OPPOSITION DIVISION
OPPOSITION No B 2 738 907
S.C. Sano Vita S.R.L., Str. Industriei, Nr. 89, Comuna Păusesti – Măglasi, Jud.
Vâlcea, Sat Ulmetel, Romania (opponent), represented by Anna Nicoleta Costache
Demes, Str. Constantin Lacea nr. 12-14, biroul 2, 500112 Braşov, Romania
(professional representative)
a g a i n s t
Carioca Food S.r.l., Viale Europa No. 22 Ospedalicchio, 06083 Perugia, Italy
(applicant), represented by Studio Legale Boni Caforio Bonucci Grano, Via
Galeazzo Alessi, No. 31, 06122 Perugia, Italy (professional representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 738 907 is upheld for all the contested goods.
2. European Union trade mark application No 15 497 639 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 497 639. The opposition is based on, inter alia, Romanian trade
mark registration No 111 151. 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
Decision on Opposition No B 2 738 907 page: 2 of 8
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 Romanian trade mark registration No 111 151.
a) The goods
The goods and services on which the opposition is based are, inter alia, the
following:
Class 29: Meat, fish, poultry and game; meat extracts, fruits and vegetables,
dried and cooked; jellies, jams, compotes; eggs, milk and milk
products, edible oils and fats.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking powder, salt, mustard, vinegar, sauces
(condiments), spices, ice.
The contested goods are the following:
Class 29: Dried fruit; Processed nuts; Ground nuts; Preserved nuts; Candied
nuts; Blanched nuts; Dried nuts; Nut toppings; Dried fruit mixes; Dried
fruit products; Mincemeat made from fruits; Dried fruit-based snacks;
Nut-based snack foods; Snack mixes consisting of dehydrated fruit
and processed nuts; Coated peanuts; Roasted peanuts; Peanuts,
prepared; Peanut paste; Peanut butter; Peanut oil [for food]; Peanut
milk for culinary purposes; Prepared pistachio; Hazelnuts, prepared;
Roasted nuts; Spiced nuts; Salted nuts; Edible nuts; Shelled nuts;
Prepared walnuts; Flavored nuts; Nut oils; Pastes made from nuts;
Butter made of nuts; Processed betel nuts; Organic nut and seed-
based snack bars; Nut and seed-based snack bars; Nut-based food
bars; Mixtures of fruit and nuts; Coconut, desiccated; Dried lentils;
Broad beans; Beans, preserved; Processed chickpeas; Hummus
[chickpea paste]; Peas, processed; Peas, preserved; Green split-peas;
Marrowfat peas; Yellow split peas; Split peas; Almonds, ground;
Processed almonds; Olives stuffed with almonds; Olives stuffed with
red peppers and almonds; Edible seeds; Seeds, prepared; Edible
sunflower seeds; Lentils, preserved.
Class 30: Nut flours; Almond pastries; Flour; Enriched farina [meal]; Mixed flour
for food; Bean meal; Farina [meal]; Flour mixes; Pulse flour for food;
Dough flour.
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 29
Decision on Opposition No B 2 738 907 page: 3 of 8
The contested Dried fruit; Processed nuts; Ground nuts; Preserved nuts; Candied
nuts; Blanched nuts; Dried nuts; Nut toppings; Dried fruit mixes; Dried fruit products;
Mincemeat made from fruits; Dried fruit-based snacks; Nut-based snack foods;
Snack mixes consisting of dehydrated fruit and processed nuts; Coated peanuts;
Roasted peanuts; Peanuts, prepared; Prepared pistachio; Hazelnuts, prepared;
Roasted nuts; Spiced nuts; Salted nuts; Edible nuts; Shelled nuts; Prepared walnuts;
Flavored nuts; Processed betel nuts; Mixtures of fruit and nuts; Coconut, desiccated;
Dried lentils; Broad beans; Beans, preserved; Processed chickpeas; Peas,
processed; Peas, preserved; Green split-peas; Marrowfat peas; Yellow split peas;
Split peas; Almonds, ground; Processed almonds; Edible seeds; Seeds, prepared;
Edible sunflower seeds; Lentils, preserved are either similar to a high degree to the
opponent’s fruits and vegetables, dried and cooked because they coincide in some of
the criteria specified above such as nature, purpose, method of use, distribution
channels and end users or identical because they are included in or overlap with
these opponent’s goods.
The contested peanut butter; peanut oil [for food]; nut oils; butter made of nuts are
included in the broad category of the opponent’s edible oils and fats. The goods are
identical.
The contested peanut milk for culinary purposes is included in the opponent’s broad
category of milk products. The goods are identical.
The contested peanut paste; pastes made from nuts; hummus [chickpea paste] are
similar to a high degree to the opponent’s edible oils and fats, as they have a very
similar nature and coincide further in producer, distribution channels and end users.
Furthermore, they may substitute each other.
The contested olives stuffed with almonds; olives stuffed with red peppers and
almonds are similar to the opponent’s cooked fruits and vegetables, as they can
coincide in producer, purpose, distribution channels and end users.
The contested organic nut and seed-based snack bars; Nut and seed-based snack
bars; Nut-based food bars are similar to the opponent’s dried fruits as they can
coincide in purpose, distribution channels and end users.
Contested goods in Class 30
Flour is listed in both specifications in exactly the same terms. The goods are
identical.
The contested nut flours; enriched farina [meal]; mixed flour for food; bean meal;
farina [meal]; flour mixes; pulse flour for food; dough flour are included in the broad
category of the opponent’s flour and preparations made from cereals. The goods are
identical.
