparations made from cereals; edible capsules containing preparations made from cereals; fillings consisting of preparations made from cereals for edible capsules include, as a broader category the opponent’s bread. 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 seasonings; edible capsules containing seasonings; fillings consisting of seasonings for edible capsules include as a broader category the opponent’s spices. 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 artificial coffee; edible capsules containing artificial coffee; fillings consisting of artificial coffee for edible capsules is similar to a high degree to the opponent’s coffee. These goods are in competition and the method of use and distribution channels may coincide. They are directed at the same relevant public and often come from the same producer.

The contested preserved garden herbs; edible capsules containing preserved garden herbs; fillings consisting of preserved garden herbs for edible capsules are highly similar to the opponent’s spices. Herbs come from the leafy and green part of the plant. Spices are parts of the plant other than the leafy bit such as the root, stem, bulb, bark or seeds. Both are used for seasoning food and coincide in purpose, relevant public and usual origin. They are competitive goods.

The contested sugar; edible capsules containing sugar; fillings consisting of sugar for edible capsules is similar to the opponent’s honey. These goods are in competition as both are used to sweeten. They may coincide in relevant public and distribution channels.

The contested condiments based on fruit sauces; edible capsules containing condiments based on fruit sauces; fillings consisting of condiments based on fruit sauces for edible capsules are similar to the opponent’s spices as they can coincide in producer, end user and distribution channels. They are used to add flavour to food.

The contested baking dough; edible capsules containing baking dough; fillings consisting of baking dough for edible capsules is similar to the opponent’s bread. The purpose, relevant public and providers may coincide.

The contested golden syrup; edible capsules containing golden syrup; fillings consisting of golden syrup for edible capsules is similar to a low degree to the opponent’s honey. These products are used to sweeten and may be considered competitive. They may coincide in relevant public and distribution channels.

The contested glucose for culinary use; edible capsules containing glucose for culinary use; fillings consisting of glucose for culinary use for edible capsules is similar to the opponent’s honey. They have a similar nature as they can be used to sweeten. These goods may be considered to be competitive. They may coincide in relevant public and distribution channels.

The contested rice; tapioca and sago; semolina; flour; gluten prepared as foodstuff; starch for food; farina for food; pasta; ices for food; frozen yogurt; custard; yeast, baking powder; edible capsules containing the aforesaid ingredients; fillings consisting of the aforesaid ingredients for edible capsules are dissimilar to all the opponent’s goods. They have a different nature. They are neither complementary nor are they in competition and do not normally coincide in usual origin.

Contested services in Class 35

Advertising; business management are identically contained in both lists of goods.

The contested import-export of foodstuffs, excluding fruit, vegetables and fresh garden herbs includes as a broader category the opponent’s import and export of products mentioned in classes 30 and 32. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

As a general rule, it can be said that business administration services are performed in order to organise and run a business, whereas business management follows a higher approach aimed at setting the common goals and the strategic plan for a commercial enterprise. The contested business administration is similar to the opponent’s business management. The purpose of the services, the relevant public and the provider may coincide.  

The contested retail sale or wholesale services for food products, excluding fruit, vegetables and fresh garden herbs are similar to a low degree to the opponent’s tea, coffee, cocoa, honey, bread in Class 30. Retail (and wholesale) services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The contested office functions are similar to a low degree to the opponent’s business management. The purpose of the services, the relevant public and the provider may coincide.  

Contested services in Class 43

The contested services for providing food and drink; food and drink catering are similar to a low degree to the opponent’s tea; coffee; bread in Class 30. These are complementary goods that may coincide in the provider and in distribution channels.

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 and services found to be identical and similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high. In particular the business services in Class 35 may have a significant effect on the success of the business and therefore the degree of attention for these services would be high.

3. The signs

PRAGON	PRALON
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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).

Conceptually, 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.

Visually and aurally, the two word marks coincide in ‘PRA-ON’, the first three letters and last two letters of 6 letter words. They differ in the fourth letter of the signs; ‘G’ in the earlier trademark and ‘L’ in the contested sign. The rhythm and intonation are very similar.

Therefore, the signs are visually and aurally highly similar.

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 and services 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 CTMR). 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 marks may be offset by a lower degree of similarity between the goods, 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 and services have been found to be identical, similar to varying degrees and dissimilar. The signs are highly similar aurally and visually, the conceptual aspect having no impact on this high level of similarity. The level of attention of the relevant consumer varies from average to high depending on the goods and services in question. The earlier mark has a normal level of distinctive character.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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

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. Given the high level of aural and visual similarity between the signs and the lack of any conceptual meaning that might differentiate them, it is considered likely that the relevant public, even those with a  level of attention, confuses the marks at issue.  

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 Czech trade mark registration.

It follows from the above, and in particular given the high degree of similarity between the signs, that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Swetlana BRAUN

Lynn BURTCHAELL

Martin EBERL

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.