OPPOSITION No B 2 589 896

DF World of Spices GmbH, Industriestr. 25, 49201 Dissen, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative)

a g a i n s t

Grupo Bimbo, S.A.B. de C.V., Prolongación Paseo de la Reforma No. 1000, Colonia Peña Blanca Santa Fé, Delegación Álvaro Obregón, México, Distrito Federal 01210, México (applicant), represented by Lerroux & Fernández-Pacheco, Claudio Coello 124 4º, 28006 Madrid, Spain (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 896 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 14 352 785, . The opposition is based on, inter alia, European trade mark registration No 3 567 815,  . 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 3 567 815.

1. The goods

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

Class 29: Meat, fish, poultry and game, and shellfish; meat extract; preserved fruits, dried and cooked fruits and vegetables; preserves, conserves; soups; jellies, jams, compotes; finished products consisting mainly of meat, fish, poultry, game, shellfish, fruits and/or vegetables; starters, including potato crisps; eggs, cheese edible fats and oils; snacks, in particular dried, roasted, salted and/or spiced peanut kernels, nuts, almonds and cashew nut kernels; deep-fried potato cakes.

Class 30: Rice, tapioca, sago; flour and preparations made from cereals, bread, pastry, in particular cheese and onion pastries, confectionery, ices, honey, treacle; yeast, baking powder, salt, mustard, vinegar, sauces, spices, mainly flat breads filled or topped with meat, fish, poultry and game, including burritos, fajitas, tacos, enchiladas and chimichangas; extruded wheat, rice and corn products for snacks, in particular tortillas, nachos, tacos, crackers; starters, including crisps (from cereals), salsas and dips, mainly of flour, vegetable fats and/or oils, tomatoes, onions, peppers, chili pods, cheese spreads and/or spices; ready-to-eat pastries for toasting, in particular savoury sandwich pastries; popcorn, corn flakes.

Class 31: Fresh fruits and vegetables, nuts, almonds and cashew nut kernels.

The contested goods are the following:

Class 29: French fries; French fries; Potato crisps (in packets); Potato crisps in the form of snack foods; Rosti [fried grated potato cakes]; Potato fritters; Potato flakes; Filled potato skins; Fish with chips; Frozen french fries; Potato flakes; Low-fat potato chips; Soy chips; Yucca chips; Potato chips; Potato crisps in the form of snack foods; Filled potato skins; Instant mashed potato; Mashed potato; Potato cakes; Prepared nuts; Peanut butter; Coated peanuts; Roasted peanuts; Meat extracts; Eggs; Edible oils and fats; Crayfish, not live; Coconut oil; Flaxseed oil for culinary purposes; Corn oil; Palm kernel oil for food; Palm oil for food; Sesame oil; Edible oils; Olives, preserved; Garlic [preserved]; Ajvar [preserved peppers]; Albumen for culinary purposes; Alginates for culinary purposes; Clams, not live; Ground almonds; Aloe vera prepared for human consumption; Anchovy; Peas, preserved; Bacon; Lobsters, not live; Potato fritters; Preparations for making bouillon; Stock; Animal marrow for food; Meat; Poultry, not live; Game; Pork; Preserved meat; Meat, tinned [canned (Am.)]; Meat extracts; Fruit peel; Caviar; Onions, preserved; Sauerkraut; White of eggs; Coconut, desiccated; Isinglass for food; Colza oil for food; Cranberry sauce [compote]; Fruit, stewed; Broth concentrates; Jams; Potato flakes; Whipped cream; Silkworm chrysalis, for human consumption; Croquettes; Crustaceans, not live; Curd; Rennet; Dates; Pickles; Fruit salads; Vegetable salads; Weed extracts for food; Fish fillets; Canned fruits; Crystallized fruits; Fruit preserved in alcohol; Preserved fruits; Fruit, stewed; Shrimps, not live; Gelatine; Meat jellies; Sunflower oil for food; Soya beans, preserved, for food; Lard; Coconut oil and fat [for food]; Fat-containing mixtures for bread slices; Fatty substances for the manufacture of edible fats; Edible fats; Beans, preserved; Fish meal for human consumption; Liver; Bone oil, edible; Fish roe, prepared; Snail eggs for consumption; Powdered eggs; Hummus [chickpea paste]; Jellies; Fruit jellies; Ham; Vegetable juices for cooking; Kefir [milk beverage]; Kimchi [fermented vegetable dish]; Spiny lobsters, not live; Prawns, not live; Lentils, preserved; Chocolate nut butter; Butter; Buttercream; Peanut butter; Coconut butter; Margarine; Shellfish, not live; Mussels, not live; Ginger jam; Marmalade; Black pudding; Mousses (Fish -); Mousses (Vegetable -); Cream [dairy products]; Edible birds' nests; Olive oil for food; Oysters, not live; Raisins; Tahini [sesame seed paste]; Liver pâté; Pectin for culinary purposes; Gherkins; Sea-cucumbers, not live; Fish; Fish, preserved; Salted fish; Canned fish; Piccalilli; Foods made from fish; Non-alcoholic eggnog; Charcuterie; Fruit pulp; Apple purée; Tomato purée; Cheese products; Fruit-based snack food; Salted meats; Sausages; Sausages in batter; Suet for food; Sunflower seeds, prepared; Seeds, prepared; Mushrooms, preserved; Smetana [sour cream]; Soup (Preparations for making -); Soups; Whey; Tofu; Tomato juice for cooking; Tripe; Truffles, preserved; Vegetables, cooked; Vegetable preserves; Vegetables, dried; Milk shakes; Milk beverages, milk predominating; Ferments (Milk -) for culinary purposes; Milk; Protein milk; Condensed milk; Soya milk [milk substitute]; Lecithin for culinary purposes; Kefir [milk beverage]; Milk products; Fermented milk; Ryazhenka [fermented baked milk]; Yoghurt.

