OPPOSITION No B 2 720 624

Scanfisk Seafood, S.L., Polígono Cogullada / Micropolígono Alimentario, 1, 50014 Zaragoza, Spain (opponent), represented by Peleato Patentes Y Marcas, S.L., Plaza del Pilar 12 1º 1ª, 50003 Zaragoza, Spain (professional representative)

a g a i n s t

Urbis Food Srl, Contrada Montedoro Scn, 62010 Urbisaglia (MC), Italy (applicant), represented by Benedetta Dolci, Via dei Gabbiani, 50- scala E, interno 6, 60018 Marina di Montemarciano (AN), Italy (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 624 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 and services in Classes 29 and 35 of European Union trade mark application No 15 459 795 . The opposition is based on European Union trade mark registration No 15 066 954 . 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 and services

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

Class 29: Fish and shellfish.

Class 35: Wholesaling, retailing in shops and retailing via global computer networks of fish and shellfish; advertising; import and export services; franchise-issuing relating to business administration services.

Class 39: Transport, distribution, storage and packaging of fish and seafood.

The contested goods and services are the following:

Class 29: Fish, seafood and molluscs; processed fish; pickled fish; frozen cooked fish; fish sticks; fish croquettes; fish sausages; fish jellies; dishes of fish; steaks of fish; canned fish; canned fish; boiled and dried fish; fish with chips; fish cakes; fish in olive oil; foods made from fish; chilled meals made from fish; fish products being frozen; foods made from fish; fish spread; chilled foods consisting predominately of fish; cooked meals consisting principally of fish; smoked fish spread; steamed or toasted cakes of fish paste (kamaboko); frozen shellfish; canned fish; dishes of fish; fish, preserved; salted fish; frozen shellfish; non-living molluscs; mussels, not live; foods made from fish; prepared dishes consisting primarily of fishcakes, vegetables, boiled eggs, and broth (oden); fish stock; pickled fish; pickled fish; fish; smoked fish; dried fish; tube-shaped toasted cakes of fish paste (chikuwa).

Class 35: Business merchandising display services; commercial administration of the licensing of the goods and services of others; exhibitions for commercial or advertising purposes; advertising; business management; business administration; office functions; advertising; sales promotion for others; retail services relating to food; mail order retail of foodstuffs; retailing via global computer networks of foodstuffs; business merchandising display services; commercial administration of the licensing of the goods and services of others; presentation of goods on communication media, for retail purposes; services with regard to product presentation to the public.

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

Fish (included twice in the contested list of goods) is identically contained in both lists of goods.

Seafood is identically contained in both lists of goods, given that the opponent’s shellfish and the contested seafood are synonyms.

The contested molluscs; frozen shellfish (included twice in the contested list of goods); non-living molluscs; mussels, not live are included in the broad category of the opponent’s shellfish. Therefore, they are identical.

The contested processed fish; pickled fish; frozen cooked fish; fish sticks; fish croquettes; fish sausages; fish jellies; dishes of fish; steaks of fish; canned fish (included twice in the contested list of goods); boiled and dried fish (dried fish is included twice in the contested list of goods); fish with chips; fish cakes; fish in olive oil; foods made from fish (included twice in the contested list of goods); chilled meals made from fish; fish products being frozen; fish spread; chilled foods consisting predominately of fish; cooked meals consisting principally of fish; smoked fish spread; steamed or toasted cakes of fish paste (kamaboko); fish stock; pickled fish (included twice in the contested list of goods); smoked fish; tube-shaped toasted cakes of fish paste (chikuwa) are included in the broad category of, or overlap with, the opponent’s fish. Therefore, they are identical.

The contested prepared dishes consisting primarily of fishcakes, vegetables, boiled eggs, and broth (oden) are similar to the opponent’s fish. They have the same purpose, namely feeding human beings. They are also complementary, since the opponent’s fish is needed to cook the contested oden. Furthermore, they are in competition. Their relevant public is the same and they can be sold in the same outlets.

Contested services in Class 35

The contested business merchandising display services (included twice in the contested list of services); sales promotion for others; presentation of goods on communication media, for retail purposes; services with regard to product presentation to the public are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested commercial administration of the licensing of the goods and services of others overlaps with the opponent’s franchise-issuing relating to business administration services. The contested services are business administration services intended to facilitate the licensing of certain matters on behalf of a client, while the purpose of the opponent’s services is to advise others on business administration problems. Therefore, these services are identical.

Advertising (included twice in the contested list of services) is identically contained in both lists of services.

The contested business administration includes, as a broader category, or overlaps with the opponent’s franchise-issuing relating to business administration services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services relating to food; mail order retail of foodstuffs; retailing via global computer networks of foodstuffs include, as a broader category, or overlap with the opponent’s wholesaling, retailing in shops and retailing via global computer networks of fish and shellfish. Therefore, they are identical.

The contested business management is usually rendered by companies specialising in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc. The contested office functions cover services that are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They are similar to the opponent’s franchise-issuing relating to business administration services, which consist of advising others on business administration problems. These services have the same purpose. Moreover, they are provided by the same companies. In addition, they have the same relevant public.

The contested exhibitions for commercial or advertising purposes is similar to a low degree to the opponent’s advertising. These services have the same purpose and target the same consumers.

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 in Class 29 are directed at the public at large, while the services found to be identical or similar to various degrees are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention will be average in relation to the goods found to be identical or similar in Class 29 and will be high in relation to the services in Class 35, as these services have an impact on consumers’ businesses.

