OPPOSITION No B 2 720 657

Van Crombruggen, naamloze vennootschap, Nijverheidsstraat 100, 2160 Wommelgem, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

P.P.H. Primart Marek Łukasiewicz, osoba fizyczna prowadząca działalność gospodarczą, Szosa Jadowska 70, 05-200 Wołomin-Duczki, Poland (applicant).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 657 is upheld for all the contested goods.

2.        European Union trade mark application No 14 994 503 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 994 503, . The opposition is based on, inter alia, European Union trade mark registration No 3 900 495, . 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 3 90 04 95.

1. The goods

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

Class 30:        Individually wrapped chocolate sweets and biscuits intended for use with tea or coffee.

The contested goods are the following:

Class 30:        Pastries, cakes, tarts and biscuits (cookies).

The applicant has attached some documents with the intention of showing that the parties operate in different sectors of the food industry and sell different types of products. The Opposition Division notes that the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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.

The contested biscuits (cookies) include, as a broader category, the opponent’s individually wrapped chocolate biscuits intended for use with tea or coffee. 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 pastries, cakes, tarts can have the same or a similar nature as the opponent’s individually wrapped chocolate sweets and biscuits intended for use with tea or coffee, which are sweets and biscuits that can be consumed as, for example, desserts or snacks. Therefore, the conflicting goods can have the same purpose and method of use; they may coincide in distribution channels, origin and relevant publics. Bearing this in mind, these goods are deemed similar.

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 average.  

3. The signs

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.

The verbal elements of the signs will be perceived as meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part the signs are more similar overall.  

The earlier mark is a figurative mark. The sign’s verbal element ‘Rose’ and its figurative depiction of a rose will be perceived as the sign’s dominant elements. Moreover, the word element ‘Rose’ is preceded by the English undefined article ‘a’ (both rendered in black against white), placed below the figurative rose. These elements are all placed within an oval shaped logo, which is a banal geometric shape; therefore, weak. Beneath the logo, the words ‘”FOR QUALITY”’ are rendered in an arched-shaped upper case (standard) black font.

The public under analysis will perceive ‘Rose’ as being the only distinctive verbal element of the earlier mark, since no link or connection can be found between a rose and the relevant goods. As mentioned above, the letter ‘a’ (placed before ‘Rose’) will by the public taken into account be perceived as the undefined article in English and, consequently, as an element of limited distinctive character. The verbal elements ‘”FOR QUALITY”’ are simply stating that the actual products are ‘of a good/great quality’ and is altogether a non-distinctive element in the sign. Finally, the sign’s figurative depiction of a rose is distinctive but will be perceived as referring to the verbal element ‘Rose’ (sharing the same concepts).  

The contested sign is a three dimensional mark, shaped as a hexagon, and appears as the packaging of the goods in question (e.g. the packaging of cookies or biscuits). Therefore, the sign’s three dimensional shape is of weak distinctiveness. The word element ‘ROSE’, rendered twice in red upper case, is a distinctive element in the sign (as explained above). Nevertheless, the remaining elements of the contested sign are non-distinctive. The word elements ‘de coco’ (placed below ‘ROSE’ and a photographic image of a cookie/biscuit twice in the sign) will be perceived as ‘(of) coconut flavour’ by the public. Although the Spanish/French preposition ‘de’ may not be understood by all English-speaking consumers, ‘coco’ will be understood as referring to the flavour of the products. The fact that the contested sign contains a photographic depiction of a coconut also leads to this conclusion. The combination of the words ‘PREMIUM BISCUITS’ will be understood as non-distinctive altogether: ‘PREMIUM’ is commonly used as laudatory and weak for supreme quality, while ‘BISCUITS’ is denoting the goods. Finally, the photographical depictions of the biscuits/cookies (placed below ‘ROSE’ and on the side of the hexagon shaped packaging) refer directly to the goods and are non-distinctive elements.

Bearing this in mind, ‘ROSE’ is the dominant and distinctive element(s) in the contested sign.

Visually, the signs coincide in the distinctive element ‘ROSE’. They differ in verbal elements that are either weak or non-distinctive: the undefined English article is weak while ‘”FOR QUALITY”’, ‘de coco’ and ‘PREMIUM BISCUITS’  are all non-distinctive elements, as described above. Therefore, these verbal elements have considerably less impact on the visual comparison of the signs. This also applies to the signs’ figurative elements, with the exception of the distinctive and figurative rose in the earlier mark. However, consumers generally tend to focus on the word elements of signs 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 signs are visually similar to an average degree.

Aurally, the contested sign is likely to be pronounced as ‘ROSE’ due to the remaining verbal elements of the sign being non-distinctive, while the earlier mark is likely to be pronounced as ‘a Rose’ since ‘”FOR QUALITY”’ (non-distinctive) is unlikely to be pronounced in the sign. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both marks will be perceived as containing the distinctive concept of a ‘rose’. The public under analysis will perceive the conceptual difference between ‘a Rose’ (with an article) or ‘ROSE’ (without an article) as marginal. The article ‘a’ is also of less distinctive character per se (as explained above) and has little impact on the comparison of the signs. Moreover, the differing concepts ‘for quality’, ‘(of) coconut’ and ‘premium biscuits’ are non-distinctive and do not have any influence on the comparison of the signs.

The figurative rose in the earlier mark (although distinctive) is likely to be perceived as reinforcing the same concept as conveyed by the sign’s word element ‘Rose’ and the remaining figurative elements of the signs are weak and/or non-distinctive; the oval shaped logo of the earlier mark and the three dimensional packaging of the contested sign are of weak distinctiveness, while the photographic images in the contested sign (showing the goods’ nature and flavour) are non-distinctive.

Bearing this in mind, the signs are conceptually highly similar overall.

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 taken into account. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak and non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are partly identical and partly similar. The signs are visually similar to an average degree and aurally highly similar. Moreover, they are conceptually highly similar for the public under analysis and the earlier mark is distinctive. The degree of attention of the relevant public is average and 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 90 04 95. 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 therefore follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Christian RUUD

Frédérique SULPICE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.