OPPOSITION No B 2 683 871

Ismail Aktitiz, Robert-Geritzmann-Höfe 21, 45883 Gelsenkirchen, Germany (opponent), represented by Schneiders & Behrendt, Huestr. 23, 44787 Bochum, Germany (professional representative)

a g a i n s t

United Sugar Company, P.O. Box 23023, Jeddah 21426, Saudi Arabia (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street Walthamstow, London E17 9AP, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 683 871 is upheld for all the contested goods, namely: 

Class 29: Milk; milk products; desserts made from milk products.

2.        European Union trade mark application No 14 778 633 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 778 633 namely against some of the goods in Class 29. The opposition is based on European Union trade mark registration No 2 951 770. 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

The goods on which the opposition is based are, inter alia, the following:

Class 29: Preserved, dried and cooked fruits and vegetables; eggs, milk and milk products, in particular cheese and sheep's milk cheese; edible oils and fats.

The contested goods are the following:

Class 29: Milk; milk products; desserts made from milk products.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested milk; milk products are identically contained in both lists of goods.

The contested desserts made from milk products are included in the broad category of the opponent’s milk products. Therefore, they are identical.

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 at the public at large. The degree of attention is considered to be average.

3. The signs

Safak
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 earlier mark is a word mark consisting of the verbal element ‘Safak’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or a combination of those.

The contested sign is a figurative mark consisting of the verbal element ‘Safaa’ written in a relatively standard red title case letters. Above this element are several red characters in a foreign language of Arabic origin. Although part of the public might read it as ‘cloid’, the rest of the public will not read it but will perceive it as Arabic characters with no meaning.

In any event, none of the verbal elements composing the signs have any meaning, or any relevant meaning, in the relevant territory and therefore, they are all distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will consider the first element of the contested sign as a figurative element composed of Arabic characters.

Since consumers will refer to the contested sign as ‘SAFAA’, the signs visually and aurally, coincide in the letters ‘SAFA’, and in their corresponding sounds. The signs have the same rhythm and intonation since they will both be pronounced in two syllables, ‘SA/FAA’ vs ‘SA/FAK’, and since the same vowel is placed at the same place in both signs. Nevertheless, the signs differ in the letter ‘K’ placed at the end of the earlier trade mark and in the double letter ‘A’ placed at the end of the contested sign as well and in their sounds. The signs also differ in the element placed in the first row of the contested sign which will be given the role of a figurative element and in the red colour that have no counterpart in the earlier mark.

Account is taken of the fact that 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).

Consequently, the signs are visually similar to an average degree and aurally similar to a high degree.

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.

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.

5. Global assessment, other arguments and conclusion

According to settled case-law, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

In the present case, as already mentioned, the element depicted in the first row of the contested sign will be perceived as a foreign word of Arabic origin and consumers will therefore not use it to refer to the sign. Instead, they will focus on the second element of the contested sign which is the one they will be able to read and pronounce. Consequently, the differences already established between the signs are not considered sufficient to overcome the similarities existing especially in relation to identical goods.

Indeed, 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).

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.

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 European Union trade mark registration No 2 951 770. It follows that the contested trade mark must be rejected for all the contested 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.

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

Sandra IBAÑEZ

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.