OPPOSITION No B 2 727 595

Kerry Luxembourg S.à.r.l., 17 rue Antoine Jans, 1820 Luxembourg, Luxembourg (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland, (professional representative)

a g a i n s t

SozoKobo Co., Ltd, 416-1 kitsu amino-town, kyotango-city, Kyoto  629-3241, Japan (applicant), represented by Baron Warren Redfern, 1000 Great West Road, Brentford  TW8 9DW, United Kingdom (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 595 is partially upheld, namely for the following contested goods:

Class 29:         Processed vegetables; preserved vegetables; processed fruits; processed garlic; preserved garlic; processed mushrooms; preserved mushrooms; processed olives; preserved olives; processed laver; processed truffles; processed potatoes; preserved potatoes; processed beans; preserved beans; fruit juices for cooking; tomato juice for cooking; olive oil; olive oil for food; rape oil for food; rapeseed oil for food; sesame oil; sesame oil for food.

2.        European Union trade mark application No 15 186 919 is rejected for all the above goods. It may proceed for the remaining goods in Class 29.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 186 919 ‘UMAMIX’. The opposition is based on European Union trade mark registrations No 2 296 325 and 14 808 687 for the word marks ‘UMAMEX’. 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 14 808 687.

1. The goods

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

Class 1: Yeast and yeast based products for industrial use. 

Class 5: Yeast based dietary supplements.

Class 30: Yeast based food ingredient products; yeast powders; yeast; instant yeast; yeast extracts for food; yeast pastes; yeast based food flavouring; food flavourings; flavourings for sauces, prepared meals, soups and dressings; sauces; yeast based salt replacement and reduction products.

The contested goods, after the applicant’s limitation of 18/01/2017, are the following:

Class 29: Processed vegetables; preserved vegetables; dried vegetables; processed fruits; crystallised fruits; frozen fruits; processed garlic; preserved garlic; gherkins; processed mushrooms; preserved mushrooms; processed olives; preserved olives; laver; toasted laver; processed laver; processed truffles; dried truffles; processed potatoes; preserved potatoes; potato flakes; tofu; processed beans; preserved beans; Kimchi (fermented vegetables); Kimchi (fermented vegetable dish); fruit chips; fruit pulp; raisins; fruit juices for cooking; tomato juice for cooking; dairy products; milk products; milk; milk beverages; milk based beverages (milk predominating); eggs; soups; preparations for making soups; olive oil; olive oil for food; rape oil for food; rapeseed oil for food; sesame oil; sesame oil for food; meat, fish, poultry; ham; processed meat products; preserved meats; salted meats; meat extracts; liver pastes; liver pate; food products made from fish; processed fish; salted fish; preserved fish; fish fillets; fish roe; fish spawn; lobsters (not live); spiny lobsters (not live); sea cucumbers (not live); prawns (not live); tuna fish (not live).

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 processed vegetables; preserved vegetables; processed fruits; processed garlic; preserved garlic; processed mushrooms; preserved mushrooms; processed olives; preserved olives; processed laver; processed truffles; processed potatoes; preserved potatoes; processed beans; preserved beans; fruit juices for cooking; tomato juice for cooking may have the same purpose as the opponent’s sauces in Class 30, since the former can be in the form of ‘sauces’ used to enhance the flavour of food. They can also coincide in their producers, end users and distribution channels. Furthermore, they are in competition. Therefore, they are similar to a high degree.

The contested olive oil; olive oil for food; rape oil for food; rapeseed oil for food; sesame oil; sesame oil for food are similar to the opponent’s sauces in Class 30. The purpose and method of use of these goods is similar. The relevant public and distribution channels may coincide. In addition the goods may be considered to be in competition.

Contrary to the above reasoning on vegetables and fruits, the following contested goods cannot be sold as sauces, namely dried vegetables; crystallised fruits; frozen fruits. Furthermore, the contested gherkins; laver; toasted laver; dried truffles; potato flakes; tofu; Kimchi (fermented vegetables); Kimchi (fermented vegetable dish); fruit chips; fruit pulp; raisins; dairy products; milk products; milk; milk beverages; milk based beverages (milk predominating); eggs; soups; preparations for making soups; meat, fish, poultry; ham; preserved meats; salted meats; meat extracts; liver pastes; liver pate; processed meat products; processed fish; salted fish; preserved fish; fish fillets; fish roe; fish spawn; lobsters (not live); spiny lobsters (not live); sea cucumbers (not live); prawns (not live); tuna fish (not live); food products made from fish. have no relevant points in common with the opponent’s goods in Class 30. The mere fact that all the goods under comparison are foodstuffs is not sufficient to find them similar. Under the criteria of the comparison, the goods are not similar because they clearly have different natures and methods of use. Moreover, usually these goods have different commercial origins and end users. Furthermore, they are neither complementary nor in competition. Therefore, these goods are dissimilar. Additionally, they are clearly dissimilar to the remaining goods of the earlier mark in Classes 1 and 5 that consist of ‘‘yeast and yeast based products’ for medical or industrial use, respectively. There are no relevant points of contact and reference is made to the previous assertions on dissimilarity that are relevant here.

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.

The degree of attention is considered to be average.

3. The signs

UMAMEX	UMAMIX
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 marks have no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘UMAM*X’. They only differ in their fifth letters, ‘E’ of the earlier mark and ‘I’ of the contested sign.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the sequence of letters ‛UMAM*X’, present identically in both signs. The pronunciation differs in the sound of the fifth letter ‘E’ of the earlier mark, and ‘I’ of the contested sign.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

The goods are partly identical, partly similar to different degrees and partly dissimilar. The degree of attention is average. The signs are considered visually and aurally highly similar.

As regards the visual similarity of the signs, it should be taken into account that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Therefore, the fact that the only visual difference between the signs is placed on the fifth letter of the signs makes it is more likely that consumer may oversight the difference between the signs.

Aurally, the signs have five letters in common out of six. The marks are therefore articulated in a highly similar manner, they only differ in their last vowels ‘E’ and ‘I’ Moreover, the sequence of syllables, rhythm and intonation of the signs is highly similar. The mere difference in the fifth letters of the signs is not sufficient to outweigh the similarities in the beginning and end of the signs, and thus the overall impression created by the signs is of a phonetic similarity of a high degree.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Due to the high visual and aural similarity, the absence of any dominant or non-distinctive elements in the signs, and the identity and similarity to different degrees of the goods, a likelihood of confusion cannot be excluded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 14 808 687.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods 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 European Union trade mark registration No 2 296 325.

Since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Manuela RUSEVA

Juan Antonio MORALES PAREDES

Martin EBERL

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.