OPPOSITION No B 2 686 882

Cleca S.p.A., Viale Dante Alighieri 30, 46010 S. Martino Dell’argine (MN), Italy (opponent), represented by Bugnion S.p.A., Largo Michele Novaro, 1/A, 43121 Parma, Italy (professional representative)

a g a i n s t

Sant Martino s.r.o., Cukrovarská 26, 07501 Trebišov, Slovakia (applicant), represented by Ivan Belička, Švermova 21, 974 04 Banská Bystrica, Slovakia (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 686 882 is partially upheld, namely for the following contested goods:

Class 30: Candy; high-protein cereal bars; cereal bars and energy bars.

Class 32: Energy drinks; mineral water [beverages]; flavoured mineral water; non-alcoholic beverages; concentrates for use in the preparation of soft drinks; carbonated non-alcoholic drinks; flavoured carbonated beverages; still water; non-carbonated soft drinks; flavoured waters; preparations for making beverages; waters.

2.        European Union trade mark application No 14 988 208 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 988 208, namely against all the goods in Classes 29, 30 and 32. The opposition is based on, inter alia, Italian trade mark registration No 1 378 491. 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 Italian trade mark registration No 1 378 491.

1. The goods

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

Class 29:         Broths, bouillons tight, preparation for making soup; dice meat and vegetable nuts; prepared purées and creams; jellies for food, edible jellies; milk drinks in milk predominating.

Class 30:         Prepared for cakes and pies; sweet, powder for cakes; puddings in envelope; prepared pudding, panna cotta, crème caramel, vanilla cream, creme brulee, creme brulee (listed twice), tiramisu; prepared for hot chocolate; prepared for pizza; cous cous; yeast, baking powder; starch for food; vanillin (vanilla substitute); vanilla flavor; flavorings other than essential oils; flavorings for cakes, other than essential oils; flavorings for beverages, except essential oils; aromatic compounds for food; starch for food; icing sugar for sweet, caramelized sugar; natural sweeteners; cocoa; cocoa-based beverages, coffee, chocolate, tea.

Class 32:         Preparations for making beverages; syrups for beverages; essences for the preparation of beverages; non-alcoholic drinks.

The contested goods are the following:

Class 29:         Edible nuts; processed nuts; edible oils; oils and fats; cooking oils; nut oils; palm oil for food; colza oil for food; olive oil; linseed oils [edible]; sunflower oil for food; coconut oil; sesame oil; corn oil.

Class 30:         Candy; high-protein cereal bars; cereal bars and energy bars.

Class 32:         Energy drinks; mineral water [beverages]; flavoured mineral water; non-alcoholic beverages; concentrates for use in the preparation of soft drinks; carbonated non-alcoholic drinks; flavoured carbonated beverages; still water; non-carbonated soft drinks; flavoured waters; preparations for making beverages; waters.

An interpretation of the wording of the opponent’s list of goods listed above is required to determine the scope of protection of these goods. Some terms used above, for instance bouillons tight, dice meat and vegetable nuts in Class 29 or prepared for cakes and pies, puddings in envelope in Class 30, are inaccurate English translations of Italian terms in the list of goods in the registration certificate submitted by the opponent with the translation on 20/04/2016. Therefore, the following terms in the opponent’s list of goods should be rather read as:

Class 29: soups (consommés) (brodi ristretti) instead of bouillons tight; meat stock cubes and vegetable stock cubes (dadi di carne e dadi vegetali) instead of dice meat and vegetable nuts; milk beverages, milk predominating (bevande al latte, nelle quali predomina il latte) instead of milk drinks in milk predominating;

Class 30: preparations for cakes and pies (preparati per dolci e torte) instead of prepared for cakes and pies; sweets, cake powder (dolci, polvere per dolci) instead of sweet, powder for cakes; instant puddings (budini in busta) instead of puddings in envelope; preparations for puddings, panna cotta, crème caramel, vanilla cream, burnt cream (crème brûlée) listed twice, custard, tiramisu (preparati per budino, panna cotta, crème caramel, crema vaniglia, crema catalana, crema pasticcera, tiramisu) instead of prepared pudding, panna cotta, crème caramel, vanilla cream, creme brulee, listed twice, tiramisu; preparations for hot chocolate (preparati per cioccolata in tazza) instead of prepared for hot chocolate; preparations for pizza (preparati per pizza) instead of prepared for pizza; couscous (couscous) instead of cous cous; vanilla flavourings (aroma vaniglia) instead of vanilla flavour; aromatic preparations for food (composti aromatici per uso alimentare) instead of aromatic compounds for food; icing sugar for desserts (zucchero a velo per dolci) instead of icing sugar for sweet;

Class 32: non-alcoholic beverages (bevande non alcooliche) instead of non-alcoholic drinks.

Therefore, all terms indicated above will be treated as equivalents of the original goods listed in the registration certificate of Italian trade mark No 1 378 491, and the remaining terms are taken into consideration as indicated by the opponent accordingly.

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 29

The contested edible nuts; processed nuts; edible oils; oils and fats; cooking oils; nut oils; palm oil for food; colza oil for food; olive oil; linseed oils [edible]; sunflower oil for food; coconut oil; sesame oil; corn oil and the opponent’s goods in Classes 29, 30 and 32 differ in their natures, purposes and methods of use. These goods usually originate from different food producers and are expected to be sold in different sections in supermarkets. Moreover, they are not complementary to or in competition with each other. For all these reasons, they are considered dissimilar.

Contested goods in Class 30

The contested candy overlaps with the opponent’s chocolate. Therefore, they are identical.

