OPPOSITION No B 2 649 856
Chocolates del Principado S.L., C/ Gascona10-3º B, 33001 Oviedo, Asturias, Spain (opponent), represented by Eurokonzern, C/ Orense 6, 3° A-2, 28020 Madrid, Spain (professional representative)
a g a i n s t
Rialto – Industria Alimentar Lda., Zona Industrial da Palhaça, Lote 04, 3770-355 Palhaça, Portugal (applicant), represented by Guimarque Gabinete de Marcas e Patentes LDA, Avenida António José Gomes 60-B 1ºE, 2805-086 Almada, Portugal (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 649 856 is partially upheld, namely for the following contested goods and services:
Class 30: Rusks and croutons; cereal-based snack food; pastries; cookies and wholemeal biscuits; thin breadsticks; croutons; breadcrumbs; preparations made from cereals; bread and pastry.
Class 35: Wholesaling and retailing, via the internet, of foodstuffs, namely dietetic foods, including dietetic rusks, biscuits and snacks, preparations made from flour and gluten, dietary and nutritional supplements, rusks and croutons, cereal-based snack food, dry cakes, biscuits and wholemeal biscuits, thin breadsticks, croutons, breadcrumbs, flour and preparations made from cereals, bread loaves and pastries.
2. European Union trade mark application No 14 627 905 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 627 905. The opposition is based on Spanish trade mark registration No 2 538 104. 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 goods and services
The services on which the opposition is based are the following:
Class 35: Services in retail stores and through global computer networks of pastry, confectionery, bakery and ice cream.
The contested goods and services are the following:
Class 5: Dietary foods, including dietetic rusks, biscuits and snacks; goods derived from flour and gluten, for medical purposes; dietary and nutritional supplements.
Class 30: Rusks and croutons; cereal-based snack food; pastries; cookies and wholemeal biscuits; thin breadsticks; croutons; breadcrumbs; flour and preparations made from cereals; bread and pastry.
Class 35: Advertising and business; Advertising and dissemination of advertising matter for others by all means of advertising broadcasting; Import-export and commercial agencies; Marketing, display and demonstration of goods and services; Sales promotion for third parties; Promotion of goods and services, including via the Internet; Wholesaling and retailing, via the internet, of foodstuffs, namely dietetic foods, including dietetic rusks, biscuits and snacks, preparations made from flour and gluten, dietary and nutritional supplements, rusks and croutons, cereal-based snack food, dry cakes, biscuits and wholemeal biscuits, thin breadsticks, croutons, breadcrumbs, flour and preparations made from cereals, bread loaves and pastries; Dissemination and distribution of advertising matter (pamphlets, prospectuses, printed matter, samples); Publication of publicity texts; Dissemination of advertising matter; Business information and consultancy including via the Internet; Business mediation; Business administration; Professional commercial business consultancy; Advisory services for the organization and the direction of business; Public relations services; Marketing services; Tele-marketing; Merchandising; Studies and research relating to new markets; Opinion polling; Information relating to sales statistics, for others; Organisation of exhibitions and trade fairs for commercial and advertising purposes.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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 5
The contested dietary foods, including dietetic rusks, biscuits and snacks; goods derived from flour and gluten, for medical purposes; dietary and nutritional supplements are dissimilar to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery and ice cream. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services (also those rendered through global computer networks) consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical because dietetic food is for specific purposes and is not identical to foodstuff eaten on a daily basis.
Contested goods in Class 30
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping (including retail through global computer networks), catalogue or mail order services in Class 35.
The contested rusks and croutons; cereal-based snack food; pastries; cookies and wholemeal biscuits; thin breadsticks; croutons; breadcrumbs; preparations made from cereals; bread and pastry are various types of pastry, confectionery and bakery that are subject to retail services of the opponent’s mark. The contested goods are included in, or overlap with, those broad categories of products. Therefore, the contested goods are identical to pastry, confectionery and bakery.
In view of the above, the contested rusks and croutons; cereal-based snack food; pastries; cookies and wholemeal biscuits; thin breadsticks; croutons; breadcrumbs; preparations made from cereals; bread and pastry are similar to a low degree to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery.
With regard to the rest of the contested goods, namely flour, they are not identical with pastry, confectionery, bakery and ice cream.
In this respect it should be noted that retail services of specific goods, when compared with dissimilar or similar goods, are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar.
Therefore, the contested flour is dissimilar to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery and ice cream.
As explained above the same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as internet shopping (including retail through global computer networks) in Class 35.
Contested services in Class 35
The contested advertising and business; advertising and dissemination of advertising matter for others by all means of advertising broadcasting; import-export and commercial agencies; marketing, display and demonstration of goods and services; sales promotion for third parties; promotion of goods and services, including via the Internet; dissemination and distribution of advertising matter (pamphlets, prospectuses, printed matter, samples); publication of publicity texts; dissemination of advertising matter; business information and consultancy including via the Internet; business mediation; business administration; professional commercial business consultancy; advisory services for the organization and the direction of business; public relations services; marketing services; tele-marketing; merchandising; studies and research relating to new markets; opinion polling; information relating to sales statistics, for others; organisation of exhibitions and trade fairs for commercial and advertising purposes are dissimilar to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery and ice cream. Their purpose, distribution channels and providers are different. In addition, they are not in competition.