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 a figurative mark consisting of the depiction of a large black fish on the left-hand side and two verbal elements on the right-hand side. The element ‘SCANFISK’ is written in upper case letters and below it are the verbal elements ‘eat smart, be fisk’. Because they are small and hardly legible, the words ‘eat smart, be fisk’ constitute the less dominant element of the mark.

‘SCANFISK’ is meaningless for the relevant public and has an average degree of distinctiveness in relation to the goods and services at issue.

The words ‘eat smart, be fisk’ are, as such, also meaningless for the relevant public. Nevertheless, the English-speaking part of the public would consider these words as a distinctive slogan. An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question, for instance because it constitutes a play on words. In the present case, the Opposition Division considers that the English-speaking part of the public, due to the presence of the depiction of a fish and the dominant verbal element ‘SCANFISK’, will perceive the expression ‘eat smart, be fisk’ as a play on words (i.e. ‘eat smart, be fish’) in relation to fish. ‘Eat smart’ will be understood by the relevant public as an invitation to maintain a healthy diet, while ‘be fisk (be fish)’ will be understood as advice to eat ‘fisk (fish)’ products.

For the non-English-speaking part of the public, ‘eat smart, be fisk’ is meaningless and has an average degree of distinctiveness in relation to the goods and services at issue.

The figurative depiction of a fish is weak in relation to the goods in Class 29 and to the opponent’s wholesaling, retailing in shops and retailing via global computer networks of fish and shellfish in Class 35, while it has an average degree of distinctive character for the other goods.

The contested sign is a figurative mark consisting of the depiction of a black fish.

Part of the public will perceive the contested sign solely as a fish and part of the public will see the contested sign both as a fish and as the figurative depiction of an upper case letter ‘G’. In the scenario where the contested sign will be perceived as a letter ‘G’, the marks are aurally different and conceptually less similar than in the scenario where the contested sign will be perceived solely as a fish.

Therefore, the Opposition Division will focus its assessment on the part of the public that will perceive the contested sign only as a fish, because that is the most favourable scenario for the opponent.

Visually, the signs coincide in the fact that both marks contain a black fish, which is the sole element of the contested sign.

Nevertheless, the two fishes are different. The fish in the earlier mark has a large head and points to the right, while the fish in the contested sign has a small head and, although it also points to the right, it is looking slightly upwards. Moreover, the eye of the fish in the contested sign is larger than that of the fish in the earlier mark.

In addition, the fish in the contested sign has a visible dorsal fin, while the fish in the earlier mark has a very small dorsal fin. Moreover, the fish in the earlier mark has a pelvic fin, while the fish in the contested sign does not. In addition, the caudal fins of the fishes, which can be called the tail for ease of understanding, are very different. The caudal fin of the fish in the contested sign ends with a horizontal line, unlike a fish’s typical caudal fin, while the caudal fin of the fish in the earlier mark looks more realistic and has the appearance of a dolphin’s fluke.

Furthermore, the signs differ in the additional words of the earlier mark. When a mark is composed of both verbal and figurative elements, 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; decisions of 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, in the earlier mark, the element having the most visual impact will be ‘SCANFISK’.

Given the above, the signs are visually similar to a low degree.

Aurally, it has to be noted that purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, from the perspective of the public under analysis, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks are conceptually similar inasmuch as both marks convey the concept of a fish. Nevertheless, account should be taken of the fact that the fishes are extremely different, which reduces the conceptual similarity between the marks. Moreover, in relation to some of the goods and services, the fish in the earlier mark is weaker than the verbal elements of this mark. In addition, for the English-speaking part of the public, the expression ‘eat smart, be fisk’ conveys an additional concept.

Given the above, the signs are conceptually similar to an average 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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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).

The signs are visually similar to a low degree and conceptually similar to an average degree, while they are not aurally comparable. The contested goods and services are partly identical and partly similar to various degrees to the opponent’s goods and services.

As regards the goods found to be identical in Class 29, they target the general public, which displays an average degree of attention. It has to be noted that these goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Therefore, the fact that these goods are visually similar to a low degree, given the differences between the fishes and the additional verbal elements of the earlier mark, is a determining factor.

As regards the services found to be identical in Class 35, the relevant public will display a high degree of attention because these services have an impact on consumers’ businesses. The General Court and the Court of Justice have already stated that the probability of a likelihood of confusion is reduced when there is a high degree of attention, because the relevant public, spending more time in purchasing the goods and services, will examine them carefully (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 40; 12/07/2012, T-517/10, Hypochol, EU:T:2012:372, § 53).

The opponent refers to previous decisions 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 cases referred to by the opponent are not relevant to the present proceedings, because, in the cases cited, the figurative elements were more similar than they are in the present case. Moreover, three out of the four cases cited are from more than 10 years ago. The practice, in 10 years, has developed and there are many more recent decisions.

The only recent decision cited by the opponent is the following:

• 12/09/2014, /, in which the signs were found to be conceptually identical, with the word ‘BELUGA’ reinforcing the meaning and significance of the figurative element; however, in the present case, the earlier mark contains meaningless and distinctive elements to which the public will pay more attention, namely ‘SCANFISK’.

It follows that there is no likelihood of confusion on the part of the public under analysis because the differences existing between the marks clearly outweigh the similarity lying in the fact that both marks contain the depiction of a fish. The differences between the fishes and the impact of the verbal elements, especially the element ‘SCANFISK’ in the earlier mark, are sufficient to dispel any likelihood of confusion, even for the goods and services found to be identical.

This conclusion applies, a fortiori, to the rest of the relevant European Union public. For the part of the public perceiving the sign both as a fish and as a letter ‘G’, the signs are aurally dissimilar and conceptually similar to, at most, a low degree. To that extent, the outcome remains unchanged.

Therefore, 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Robert MULAC

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.