Class 30: Flour; Cereals; Bread; White bread; Sandwich bread; Buns, Toasted bread; Bread coatings; Sweet bread; Sandwiches; Toasted sandwiches; Ice cream sandwiches; Sandwiches containing fish; Sandwiches containing chicken; Sandwiches; Frankfurter sandwiches; Hamburgers contained in bread rolls; Toasted cheese sandwich; Wrap [sandwich]; Hot dog sandwiches; Cheeseburgers [sandwiches]; Toasted cheese sandwich with ham; Sandwich spread made from chocolate and nuts; Hamburgers contained in bread rolls; Hot dogs (prepared); Rice crisps; Vegetable flavoured corn chips; Wholewheat crisps; Snack food products consisting of cereal products; Quesadillas; Snack food products made from maize flour; Taco chips; Tacos; Spring rolls; Ready to eat savory snack foods made from maize meal formed by extrusion; Pre-cooked foodstuffs and savoury snacks, namely snacks based on corn, cereals, flour and sesame, crackers, dumplings, pancakes, dishes based on pasta, rice and cereals, tarts and pastry dishes, sandwiches and pizzas, spring and seaweed rolls, steamed buns, dishes based on corn tortillas; Salts, seasonings, flavourings and condiments; Snack foods made from corn; Snack foods made from wheat; Sesame snacks; Crisps made of cereals; Puffed corn snacks; Filled baguettes; Sandwiches containing meat; Sandwiches containing fish; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Prepared meals containing [principally] pasta; Pies [sweet or savoury]; Enchiladas; Crackers flavoured with spices; Pre-baked pizzas crusts; Flavoured popcorn; Chocolate-based ready-to-eat food bars; Pastries; Sweetmeats [candy]; Ices; Sugar; Honey; Syrups and treacles; Yeast; Baking powder; Salt; Mustard; Vinegar; Herb-sauces; Spices; Ice; Tea; Cocoa; Rice; Tapioca; Sago; Meat tenderizers, for household purposes; Gluten additives for culinary purposes; Marinades; Sea water for cooking; Peppers [seasonings]; Capers; Culinary herbs; Farinaceous foods; Dressings for salad; Gruel, with a milk base, for food; Star aniseed; Aniseed; Aromatic preparations for food; Oat-based food; Crushed oats; Husked oats; Oatmeal; Saffron [seasoning]; Sugar; Sweetmeats [candy]; Palm sugar; Cereal bars; High-protein cereal bars; Stick liquorice [confectionery]; Cocoa-based beverages; Drinking chocolate; Tea-based beverages; Baking soda [bicarbonate of soda for baking purposes]; Rusks; Buns; Puddings; Cocoa; Cinnamon [spice]; Sweetmeats [candy]; Caramels; Barley (Crushed -); Husked barley; Cereals; Beer vinegar; Chewing gum, not for medical purposes; Chocolate; Chow-chow [condiment]; Chutneys [condiments]; Cloves [spice]; Noodle-based prepared meals; Condiments; Oat flakes; Chips [cereal products]; Maize flakes; Fruit sauces; Whipped cream (Preparations for stiffening -); Custard; Cream of tartar for culinary purposes; Turmeric; Curry [spice]; Couscous [semolina]; Sweetmeats [candy]; Sweeteners (Natural -); Pies; Pasties; Essences for foodstuffs, except etheric essences and essential oils; Spaghetti; Ice cream (Binding agents for -); Sausage binding materials; Thickening agents for cooking foodstuffs; Malt extract for food; Starch for food; Leaven; Ferments for pastes; Noodles; Vermicelli [noodles]; Wheat flour; Cookies; Petit-beurre biscuits; Crackers; Wheat germ for human consumption; Glucose for culinary purposes; Gluten prepared as foodstuff; Waffles; Fruit jellies [confectionery]; Groats for human food; Bean meal; Halvah; Cheeseburgers [sandwiches]; Flour; Ice cream; Ice, natural or artificial; Garden herbs, preserved [seasonings]; Grits; Infusions, not medicinal; Royal jelly; Syrups and treacles; Ginger [spice]; Meat gravies; Catsup; Cocoa beverages with milk; Chocolate beverages with milk; Yeast; Flaxseed for human consumption; Macaroons [pastry]; Macaroni; Maize flour; Maize, milled; Maize, roasted; Malt biscuits; Malt for human consumption; Maltose; Peanut confectionery; Dough; Cake dough; Mayonnaise; Marzipan; Syrups and treacles; Peppermint sweets; Mint for confectionery; Honey; Mustard meal; Mousses (Chocolate -); Mousses (Dessert -) [confectionery]; Muesli; Nutmeg; Bread; Unleavened bread; Gingerbread; Breadcrumbs; Bread rolls; Potato flour; Almond paste; Fondants; Paste (Soya bean -) [condiment]; Farinaceous food pastes; Cakes; Meat pies; Rice cakes; Petits fours [cakes]; Lozenges [confectionery]; Pesto [sauce]; Pepper; Allspice; Pizza; Baking powder; Powders for ice cream; Cake powder; Pralines; Ham glaze; Cake