OPPOSITION No B 2 758 715

Inga Food, S.A., Ronda de Poniente, 9, 28780 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Tauris a. s., Potravinárska 6, 97901 Rimavská Sobota, Slovakia (applicant), represented by Ivan Belička, Švermova 21, 974 04 Banská Bystrica, Slovakia (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 715 is upheld for all the contested goods, namely

Class 29                Meats; Poultry; Meat extracts; Charcuterie; Hotdog sausages; Bacon; Prepared meat dishes; Meat preserves; Packaged meats; Meat spreads; Game, not live; Fresh meat; Prepared meals made from meat [meat predominating]; Beef; Sausages; Ham; Processed meat products; Salami; Cured meats. 

2.        European Union trade mark application No 15 417 405 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 417 405 for the figurative mark , namely against all the goods in Class 29. The opposition is based on Spanish trade mark registration No 3 027 247 for the figurative mark . 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.

1. The goods

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

Class 29        Beef; beef extracts; cow's milk for human consumption; edible fats originating from beef.        

The contested goods are the following:

Class 29        Meats; Poultry; Meat extracts; Charcuterie; Hotdog sausages; Bacon; Prepared meat dishes; Meat preserves; Packaged meats; Meat spreads; Game, not live; Fresh meat; Prepared meals made from meat [meat predominating]; Beef; Sausages; Ham; Processed meat products; Salami; Cured meats. 

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.

The contested beef is identically contained in both lists of goods.

The contested meat extracts include, as a broader category, the opponent’s beef extracts. 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 meats; meat preserves; packaged meats, fresh meat; cured meats include, as broader categories, or overlap with the opponent’s beef. 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 prepared meat dishes; meat spreads; prepared meals made from meat [meat predominating]; processed meat products; poultry; game, not live; charcuterie; hotdog sausages; bacon; sausages; ham ; salami  are similar to the opponent´s beef. These goods may be similar in nature and can have a common origin. They may target the same consumers and have the same distribution channels. Furthermore, these goods are in competition with each other

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 public at large. They are purchased rather frequently and are not particularly expensive. Therefore, the degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal elements TAURUS of the earlier mark and TAURIS of the contested sign are of Latin origin, the former being the nominative singular and the latter the dative plural form of the Latin word “taurus”, meaning “bull”. It cannot be assumed that a considerable part of the relevant Spanish speaking public has a sufficient command of Latin to immediately understand this meaning.

However, part of the public may associate them with the derived Spanish word “tauro”, referring to the zodiacal sign of “taurus” (Dictionary of the Royal Spanish Academy: tauro Del lat. taurus. adj. Dicho de una persona: Nacida bajo el signo zodiacal de Tauro. – tauro, from latin taurus, adjective, of a person: born under the zodiacal sign of taurus).

Neither the word “tauro” nor the words TAURUS and TAURIS would be used or perceived by Spanish speakers as referring or alluding to beef or other bovine products, but at most be associated with a zodiacal sign, as set out above. Therefore, the verbal elements TAURUS and TAURIS are distinctive.

The graphical design of the earlier mark features a depiction of its word elements in red and black capital letters, the letter T being considerably larger than the other letters. Furthermore, it contains a figurative element, which is reminiscent of the outline of a bull´s head, enshrining the letter T and forming part of the letter A.

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).

Therefore, despite its degree of stylization and specific graphical representation in combination with the letter A, the above mentioned figurative element is considered to be less distinctive than the word element.

The contested sign’s word element is depicted in white standard font capital letters inside a red and white label which is rather decorative and, therefore, only lowly distinctive. Inside the label, below the word element, a depiction of a bull’s profile appears, which is considered lowly distinctive for beef; meat extracts; meats; meat preserves; packaged meats, fresh meat; cured meats; prepared meat dishes; meat spreads; prepared meals made from meat [meat predominating]; processed meat products;  charcuterie; hotdog sausages; sausages; salami as, due to its rather marginal stylization, the consumer may perceive it as alluding to their nature or main ingredient (i.e. beef). For the remaining goods it is distinctive.

Visually, the signs coincide in the letters T-A-U-R-*-S and therefore in five out of six letters of their respective verbal elements, being their most distinctive elements. They differ in the penultimate letter of their verbal elements, namely U vs I respectively. They differ in their respective graphical design, as set out above.

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

Aurally, the pronunciation of the signs coincides in the letters T-A-U-R-*-S and differs in their penultimate letter U vs I. The intonation is similar, the stretch being on the coinciding first syllable TAU. The figurative elements of the signs have no impact on their pronunciation.

Therefore, the signs are aurally similar to an above average degree

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the word elements and the figurative elements of the signs will be associated with a similar meaning (the word elements with the Spanish word ‘tauro’, the figurative elements with a stylized bull and a stylized bull´s head respectively), the signs are overall conceptually highly similar.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 goods are identical and similar. The visual similarity between the signs is average, the aural similarity higher than average and the conceptual similarity is high. The attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

Bearing in mind the aforesaid facts and principles, the differences between the signs are not sufficient to exclude a likelihood of confusion on the part of the public, as  the word elements of the signs, which will have the biggest impact on the consumer, only differ in one letter and may still be associated with a similar meaning.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word “TAURUS”. In support of its argument the applicant refers to some European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word “TAURUS”. Under these circumstances, the applicant’s claims must be set aside.

The applicant argues that it has previous trade mark registrations comprising of or containing the word “TAURIS” and has filed various pieces of evidence to substantiate this claim.

However, the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Previous trade mark registrations of the applicant are neither subject to the current proceedings nor does their mere existence as such affect the validity or scope of protection of the opponent´s trade mark on which the opposition is based.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 027 247. It follows that the contested trade mark must be rejected for all the contested 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.

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

Lars HELBERT

Tobias KLEE

Denitza STOYANOVA-VALCHANOVA

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.