OPPOSITION No B 2 681 651
Copesco & Sefrisa, S.A., Calle Edison, 11-15, Poligono Ca. N’Estella, 08635 Sant Esteve Sesrovires (Barcelona), Spain (opponent), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)
a g a i n s t
Petrossian S.A., 18 Boulevard de Latour-Maubourg, 75007 Paris, France (applicant), represented by Areopage, 1 bis rue de Pongerville, 92000 Nanterre, France (professional representative).
On 15/03/2017, the Opposition Division takes the following
1. Opposition No B 2 681 651 is upheld for all the contested goods.
2. European Union trade mark application No 14 913 172 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 913 172. The opposition is based on, inter alia, Spanish trade mark registration No 2 918 762(1). The opponent invoked Article 8(1)(b) and 8(5) 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 Spanish trade mark registration No 2 918 762(1).
- The goods
The goods on which the opposition is based are the following:
Class 29: Fresh, smoked, frozen, pickled, dry, salted and preserved fishes; smoked and vacuum packed fish fillets; preserved fish roe, fish croquettes and pastes; crustaceans, packed fish fillets; preserved fish roe, fish croquettes and pastes; crustaceans, seafoods and molluscs; caviar.
Class 31: Fresh fish eggs and seaweed for human.
The contested goods are the following:
Class 29: Caviar; crustaceans, not live; fish; smoked fish; salted fish; cooked dishes based on fish or crustaceans; tarama; fish eggs, prepared or preserved; preserved fish or crustaceans.
Caviar; smoked fish; salted fish and preserved fish are identically contained in both lists of goods.
The contested crustaceans, not live, preserved crustaceans and cooked dishes based on crustaceans are included in the broad category of the opponent’s crustaceans. Therefore, they are identical.
The contested fish includes, as a broader category, the opponent’s fresh, smoked, frozen, pickled, dry, salted and preserved fishes. 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 cooked dishes based on fish; tarama; fish eggs, prepared or preserved are included in the broad category of the opponent’s preserved fishes. Therefore, they are identical.
- 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 at the public at large.
The degree of attention may vary from average to lower than average (in the case of foodstuffs for daily consumption) or to higher than average, as is the case for caviar, which can be a very expensive product.
- The signs
Earlier trade mark
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 composed of the verbal element ‘ROYAL’ in slightly stylised black upper case letters on an oval white background, which is outlined in black. The figurative element, consisting of a black crown, is placed above the letters ‘OYA’ of the verbal element.
The contested word mark is composed of two elements, ‘ROYAL’ and ‘KING’.
Although it cannot be excluded that a part of the relevant public will understand the meaning of the word ‘ROYAL’, in principle it lacks any meaning in Spanish. For Spanish-speaking consumers, the equivalent term is ‘real’, which does not resemble the English term very closely and, therefore, ‘ROYAL’ will be perceived as a foreign term (26/06/2013, R 214/2012-1, Royal Kitchen/ROYAL et al.). Therefore, the element ‘ROYAL’, present in both marks, has no meaning for the relevant public and is, therefore, distinctive. The same applies to the verbal element ‘KING’ of the contested mark, which has no meaning for the relevant public and is, therefore, distinctive. The figurative element will be perceived as a crown and could be associated with something for kings and princes and, therefore, it is considered to be weak for all the contested goods.
The element ‘ROYAL’ in the earlier sign is the dominant element, as it is the most eye-catching.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the marks are similar to the extent that they contain the verbal element ‘ROYAL’. However, they differ in typeface of the word ‘ROYAL’, the figurative elements of the earlier mark and the verbal element ‘KING’ of the contested 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the verbal element /ROYAL/, present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the verbal element ‘KING’ of the contested mark, which has no counterpart in the earlier mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the earlier mark, as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any 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.
- 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, despite the presence of a weak element as described in section c).
- Global assessment, other arguments and conclusion
The goods are identical and target the public at large with a degree of attention that may vary from average to lower than average or to higher than average for some goods, such as caviar.
From the point of view of the relevant public, the signs have been found visually and aurally similar, inasmuch as they share the verbal element ‘ROYAL’, which is the only verbal element and the most dominant element of the earlier mark. The signs differ in the additional verbal element, ‘KING’, of the contested sign and in the stylisation and figurative elements of the earlier sign; the depiction of the crown is found weak for all the relevant goods.
As mentioned above, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. Therefore, the identity of the verbal element, ‘ROYAL’, of the marks at issue should be taken into account when assessing the likelihood of confusion between the marks.
In addition, account should be 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.
The fact that the verbal element of the earlier mark is entirely included in the contested sign and has an independent distinctive role in its composition may lead the public to believe that the goods at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32).
Moreover, the Court has set out the essential principle that 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 the 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).
In the present case, the identity between the goods offsets any lesser degree of similarity between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 918 762(1). It follows that the contested trade mark must be rejected for all the contested goods.
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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier Spanish trade mark registration No 2 918 762(1) 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Cristina CRESPO MOLTO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.