OPPOSITION No B 2 618 687

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Sante A. Kowalski Sp.j., ul. Jagiellońska 55A, 03-301 Warszawa, Poland (applicant).

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

DECISION:

1.        Opposition No B 2 618 687 is upheld for all the contested goods, namely:

Class 29:        Dairy products and dairy substitutes; yoghurt desserts; artificial milk based desserts; fruit desserts; desserts made from milk products.

Class 30:        Cocoa; Ice, ice creams, frozen yogurts and sorbets; confectionery, chocolate and desserts; cereals; preparations made from cereals; chocolate-based ready-to-eat food bars.

2.        European Union trade mark application No 14 568 554 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 568 554, namely against some of the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 3 661 386. 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 European Union trade mark registration No 3 661 386.

1. The goods

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

Class 29:        Vegetables (preserved, dried or cooked), fruits (preserved, dried or cooked), mushrooms (preserved, dried or cooked), meat, poultry, game, fish and seafood, all these products also in the form of extracts, soups, jellies, pastes, preserves, ready-made dishes, frozen or dehydrated; jams; eggs; milk, cream, butter, cheese and other food preparations having a base of milk; milk substitutes; milk-based and cream-based desserts; yoghurts; soya milk and soya-based preparations; edible oils and fats; protein preparations for human food; non-dairy creamers; sausages; charcuterie; peanut butter; soups, soup concentrates, broth, stock cubes, bouillon, consommés.

Class 30:         Coffee, coffee extracts and coffee-based preparations; coffee substitutes and extracts of coffee substitutes; chicory; tea, tea extracts and tea-based preparations; iced tea; malt-based preparations; cocoa and preparations having a base of cocoa, chocolate, chocolate products, chocolate-based beverages; confectionery, sweets, candies; sugar; chewing gum; natural sweeteners; bakery products, bread, yeast, pastry; biscuits, cakes, cookies, wafers, toffees, desserts, puddings; ice cream, water ices, sherbets, frozen confections, frozen cakes, soft ices, frozen desserts, frozen yoghurts; mixes for making ice cream and/or water ices and/or sherbets and/or frozen confections and/or frozen cakes and/or soft ices and/or frozen desserts and/or frozen yoghurts; honey and honey substitutes; breakfast cereals, muesli, corn flakes, cereal bars, ready-to-eat cereals, cereal preparations; rice, pasta, noodles; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; pizzas; sandwiches; mixtures of alimentary paste and oven-ready prepared dough; sauces; soya sauce; ketchup; aromatising or seasoning products for food, edible spices, condiments, salad dressings, mayonnaise; mustard; vinegar.

The contested goods are the following:

Class 29:        Dairy products and dairy substitutes; yoghurt desserts; artificial milk based desserts; fruit desserts; desserts made from milk products.

Class 30:        Cocoa; Ice, ice creams, frozen yogurts and sorbets; confectionery, chocolate and desserts; cereals; preparations made from cereals; chocolate-based ready-to-eat food bars.

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

Desserts made from milk products are identically contained in both lists of goods (including synonyms).

The contested dairy products include, as a broader category, the opponent’s cheese and other food preparations having a base of milk, all these products also in the form of jellies. 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 yoghurt desserts and dairy substitutes are included in the broad category of the opponent’s yoghurts. Therefore, they are identical.

The contested dairy substitutes are included in the broad category of the opponent’s milk substitutes. Therefore, they are identical.

The contested artificial milk based desserts overlap with the opponent’s milk-based and cream-based desserts. Therefore, they are identical.

The opponent’s fruits (preserved, dried or cooked), all these products also in the form of jellies, are fruit-flavoured desserts made by warming and then cooling a liquid containing gelatine or a similar setting agent in a mould or dish so that it sets into a semi-solid, somewhat elastic mass. Therefore, the contested fruit desserts include, as a broader category, the opponent’s fruits (preserved, dried or cooked), all these products also in the form of jellies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 30

Cocoa, ice cream, desserts, ice, frozen yogurts, confectionery, chocolate are identically contained in both lists of goods (including synonyms).