frosting [icing]; Confectionery for decorating Christmas trees; Pastries; Bee glue; Quiches; Ravioli; Rice-based snack food; Cereal-based snack food; Liquorice [confectionery]; Relishes; Spring rolls; Popcorn; Flavourings, other than essential oils, for beverages; Flavourings, other than essential oils, for cakes; Sago; Celery salt; Cooking salt; Salt for preserving foodstuffs; Soya sauce; Tomato sauce; Sauces [condiments]; Sauces for use with pasta; Sandwiches; Spices; Semolina; Grits; Sherbets [ices]; Artificial coffee; Sushi; Tabbouleh; Tacos; Tapioca; Tapioca flour; Tarts; Tea; Iced tea; Tortillas; Pancakes; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vinegar; Yoghurt (Frozen -) [confectionery ices]; Lollipops; Processed grains; Starch; Bakery products and yeast; Extruded snacks containing corn.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt; Malt albumin for animal consumption [other than for medical use]; Dried alfalfa for animals; Algarovilla for animal consumption; Food for aquarium fish; Oat-based food for animals; Cereal based foodstuffs for animals; Foodstuffs containing phosphate for feeding animals; Foods containing liver for feeding cats; Foods containing liver for feeding dogs; Foods containing chicken for feeding cats; Foods containing chicken for feeding dogs; Foods flavoured with liver for feeding cats; Foods flavoured with liver for feeding dogs; Foods flavoured with chicken for feeding cats; Foods flavoured with chicken for feeding dogs; Foods flavoured with beef for feeding cats; Foods flavoured with beef for feeding dogs; Foods containing beef for feeding cats; Foods containing beef for feeding dogs; Foodstuffs for animals on a milk basis; Foods in the form of rings for feeding to cats; Foods in the form of rings for feeding to dogs; Canned foodstuffs consisting of meat for young animals; Canned or preserved foods for animals; Animal foodstuffs in the form of pieces; Canned foodstuffs for cats; Canned foodstuffs for dogs; Milk-based foodstuffs for animals; Animal foodstuffs containing air-cured hay; Animal foodstuffs consisting of soya bean products; Foodstuffs for animals containing botanical extracts; Animal foodstuffs containing hay; Pet food; Pet foods in the form of chews; Foodstuffs for farm animals; Animal foodstuffs derived from air-cured hay; Animal foodstuffs derived from hay; Animal foodstuffs in the form of pellets; Foodstuffs for marine animals; Foodstuffs for dairy animals; Foodstuffs for poultry; Food for wild birds; Foodstuffs for horses; Foodstuffs for puppies; Food for goldfish; Foodstuffs for pigs; Animal foodstuffs for the weaning of animals; Foodstuffs for cats; Foodstuffs for cats based on or consisting of fish; Foodstuffs for sheep; Foodstuffs for fish; Foodstuffs for dogs; Cheese flavoured foodstuffs for dogs; Food for racing dogs; Foodstuffs for chickens; Food for rodents; Foodstuffs for calves; Formula animal feed; Poultry grit; Natural rice for use as animal fodder; Oats for consumption by animals; Processed oats for consumption by animals; Beverages for pets; Beverages for canines; Salt licks; Lime for animal forage; Stall food for animals; Ground bait [live or natural]; Mash for fattening livestock; Processed cereals for consumption by animals; Cat treats [edible]; Dog treats [edible]; Rabbit food; Preserved crops for animal feeds; Yeast extracts for animal consumption, malt extracts for animal consumption; Oat biscuits for consumption by animals; Sweet biscuits for consumption by animals; Biscuits made from cereals for animals; Biscuits made from malt for animals; Biscuits for animals; Biscuits for puppies; Dog biscuits; Savory biscuits for animals; Brine shrimp for fish food; Wheat germ for animal consumption; Edible treats for animals; Edible pet treats; Groats for poultry; Grains for animal consumption; Rice meal for forage; Oatmeal for consumption by animals; Soy bean meal [animal feed]; Flaxseed meal for animal consumption; Peanut meal for animals; Fish meal for animal consumption; Oilseed meal for animals; Meal for animals; Meal for consumption by animals; Baled air-cured hay; Cuttlefish bones; Cuttle bone for birds; Digestible chewing bones for dogs; Chewing bones for dogs; Bones for dogs; Digestible chewing bones and bars for domestic animals; Edible bones and sticks for pets; Cuttle bone [for cage birds]; Artificial milk prepared for use as a feeding stuff for calves; Powdered milk for