The contested almond pastries are included in the opponent’s broad category of
pastries. The goods are identical.
b) 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
Decision on Opposition No B 2 738 907 page: 4 of 8
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 to various degrees are
directed at the public at large. The degree of attention may vary from lower than
average to average since the goods at hand are cheap, everyday consumers goods
(foodstuffs).
c) The signs
Earlier trade mark Contested sign
The relevant territory is Romania.
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).
Both signs are figurative marks representing combinations of verbal and figurative
elements on circular white and black backgrounds respectively.
The earlier mark comprises the verbal elements ‘Sano’ and ‘Vita’ which even though
written together next to each other without a space will be perceived by the relevant
consumer as separate components because of the different nuance of green in which
they are represented and also because of the capitalised letter ‘V’ of the verbal
element ‘Vita’. Beneath the verbal elements there is a design composed of several
curves which might be perceived as a stylised presentation of a valley, fields or hills.
The contested sign comprises the verbal elements ‘SANA’ and ‘VITAE’ represented in
upper case letters and placed one above the other. The intersection between the
horizontal line and the top of the letter ‘A’ is filled in white and the letter ‘E’ goes
slightly outside of the black circle. In top left position of the composition of the sign
there is a stylised presentation of a twig with two leafs.
The verbal elements ‘Sano’ and ‘SANA’ are of Latin origin and do exist in Romanian
as such, first as a prefix referring to health (Explanatory Dictionary of the Romanian
Language) and second as a synonymous for the verbs to heal, to cure (Romanian
Synonymous Dictionary). They may also allude to the Romanian word ‘sănătate’
(health) or ‘sănătos’ (healthy) also because of the ortographic similarity between
‘Sano’ and ‘SANA’ and the Romanian words mentioned above. This allusion or the
above meanings do not neccessarily render the verbal elements ‘Sano’ and ‘SANA’
weak in relation to the relevant goods.
Decision on Opposition No B 2 738 907 page: 5 of 8
The word ‘Vita’ means in Romanian ‘beef’ which in relation to the relevant goods is of
average distinctiveness. However, for the same reasons explained in the previous
paragraph it is likely that the relevant consumer perceives the verbal element as
refering to ‘life’ (‘viaţă’) especially because of some expressison existing in Romanian
(and imported from Italian) as DOLCE VITA. The distinctiveness of this element in
relation to the relevant goods is normal. The verbal element ‘VITAE’ of the contested
sign is likely to be perceived in the same way.
As meaningful expressions the combinations of the verbal elements in both marks
will be associated with ’healthy life’ – a rather laudatory expression in relation to the
goods in conflict to which lower than average degree of distinctiveness is to be
attributed.
Both marks have no elements that could be considered clearly more dominant than
other elements.
It is also to be noted 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). Therefore, the figurative elements of
both marks as described above have a weaker impact on the consumer.
Visually, the signs share the letters ‘SAN*VITA(*)’. In addition some similarities
between the signs are to be attributed also to their overall circular shape and to the
fact that in both of them two verbal components are to be identified, even though in
the earlier mark they are placed next to each other while in the contested sign they
are placed one above the other. The signs differ in the letter ‘o’ of the verbal element
‘Sano’ of the earlier mark versus the letter ‘A’ of the verbal element ‘SANA’ of the
contested sign, as well as in the last letter ‘E’ of the verbal element ‘VITAE’ of the
contested sign which does not have a counterpart in the earlier mark. In relation to
the latter it is nevertheless to be noted that it goes slightly outside of the circular
frame and its visual perception is to some extent impeded. The signs differ further in
the stylisation of the letters and the figurative elements as described above, including
the colours. Bearing in mind all these considerations, the signs are similar to an
average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SAN’ and
‘VITA’, present identically in both signs. The pronunciation differs in the sound of the
letters /O/ of the earlier versus /A/ of the contested sign and also in the sound of the
letter /E/ of the contested sign which has no counterpart in the earlier mark.
Therefore, the signs are highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs are likely to be associated with
‘healthy life’, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 738 907 page: 6 of 8
d) 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, even though the degree of distinctiveness of the expression ‘SanoVita’ as
such has been considered lower than average since it has a laudatory notion.
Nevertheless, the average distinctiveness of the earlier mark as a whole is defined
also by the additional figurative elements and the particular way in which they are
combined, which renders the degree of distinctiveness of the earlier mark normal.
e) Global assessment, other arguments and conclusion
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.
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).
The goods are identical or similar at least to an average degree. The signs are
visually and conceptually similar and aurally similar to a high degree. The degree of
attention of the relevant consumers (the public at large) varies from lower than
average to average. The inherent distinctiveness of the earlier mark is normal.
Bearing in mind the above principles, in particular the principle of imperfect
recollection and the findings of the Opposition Division in relation to the
similarity/identity of the goods and the signs there is a likelihood of confusion on
behalf of the Romanian public. The differences between the signs confined mainly to
the figurative elements are not enough to safely exclude the likelihood of confusion
between them.
In its observations, the applicant argues that the earlier trade mark has a low
distinctive character given that many trade marks include the verbal elements ‘Sano’
or ‘Sana’ and ‘Vita’/’Vitae’. In support of its argument the applicant refers to several
trade mark registrations in various Member States and in the European Union.
Decision on Opposition No B 2 738 907 page: 7 of 8
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include the elements ‘Sano’ or ‘Sana’
and ‘Vita’/’Vitae’. Under these circumstances, the applicant’s claims must be set
aside.
Therefore, the opposition is well founded on the basis of the opponent’s Romanian
trade mark registration No 111 151. 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 marks, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use 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 right Romanian trade mark registration No 111 151 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).
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Ioana MOISESCU Plamen IVANOV Judit NÉMETH
Decision on Opposition No B 2 738 907 page: 8 of 8
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.