Retail services (also those rendered through global computer networks) consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop.
By contrast the contested services are services to support other businesses which relate principally to advertising and promotion and business management and administration. They consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity, or intend to help companies manage their business by setting out the strategy and/or direction of the company. These services do not relate to the actual retail or wholesale of the goods; they would be rather preparatory or ancillary to the commercialisation of such goods.
The contested retailing, via the internet, of foodstuffs, namely dietetic foods, including dietetic rusks, biscuits and snacks, preparations made from flour and gluten, dietary and nutritional supplements, rusks and croutons, cereal-based snack food, dry cakes, biscuits and wholemeal biscuits, thin breadsticks, croutons, breadcrumbs, flour and preparations made from cereals, bread loaves and pastries are identical, or at least highly similar, to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery.
The contested wholesaling, via the internet, of foodstuffs, namely dietetic foods, including dietetic rusks, biscuits and snacks, preparations made from flour and gluten, dietary and nutritional supplements , rusks and croutons, cereal-based snack food, dry cakes, biscuits and wholemeal biscuits, thin breadsticks, croutons, breadcrumbs, flour and preparations made from cereals, bread loaves and pastries are similar, to the opponent’s services in retail stores and through global computer networks of pastry, confectionery, bakery. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.
- 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 or similar (to various degrees) are directed at the public at large.
The degree of attention is considered to be average.
- The signs
|
Earlier trade mark |
Contested sign |
The relevant territory is Spain.
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 earlier mark is a figurative mark containing a figurative element in red which depicts the letter ‘R’ and two verbal elements ‘CONFITERIA’ and ‘Rialto’, the latter being represented in a stylised manner. The word ‘Rialto’ is placed centrally, and above it there is the word ‘CONFITERIA’. The letter ‘R’ is depicted on the left against the first letter of the word ‘Rialto’.
The contested sign is a figurative mark consisting of the word ‘rialto’, depicted in a slightly stylised manner. In addition, it contains a coloured figurative element representing a stylised flower with five petals.
The word ‘CONFITERIA’ of the earlier mark will be understood in Spanish as ‘confectionery store’ (‘establecimiento en el que se elaboran y se venden dulces de muy variados tipos y pasteles o tortas’, information extracted from Español Oxford Living Dictionaries on 19/05/2017 at www.es.oxforddictionaries.com/definicion/confiteria). Bearing in mind that the relevant goods and services are generally ‘bakery products and confectionery’ and ‘retail services related to bakery products and confectionery’, this element is non-distinctive for these goods and services. The word ‘RIALTO’, present in both signs, can be associated by at least part of the relevant public with the most famous marble bridge spanning the Grand Canal in Venice. As it has no relation to the relevant goods and services, even with regard to those who will understand this word as explained above, it has a normal degree of distinctiveness. The letter ‘R’ of the earlier sign has no meaning and therefore it is normally distinctive. In respect to the figurative element of the contested sign depicting a flower, it has a normal degree of distinctiveness, as it has no relation to the relevant goods and services.
The Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public who will associate the word ‘RIALTO’ with the bridge spanning the Grand Canal in Venice.
The verbal element ‘Rialto’ in the earlier mark is the most distinctive and dominant element as it is the most eye-catching and overshadows other elements due to its size and central position.
The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements. However, 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). Therefore, the word ‘Rialto’ will have stronger impact on the consumer than the figurative element.
Visually, the signs coincide in ‘Rialto’ (although it is depicted in a figurative manner, the letters remain clearly identifiable in both marks) which is distinctive. However, they differ in additional verbal elements, that is, the letter ‘R’ and the word ‘CONFITERIA’, present in the earlier mark. In addition, the contested sign contains of the aforesaid figurative element (i.e. depiction of a flower) which is also distinctive.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RIALTO’, present identically in both signs, which is distinctive. The pronunciation differs in the sound of the letters ‛R’, if pronounced, and ‛CONFITERIA’ of the earlier mark, the latter being non-distinctive.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, namely meaning of the word ‘RIALTO’, present in both signs. As explained above the word ‘CONFITERIA’ is non-distinctive for the relevant goods and services. The flower will be perceived as such and does not affect the meaning of the contested sign. The letter ‘R’ of the earlier mark is of normal distinctiveness. As both signs will be perceived as ‘the most famous marble bridge spanning the Grand Canal in Venice’, the signs are conceptually similar to a high degree.
- 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods and services are identical, similar (to various degrees) and dissimilar, whereas the conflicting marks have an average degree of visual similarity and a high degree of aural and conceptual similarity. The relevant public, as explained above, will have an average degree of attention. In addition, the distinctiveness of the earlier marks is average.
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).
There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects. The whole verbal element of the earlier mark, which is its most dominant and distinctive element (i.e. ‛RIALTO’), is the only one verbal element of the contested sign.
The applicant argues that the word ‘RIALTO’ is part of its commercial name. This argument has to be set aside as the comparison of the signs in question should focus on the earlier mark as registered and the contested sign as applied for.
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 Spanish trade mark registration No 2 538 104.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark.
The rest of the contested goods and services 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
| Jessica LEWIS | Michal KRUK | Judit NÉMETH |
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.