puppies; Powdered milk for kittens; Milk for use as foodstuffs for animals; Milk for use as foodstuffs for dogs; Pulses [foodstuffs for animals]; Active dried yeast for animals; Yeast for animal consumption; Yeast for animal fodder; Flax meal [fodder]; Malt for animals; Maize (Processed -) for consumption by animals; Maize for consumption by animals; Wildlife seed mixtures; Nutrients [foodstuffs] for fish; Edible chews for animals; Straw; Straw [forage]; Cereal cakes for animals; Yeast tablets for consumption by animals; Strengthening animal forage; Mixed animal feed; Animal foodstuffs derived from vegetable matter; Animal foodstuffs in the form of nuts; Synthetic animal feed; Food preparations for cats; Feeding preparations for bees; Food preparations for dogs; Cereals preparations being food for animals; Preparation of animal feeds; Milled food products for animals; Cereals products for consumption by animals; Egg laying poultry (Preparations for -); Edible chewing products for domestic animals; Edible chews for dogs; Livestock fattening preparations; Wheat proteins for animal food; Starch pulp [animal feed]; Bird food; Distillery waste for animal consumption; Residues from malt treatment for use as an animal feed; Salt for cattle; Mineral salts for cattle; Rice bran [animal feed]; Bran mash for animal consumption; Flaxseed for animal consumption; Bird seed; Cereals (Residual products of -) for animal consumption; Feeding substances for bees; Milk substitutes for use as foodstuffs for animals; Oat cakes for consumption by animals; Rape cake for cattle; Peanut cake for animals; Maize cake for cattle; Soy sauce cakes [animal feed]; Oil cake; Bees; Bumblebees; Abalones [live]; Smolt [live]; Ark-shells [live]; Short-necked clams [live]; Live clams; Edible aquatic animals [live]; Live game; Pet animals; Live laboratory animals; Menagerie animals; Live animals; Herrings, live; Live arthropods for the control of pests; Tuna, live; Live poultry; Pet birds; Tunny (live); Sea breams [red snappers, live]; Lobsters, live; Live horses; Squid [live]; Calamari, live; Live crayfish; Crabs [live]; Cocoons for silkworm breeding; Cocoons for egg production; Snails [live]; Fishing bait, live; Carp [live]; Live baits; Pigs; Boars for breeding purposes; Live coral; Live aquarium coral; Live aquatic creatures; Crustaceans, live; Animal embryos; Beef cattle; Silkworms; Fish spawn; Fish eggs for hatching; Silkworm eggs; Eggs for hatching, fertilised; Live insects; Spiny lobsters, live; Sea basses [live]; Live mammals; Blue mussels [live]; Shellfish, live; Oysters, live; Turkey hens [live]; Live fish; Goldfish; Aquarium fish; Live fish [not for food]; Live fish for food purposes; Sea-cucumbers, live; Dogs; Bee pollen (Unprocessed -); Bee pollen being raw material for industrial use; Chicks; Bred stock; Live octopuses; Live birds; Salmon, live; Sardines [live]; Sardines, live; Live cuttlefish; Soft-shelled turtles [live]; Live cows; Fresh seaweed; Seaweed for human or animal consumption; Fungi; Plants; Fresh mugwort (Yakssuk) in the nature of live plants; Horticultural mulches; Horticultural mulches made from cocoa shell waste; Maize; Fresh corni fructus (Sansuyu) in the nature of live plants; Agricultural produce (Unprocessed -); Agricultural products not included in other classes; Forestry products not included in other classes; Horticultural products not included in other classes; Aromatic sand for pets [litter]; Litter for birds; Cat litter and litter for small animals; Animal litter made from hydrated calcium silicate; Bark for use as animal litter; Hay; Litter for domestic animals; Litter for dogs; Bedding material for fowl; Bedding materials for animals; Straw litter; Chopped straw for animal bedding; Sanded paper for use in animal cages; Sanded paper for use in bird cages; Sanded paper for pets [litter]; Sanded paper for domestic animals (litter); Bark-based products for use as animal litter; Fuller's earth for use as animal litter; Peat litter for animals; Woodshavings for use as animal bedding.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and to professional public (i.e Albumen, alginates, pectin o lecithin for culinary purposes, sausage binding agents, lime for animal forage, live cows, for instance). The degree of attention will vary between low and average. It will be low for common foodstuffs that are cheap and are bought often and average for the specialised public.  