The contested high-protein cereal bars; cereal bars and energy bars and the opponent’s chocolate are all sweet snacks and thus have the same purposes. Consumers will expect the contested goods to be sold in the same sections of supermarkets and to originate from the same food producers as the opponent’s goods. Moreover, these goods target the same public, which will perceive these goods as being in competition with each other, since high-protein cereal bars; cereal bars and energy bars are often healthier alternatives to traditional sweets such as chocolate. Therefore, they are considered similar.

Contested goods in Class 32

Non-alcoholic beverages and preparations for making beverages are identically contained in both lists of goods.

The contested energy drinks; mineral water [beverages]; flavoured mineral water; carbonated non-alcoholic drinks; flavoured carbonated beverages; still water; non-carbonated soft drinks; flavoured waters; preparations for making beverages; waters are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested concentrates for use in the preparation of soft drinks are included in the opponent’s broad category of preparations for making beverages. Therefore, they are considered 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 or similar are directed at the general public.

The degree of attention is deemed to be average.

3. The signs

S.MARTINO
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 element ‘MARTINO’, which the earlier mark and the contested sign have in common, is an Italian masculine given name, which can also serve as a surname. In both marks the element ‘MARTINO’ is preceded by another element: in the earlier mark by the letter ‘S.’, which is commonly perceived by the Italian public as an abbreviation of ‘San(to)’, meaning ‘Saint’ (information extracted from Collins Italian-English Dictionary, online edition at https://www.collinsdictionary.com/dictionary/italian-english/s-); and in the contested sign by the word ‘SANT’, which would be seen by the vast majority of the Italian-speaking public as referring to the word ‘San(to)’, meaning ‘Saint’. Consequently, it is considered that in both marks consumers will see the combination ‘San Martino’ (‘Saint Martin’ in English).

As none of the word elements mentioned above is descriptive, allusive or otherwise weak for the relevant goods, they are all distinctive.

The contested sign is a figurative mark containing a device in the form of the outline of a ribbon with folded ends, on which is placed the lettering ‘SANT MARTINO’ in stylised upper case letters.

The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements. The earlier mark has no elements that could be considered more distinctive than other elements.

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).

Visually, the signs coincide in the word ‘MARTINO’, which is the second word element of the contested sign and is identically contained in the earlier mark. Apart from this, the signs only coincide in the letter ‘S’, which is at the beginning of the first word element of the contested sign, ‘SANT’, and, together with the dot (‘S.’), stands for the word ‘San’ in the earlier mark. Therefore, the signs differ in the string of letters ‘*ANT’ of the word ‘SANT’ in the contested sign and the dot ‘.’ in the earlier mark. Moreover, the signs differ in the ribbon device included in the contested sign.

Therefore, the signs are deemed to be visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘MAR/TI/NO’, present identically in the second word element of each mark; moreover, the pronunciation of the signs also coincides in the sound of the syllable ‘SAN’, as the element ‘S.’ in the earlier mark will be pronounced by the Italian-speaking public as the word ‘San’.

Therefore, the signs are considered aurally highly similar, as the earlier mark will be pronounced as ‘SAN MARTINO’ and the contested sign as ‘SANT MARTINO’, and in this case the letter ‘T’ in which the marks differ has a minimal impact from the aural perspective.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to Saint Martin (‘San Martino’), the signs are considered conceptually identical.

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 Italian 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Classes 30 and 32 are partly identical and partly similar and those in Class 29 are dissimilar. The degree of attentiveness of the general public is deemed to be average. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually identical. It is clear that in both marks the Italian consumers will see the coinciding second element, ‘MARTINO’, as a name. The signs identically convey the concept of the name ‘MARTINO’, and the only visual (and aural) difference may derive from the different word elements ‘S.’/‘SANT’.

Due to the closeness of the first elements of the signs, ‘S.’/‘SANT’, since the element ‘S.’ is a commonly used abbreviation, and the word ‘SANT’ will be associated with the word ‘SAN(TO)’, as explained in section c), the Italian public is expected to perceive both signs as referring to ‘San Martino’. Therefore, the signs are considered conceptually identical.

Moreover, the signs differ in the figurative element in the form of the ribbon device included in the contested sign; however, it has a secondary role in the overall impression made by this mark, as it will be seen merely as a type of labelling used on the packaging of the products.

Account must 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Given this, it is held that there is a likelihood of confusion on the part of the Italian public because the coinciding elements will be seen by the Italian consumers as meaning ‘San Martino’, which clearly indicates the possibility of associating or confusing the marks.

Therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 1 378 491.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. However, the rest of the contested goods 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.

For the sake of completeness, the Opposition Division notes that, in its observations, the applicant argues that the earlier trade mark is composed of the word element ‘MARTINO’, which is very close to ‘MARTIN*’, for instance, which a number of trade marks include together with other elements. In support of its argument, the applicant refers to a number of European Union trade mark registrations and Italian trade mark registrations for, inter alia, goods in Classes 29, 30 and 32.

As the applicant refers to previous registrations granted by the Office to support its arguments, it should be noted that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

The opponent has also based its opposition on the following earlier trade mark:

• Italian trade mark registration No 1 378 492, figurative mark , registered for goods in Classes 29, 30 and 32.

This earlier right invoked by the opponent is less similar to the contested mark. This is because it contains an additional figurative element in the form of a rectangular grey background with rounded edges and a frame around it. Moreover, it covers the same scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA	José Antonio GARRIDO OTAOLA	Michele M. BENEDETTI-ALOISI

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.