The contested preparations made from cereals overlap with the opponent’s foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes. Therefore, they are identical.

The contested chocolate-based ready-to-eat food bars overlap with the opponent’s breakfast cereals, muesli, corn flakes, cereal bars. Therefore, they are identical.

The contested cereals overlap with the opponent’s cereal preparations. Therefore, they are identical.

The contested sorbets are included in the broad category of the opponent’s frozen desserts. 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 vary from average to below average as regards goods for daily consumption.

3. The signs

SMARTIES
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks are composed of English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark consisting of the word ‘SMARTIES’, which will be understood by the relevant public as the plural form of the word ‘SMARTY’, meaning ‘a know-all’ (information extracted from Oxford Dictionaries on 05/04/2017  at https://en.oxforddictionaries.com/definition/smarty). In relation to the relevant goods, the meaning of the word ‘SMARTIES’ is not descriptive or weak for any other reason, and it is therefore distinctive. Moreover, as it is a word mark, there are no elements that are more dominant than any other elements.

The contested mark is a figurative mark consisting of the word ‘SMART’, written vertically in black upper case letters, juxtaposed with the word ‘TEENS’, written horizontally in much larger upper case letters in black and shades of grey, all against a grey square background. The element ‘TEENS’ is the dominant element in the contested mark, as it stands out visually. However, ‘TEENS’ will be understood by the relevant public as referring to ‘the years of a person’s age from 13 to 19’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/teens) and therefore will be perceived as indicating that the relevant goods are intended for persons aged from 13 to 19, and is, therefore, weak. The element ‘SMART’ has several meanings such as ‘having or showing quick intelligence or ready mental capability’ (information extracted from Word Reference Dictionary at http://www.wordreference.com/definition/smart) or ‘bright and fresh in appearance’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/smart). Although, according to this second definition, the element ‘SMART’ could be considered weak in relation to the contested goods, taking into consideration that the word that follows it is ‘TEENS’, the public will understand ‘SMART’ with the first meaning mentioned above. Therefore, the element ‘SMART’ is the most distinctive element of the contested mark, as its meaning it is not related to the relevant goods. As regards the figurative 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 letter sequence ‘SMART’, which is the most distinctive element of the contested mark, for the reasons explained above, and plays an independent distinctive role in the contested mark. The signs differ in the weak element ‘TEENS’ of the contested mark and in the last letters, ‘IES’, of the earlier mark.

Moreover, the marks coincide in their beginnings, which is particularly relevant given that 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 one that first catches the attention of the reader.

Therefore the signs are visually similar to an average degree.

Aurally, the earlier mark will be pronounced as ‘SMAR/TIES’ and the contested mark as ‘SMART/TEENS’. The pronunciation of the signs coincides, therefore, in the sounds of the letters of the first syllable, with the exception of the letter ‘T’, and in the sound of the letter ‘T’ followed by the letters ‘IES’ of the earlier mark and ‘EE’ in the contested mark, which will be identically pronounced, since the final letter ‘S’ of the earlier mark is not pronounced. The marks differ, however, in the sounds of the remaining components of the contested mark.

Therefore, they are aurally similar to a more than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to a high degree.

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.

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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the goods are identical and the signs are visually and aurally similar to an average degree and conceptually similar to a high degree.

The signs have the distinctive letter sequence ‘SMART’ in common. This is the distinctive element and plays an independent role in the contested sign. In the earlier sign, the element ‘SMART’ comprises the first five letters of the sign.

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). Furthermore, 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.

Bearing in mind the foregoing, the Opposition Division considers that the fact that the marks coincide in the first five letters, which form the distinctive element of the contested mark, despite the additional elements of both signs, is likely to lead consumers to believe that the identical goods at issue originate from the same manufacturer or related manufacturers.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 661 386. 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 its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 3 661 38 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.

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

Francesca DINU

Cristina CRESPO MOLTO

Janja FELC

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.