3. 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).

The earlier mark is composed of the word element ‘fuego’ which means ‘fire’ in Spanish. Therefore it has a meaning for part of the relevant public. Contrary to the applicant’s arguments, this word is distinctive for that part of the relevant public as it is not descriptive of any of the characteristics of the goods. For the remainder of the relevant public ‘fuego’ has no meaning and so is distinctive as well. The verbal element is depicted in red with yellow flames simulating a fire. The whole inserted in a black rectangle. The figurative element has no meaning in relation to the goods at hand either and so it is distinctive.  

The earlier mark does not have elements that could be seen more dominant than the others.

The contested sign, however, contains a dominant element which is the word “TAKIS”. The element ‘TAKIS’ could be seen as a male name in Greece, where it is used as a colloquial short form of longer forenames such as Panagiotis, Konstantinos or Dimitrious. For the rest of the territory, this element has no meaning. Contrary to the opponent’s arguments, this verbal element is distinctive for the whole territory in as much as it does not refer to any characteristics of the goods. This dominant word element is written in yellow against a purple background as shown above. Below there is a smaller and secondary element inserted in purple against a yellow background, that is the word “fuego” accompanied by a figurative element representing fire flames.

Visually, the signs coincide in the word ‘fuego’ and the flames. However, while it is the only word in the earlier mark, in the contested sign it is secondary, as it is very small. Furthermore, while this word is depicted in lowercase (except the initial) red letters in the earlier mark, it is depicted in uppercase purple letters in the contested sign. The signs also differ in the other verbal and dominant element of the contested sign, namely ‘TAKIS’, and the rest of figurative elements. All in all, the signs differ in their overall stylisation, their figurative elements and their colours, as described above.

The opponent argues that when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. As stated above, the coinciding verbal element is visually secondary in the contested sign and is overshadowed by other elements that dominate the contested sign. Since 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, it can be reasonable assumed that the earlier mark will be identified by its only verbal element ‘fuego’ and the contested sign by its dominant verbal element ‘Takis’.

