OPPOSITION No B 2 727 611
Franz Wagner, Freisingerberg 6, 3340 Waidhofen, Austria (opponent), represented by Rainer Kornfeld, Habsburgergasse 3/20, 1010 Wien, Austria (professional representative)
a g a i n s t
Hijos de José Casaponsa S.A., Ctra. Nacional 260, km. 86, 17813 Vall de Bianya – Girona, Spain (applicant), represented by AB Asesores, Balmes 180, 4º- 2ª, 08006 Barcelona, Spain (professional representative).
On 26/06/2017, the Opposition Division takes the following
1. Opposition No B 2 727 611 is partially upheld, namely for the following contested goods:
Class 29: Sausage meat; Processed meat products; Meat, poultry and game.
2. European Union trade mark application No 15 458 623 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 458 623, namely against some of the goods in Class 29. The opposition is based on, inter alia, European trade mark registration No 10 253 111. 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 European Union trade mark registration No 10 253 111.
- The goods
The goods on which the opposition is based are the following:
Class 29: Charcuterie.
The contested goods are the following:
Class 29: Sausage meat; Processed meat products; Meat, poultry and game; Meat extracts.
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 opponent’s charcuterie is defined as ‘cooked cold meats’ (definition extracted from Collins English dictionary on 19/06/2017 at www.collinsdictionary.com).
The contested sausage meat; processed meat products are included in, or overlap with the broad category of the opponent’s charcuterie. Therefore, they are identical.
The contested meat, poultry and game include, as broader categories, or overlap with, the opponent’s charcuterie. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested meat extracts are merely solutions of the essential constituents of meat. They are used to add meat flavour in cooking and to make broth for drinking. They are not similar to the opponent’s charcuterie since these goods have different natures, purposes, manufacturers and distribution channels. Furthermore, they are not in competition or complementary to each other.
- 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. They are mass consumption foodstuff, bought on a daily basis, generally low-priced and available in any food outlet or supermarket. The corresponding degree of attention is likely to be below average (06/09/2016, R 2200/2015-4, CHEF CUISINE (fig)/Le Chef de CUISINE (fig), § 27).
- The signs
Earlier trade mark
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.
Since the signs are composed of English words or misspellings of English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The element ‘SNACK’ of the earlier mark is defined as ‘a light quick meal eaten between or in place of main meals’. The element ‘STIXX’ will be perceived by the public as a trendy misspelling of the word ‘stick’ in plural, which refers to ‘a long piece of something’ (definitions extracted from Collins English dictionary on 19/06/2017 at www.collinsdictionary.com). In relation to the relevant goods (charcuterie), these elements inform the public that the stick formed products are eaten as a snack. Therefore, these elements are weak.
The figurative contested sign, depicted in red, will be perceived as a play on words. The vast majority of the English-speaking public will read the mark as ‘SNACKS STICKS’ since these words are common English words and consumers usually try to pronounce a sign somehow. These words have the same meaning as in the earlier mark, only differing in the plural form. In relation to the relevant goods (meat and meat products), as in the earlier mark, they will be perceived as alluding to the fact that the goods are stick formed products eaten as snacks.
The signs have no elements that could be considered clearly more distinctive or more dominant (eye-catching) than other elements.
Conceptually, reference is made to the abovementioned assertions concerning the semantic content conveyed by the marks. Since both signs consist of two words alluding to the fact that the products have a stick shape and are eaten as snacks, the signs are conceptually identical. The fact that the word ‘SNACKS’ of the contested sign is in plural does not change this finding.
Visually, the signs coincide in the eight letters ‘S-N-A-C-K-S-T-I. However, they differ in the red colour and specific stylisation of the contested sign (the letters ‘NA’ being depicted above the letters ‘TI’ after the initial letter ‘S’) and in the final letters ‘XX’ of the earlier mark. Therefore, the signs are visually similar to an average degree.
Aurally, the signs are pronounced /snack-sticks/ and /snacks-sticks/. Since they only differ in the pronunciation of the final letter ‘S’ of the word ‘SNACKS’ of the contested sign, they are almost identical.
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.
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, considering the findings in the comparison of the signs, the distinctiveness of the earlier mark, as a whole, is below average for the relevant goods.
- 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).
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 inherent distinctiveness of the earlier mark is below average.
Although the distinctive character of the earlier mark must be taken into account in the assessment of the likelihood of confusion, it is only one factor among others. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, §70).
In the present case, the goods are partly identical and partly dissimilar. The signs are conceptually identical, aurally almost identical and visually similar to an average degree.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
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.
The opponent has also based its opposition on the European trade mark registration No 10 833 432 for the figurative mark for charcuterie in Class 29.
Since this mark covers the same scope of goods, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
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.