OPPOSITION No B 2 591 165

Grupo Osborne, S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María Cádiz, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415, 5°, 1ª, 8009 Barcelona, Spain (professional representative)

a g a i n s t

P.B.H. S.r.l., Via S. Antonio, 80, 35019 Tombolo (Padova), Italy (applicant), represented by Bugnion S.p.A., Via Pancaldo, 68, 37138 Verona, Italy (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 591 165 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 280 911, namely all the goods in Classes 29, 30 and 31. The opposition is based on European Union trade mark registration No 11 768 322, ‘’ and Spanish trade mark registration No 901 255, ‘’ for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR for the earlier EUTM and Article 8(5) EUTMR for the earlier Spanish trade mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR – European Union trade mark registration No 11 768 322.

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 signs

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).

It must be taken into account that the assessment of the similarity between two marks means more than taking into consideration just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 42, and 20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (judgment of 20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 43).

The earlier trade mark is a figurative mark consisting of the representation of the black silhouette of a muscular bull’s full body, facing to the left, with the head turned to the front, a noticeable neck, the tail hanging down, its four legs and its genitals clearly visible; and of the words ‘TORO DE OSBORNE’ in uppercase black bold characters, placed below the mentioned figurative element.

The contested sign is also a figurative mark depicted in black, grey and white, which consists of the image of a hand-drawn three leaf clover tilted to the left, followed by the representation of the silhouette of a cow full body, depicted in a smaller size, facing to the left, with the head turned to the front, with its bell, the tail hanging down, its four legs and its udder clearly visible; and the words ‘ST. PATRICK’S FARM’ below the mentioned figurative elements, in grey slightly stylised typeface.

Part of the public in the relevant territory will perceive in the earlier mark as the Spanish and Italian word ‘TORO’ as referring to ‘bull, male, bovine animal’ and ‘OSBORNE’ as a surname. For the other part of the public, these words are meaningless. In any case, as they are either meaningless or not descriptive, allusive or otherwise weak for the relevant goods they are distinctive. Due to the lack of any connection with the relevant goods, the figurative element of the earlier mark is also distinctive. Furthermore, it is the dominant (visually eye-catching) element of the sign.

Part of the public in the relevant territory will perceive in the contested sign the words ‘ST. PATRICK’S FARM’ as an English expression. The word ‘FARM’ refers to ‘an area of land and its buildings, used for growing crops and rearing animals’ and ‘ST. PATRICK’, as a fifth-century Romano-British Christian missionary and bishop very well-known in Ireland. Therefore, the whole expression will be perceived as an agricultural concern called St. Patrick, thus, while ‘FARM’ by itself is not very distinctive for the relevant goods, as a whole it is distinctive as it is not descriptive, allusive or otherwise weak for the relevant goods. For the part of the public for whom all or some of these words are meaningless this expression has no meaning either and, therefore, it also is distinctive.

The figurative element of the contested sign is also distinctive with the exception of the depiction of the cow, which describes some of the products in Class 29 (e.g. meat) or describes a characteristic of the products in Class 30, as they could contain cow’s meat as a main ingredient (e.g. meat pies or meat gravies). Therefore, this element is considered non distinctive or weak, respectively, for part of the products at hand. In addition, the contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs do not visually coincide in any element, although both contain the image of an animal belonging to the bovine family, the graphical representations of these animals are very different in each case. The one in the earlier mark represents a male animal and the one in the contested sign represents a female animal. The shapes of their bodies, heads, horns, necks, the positioning of their legs and their particular additional details make them visually different.

Moreover, the bull in the earlier mark is the only figurative element of the sign and has been found both, the distinctive and the dominant element of the sign. On the contrary, the image of the cow in the contested sign is placed in a secondary position, preceded as it is by another, larger figurative element which has also been found distinctive (i.e. the clover). In addition, the image of the cow, as mentioned above, is considered non distinctive or weak for part of the relevant goods, which means that consumers will pay less attention to this element than to the rest of the distinctive elements of the sign.