The opponent also argues that the first parts of the conflicting marks are identical. 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 initial part) the one that first catches the attention of the reader. In the present case, the word ‘fuego’ in the contested sign is very small in size and is not its first element, whereas the word ‘Takis’ is the verbal element that first catches the attention by virtue of its first, central position and size. Therefore, from a visual perspective, the signs do not coincide in their beginnings and consequently the opponent’s argument must be set aside.

Therefore, the signs are visually similar to a low degree.

Aurally, it is highly unlikely that the relevant public will pronounce the word ‘fuego’ when referring to the contested sign, because of its very small size and because the way it is displayed within the sign, as explained above.

As stated above, it can be reasonably assumed that the earlier mark will be identified by its only word ‘fuego’ and the contested sign by its dominant word ‘Takis’. Therefore, the signs do not coincide aurally at all.

Therefore, it is concluded that the signs are not aurally similar, at least for a significant part of the public.

However, since it cannot be excluded that a small part of the relevant public will pronounce also the verbal element playing only a secondary role in the contested sign, for that part of the public, the pronunciation coincides in the word ‘fuego’, and differs in the pronunciation of the words ‘Takis. In that case, it is considered that the marks are aurally similar to a very low degree.

Conceptually, reference is made to the above written meanings. The figurative element of the earlier sign, as described above, reinforces or conveys the meaning of ‘fire’.

Taking into account that the coinciding word, ‘fuego’, plays a secondary role in the contested sign, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison for a part of the relevant public, 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 Court has stated that 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).

In the present case, the goods assumed to be identical are directed both at the public at large and to professional public. The degree of attention will vary between low and high, as explained above.

The signs are visually similar to a low degree and, for a significant part of the relevant public, aurally dissimilar since the coinciding word, ‘fuego’, is secondary in the contested sign and is displayed in a way in which it is difficult to be perceived in comparison to the other more eye-catching elements of the sign. Furthermore, the signs differ in the additional figurative elements of the contested sign, in the overall stylisation of the signs, as described above, and in their colours. The similarities between the signs are confined to a low conceptual similarity for a part of the public, and an additional low aural similarity for a small part of the public.

As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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 (judgment of 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

However, in the present case, the identity of the goods cannot offset the low aural and/or conceptual similarity that exists for a part of the public between the signs, whose visual overall impression is substantially different.

The opponent further refers to the principle of imperfect recollection, according to which the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. The Opposition Division notes, however, that in the present case, an imperfect recollection of the signs can only lead to even less similarities between the signs, since consumers will keep in mind a vague overall impression of the contested sign, which is dominated by elements not included in the earlier mark, rather than all its individual elements, and in particular its secondary elements, including the only coinciding verbal element.

Even consumers who pronounce the word ‘fuego’ in the contested sign will not identify that sign by that element, but by the more eye-catching, stand-alone word ‘Takis’.

Considering all the above, and despite the assumed identity of the goods at issue, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that consumers might believe that the goods came from the same undertaking or from economically-linked undertakings.

Therefore, the opposition must be rejected on the basis of the earlier European Union trade mark registration No 3 567 815.

The opponent refers to a previous decision of the Office to support its arguments. However, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent is opposition B 2 252 727 and is not relevant to the present proceedings. The signs under comparison were not the same in as much as in the present case the contested sign is figurative and not verbal as it was the case.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness in Germany, as explained by the opponent, due to extensive use, the outcome of no likelihood of confusion remains the same. Again, the coincident element would still be in secondary position. The above comparison would still be valid for this mark. Therefore, it is not necessary to examine the evidence of extensive use.

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

• International registration No 572 716 for the word mark FUEGO´ in Classes 29 and 30, designating the EU, Austria and Germany.

• German trade mark registration No 30 078 658 for the Word mark `FUEGO in Classes 29 and 30.

These other earlier rights invoked by the opponent are also not similar enough to the contested mark. This is because they contain the word ‘fuego’ which is present in the contested trade mark only as secondary element. The same reasoning applies as for the mark compared above. Moreover, they do not share the flames (as the ones compared above) and they cover the same or a narrower scope of the goods. Therefore, the outcome cannot be different.

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

Eva Inés PÉREZ SANTONJA

Inés GARCÍA LLEDÓ

Richard BIANCHI

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.