OPPOSITION No B 2 687 724

Proceli Turull S.L., Josep Tapiolas,96, 08226 Terrassa (Barcelona), Spain (opponent), represented by J.D. Nunez Patentes y Marcas S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Lesaffre et Compagnie, 41 rue Etienne Marcel, 75001 Paris, France (applicant), represented by Cabinet Lavoix, 62 rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 724 is partially upheld, namely for the following contested goods:

Class 30:        Yeast and yeast extracts for use for fermentation media, micro-organism culture media or culture media for the production of biotechnology goods.

2.        European Union trade mark application No 14 940 738 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 940 738. The opposition is based on, inter alia, European Union trade mark registration No 12 720 959. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 720 959.

1. The goods and services

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

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

Class 35:        Advertising; business management; business administration; office functions; employment of personnel, personnel management; organisation of events, exhibitions, trade fairs and shows for commercial, promotional and advertising purposes; retailing and wholesaling of all kinds of gluten-free foodstuffs, including sale via the Internet and global computer networks.

Class 39:        Transport, packaging, storage and distribution of all kinds of gluten-free foodstuffs.

The contested goods are the following:

Class 1:        Peptones for use as raw materials for the fermentation industry; peptones for use for fermentation media, microorganism culture media or culture media for the production of biotechnology goods; Yeast and yeast extracts for use as raw materials for the fermentation industry.

Class 30:        Yeast and yeast extracts for use for fermentation media, micro-organism culture media or culture media for the production of biotechnology goods.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 1

Generally speaking, goods in Class 1 are products for use in industry or other general applications. The contested goods in Class 1 are substances related to foodstuffs or beverages. Their primary purpose is to conserve comestible products. These chemical substances are usually used in an industrial setting to preserve foodstuff as opposed to the goods in Class 30 which are an integral ingredient in the foodstuff itself.

In most cases, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (judgment of 13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49- 51). According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (judgment of 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

The contested goods are different to the opponent’s goods in Class 30 since they do not share the same purpose, are not manufactured by the same companies and are not addressed at the same relevant public.

Therefore, the goods are dissimilar.

The contested goods in Class 1 are even further away from the opponent’s services in Classes 35 and 39. By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. They do not share the same nature or distribution channels. Furthermore they are not complementary or in competition with each other. Therefore they are dissimilar.

Contested goods in Class 30

The contested yeast and yeast extracts for use for fermentation media, micro-organism culture media or culture media for the production of biotechnology goods are included in the broad category of the opponent’s yeast. Therefore, they are identical. Contrary to the applicant’s opinion the yeast in the opponent’s registration includes as a broader category any type of yeast in Class 30 which includes all the goods the applicant has applied for in that class.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed both at the public at large and a professional public. The degree of attention may vary from average to high, depending on the specialised nature of the goods, yeast for the fermentation industry. The applicant’s goods are also goods that can be used by the public at large such as yeast for home brewers. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	PROCELYS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public because it understands the meaning of the verbal elements ‘Para toda la familia’ (for the entire family), ‘ALIMENTACIÓN’(nutrition) and ‘SIN GLUTEN’ (without gluten) within the earlier mark.

The opponent’s mark is a figurative mark consisting of diagonal written text in four lanes. From the top the text ‘Para toda la Familia’ written in red on a white background, followed by the word ‘Proceli’ written in white on a red background and written in a much larger font than the rest of the text, followed by the word ‘ALIMENTACIÓN’ in red on a white background and lastly the words ‘SIN GLUTEN’ in white on a red background.

The contested sign is the word mark ‘PROCELYS’. In the case of word marks, it is the word that is protected, not its written form.

The verbal elements ‘Para toda la familia’ (for the entire family), ‘ALIMENTACIÓN’ (nutrition) and ‘SIN GLUTEN’ (without gluten) within the earlier mark are all terms that are non-distinctive for the goods in question. ‘Nutrition’ or ‘without gluten’ just describe a desired quality and ‘for the whole family’ is a laudatory slogan. The figurative element will be seen as a decoration, like a banner and will have low distinctive impact. The verbal element ‘PROCELI’ on the other hand has no meaning for the relevant public and is therefore distinctive. The word ‘PROCELI’ is also, due to its size and prominent placing, the dominant element of the earlier mark.

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).

Visually, the signs coincide in the element ‘PROCEL*’ which is the first six letters of the contested sign and also the first six letters of the dominant and distinctive part of the earlier sign. However, they differ in the elements ‘*I’ of the earlier mark and the ‘*YS’ of the contested sign at the end of the element ‘PROCEL*’. They also differ in that the earlier mark is a figurative mark that also includes the non-distinctive elements ‘Para toda la familia’, ‘ALIMENTACIÓN’ and ‘SIN GLUTEN’.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /PRO/CEL/ present first in the contested sign and in a dominant position in the earlier mark. The pronunciation differs in the last letter ‘S’ f the contested sign, since the letters ‘I’ and ‘Y’ is pronounced identically in Spanish. They also differ in the non-distinctive letters ‘Para toda la familia’, ‘ALIMENTACIÓN’ and ‘SIN GLUTEN’ which have no counterparts in the contested sign.

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

Conceptually, although the public in the relevant territory will perceive the meaning of part of the earlier mark, as explained above, these parts are non-distinctive and will have no impact on the concept. The distinctive part of the earlier mark and the contested sign has no meaning in that territory. Since none of the signs will be associated with any meaning, other than a non-distinctive meaning, the signs are not conceptually similar.

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

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical and partly dissimilar. The signs are visually and aurally similar to an at least average degree.

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).

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).

Taking into account the at least average degree of similarity between the signs, the normal degree of distinctiveness of the earlier trade mark and the fact that the goods are partly identical and the degree of attention is average for at least a part of the relevant public, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is partly upheld. Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 720 959. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

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

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

• European trade mark registration No 4 574 976

• European trade mark registration No 9 781 329

Since these marks cover the same or a narrower scope of goods and services, 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

Tobias KLEE

Magnus ABRAMSSON

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.