Another strong difference between the signs is related to their respective additional verbal elements, the words ‘TORO DE OSBORNE’ of the earlier mark vs. ‘St. PATRICK’s FARM’ of the contested sign, all of them considered distinctive in relation to the goods at hand for the relevant public. The respective verbal elements of the signs are depicted in different typefaces, colours and sizes. At this point, it has to be recalled that when signs consist of both verbal and figurative components, as in the present case, 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; 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, although the figurative element of the earlier mark and one of the figurative elements of the contested sign consist of a depiction of animals belonging to the same family, in the opinion of the Opposition Division this is not enough to find a visual similarity between the signs, taking into account, firstly, that consumers will be able to distinguish the image of the bull from the image of the cow and, secondly, that the rest of components of the signs, such as the additional figurative element of the contested sign and the respective verbal elements included in both signs, will be the ones that will have a major impact on the visual impression in each sign and the ones that will catch the consumers attention taking into account their position, size and distinctive character.

Therefore, it is concluded that the signs are not visually similar.

Aurally, irrespective the different pronunciation rules in different parts of the relevant territory, the verbal element of the earlier mark will be pronounced as ‘TORO DE OSBORNE’. The verbal element of the contested sign will be pronounced as ‘St. PATRICK’s FARM’. As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The only conceptual point of contact between the signs refers to the fact that they include the image of an animal which belongs to the bovine family. However, the Opposition Division considers that this is not enough to find a conceptual similarity between the signs.

In the present case, the lack of conceptual similarity between the signs is not only based on the fact that it is obvious that average consumers will clearly differentiate a bull from a cow, but mainly in the additional distinctive elements included in both signs, such as the additional figurative element of the contested sign and the additional verbal elements respectively included in both signs, which bring to mind various different concepts by consumers. Since the signs will be associated with dissimilar meanings, they are not conceptually similar.

For the part of the public that do not understand the verbal elements present in the signs, they will still grasp the concepts of the additional figurative elements included in both signs, and consequently for this public the signs are also not conceptually similar as they do not have any concept in common (bull versus clover and cow).

As the signs do not coincide in any element, it is concluded that they are dissimilar

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The examination of the opposition will now proceed in relation to Article 8(5) EUTMR, which has been raised with regards to Spanish trade mark registration No 901 255.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

Part of the earlier mark and the contested signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. In addition to those findings it has to be mentioned that:

Visually, the earlier mark is a purely figurative sign which only consists in the image of the bull that has been described above. The contested sign has been already described above. Again, it has to be recalled that the image of the cow, unlike what happens with the image of the bull, is not the element of the sign that will catch the consumers attention, because, as it has been explained above, it is located in a secondary position, depicted in a smaller size next to another larger and distinctive figurative element (i.e. the clover). Furthermore, the image of the cow is also weak in relation to part of the relevant goods. Therefore, even assuming that such depictions have something in common, quod non, the marks would still coincide in a weak, hence secondary, element of the contested sign, which is not sufficient for a finding of similarity. It has to be also recalled that the verbal components of the contested sign will have a stronger impact on consumers than the rest of elements and, thus, it is more likely that consumers will refer to the products of the contested sign as St. Patrick’s farm products rather than describing the various figurative elements. Therefore, the conclusion in the visual comparison of the signs is that the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare it with the contested sign aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content described above in relation to the image of the bull and the contested sign. The only conceptual point of contact between the signs is the fact that the animal, which is the entirety of the earlier mark and one of the elements of the contested sign, belong to the same family. However, this will be probably easily overlooked by consumers, as the depiction in the contested sign is weak or non-distinctive and given that said sign contains many other words and figurative elements considered distinctive which may bring to mind various different concepts by consumers. Since the signs will be associated with dissimilar meanings, they are not conceptually similar.

For the part of the public in the relevant territory for which all or some of the verbal elements of the contested sign have no meaning as they will grasp the meaning of the figurative elements, the signs are not conceptually similar, as they do not have any concept in common.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the signs must be either identical or similar. Since it has been established that the earlier trade mark and the contested sign are dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Orsola LAMBERTI

María Clara  IBÁÑEZ FIORILLO

Ric WASLEY

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.