OPPOSITION No B 2 663 923

Podravka prehrambena industrija d.d., Ante Starčevića 32, Koprivnica (HR) 48000, Croatia (opponent)

a g a i n s t

Barcelonesa Food Ingredients S.L., Carrer Crom 14 – Pol. Ind. Famades, 08940 Cornellà de Llobregat, Spain (applicant), represented by Sugrañes Patentes Y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 663 923 is upheld for all the contested goods, namely

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats.

Class 30: Sauces (condiments); Spices.

2.        European Union trade mark application No 14 819 692 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 350.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 819 692, namely against all the goods in Class 29 and some of the goods in Class 30. The opposition is based on, inter alia, European Union trade mark registration No 2 411 882 and Slovenian trade mark registration No 7 480 552. The opponent invoked Article 8(1)(b) EUTMR for European Union trade mark registration No 2 411 882 and Article 8(1)(b) and 8(5) EUTMR for Slovenian trade mark registration No 7 480 552.

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 2 411 882 and Slovenian trade mark registration No 7 480 552.

1. The goods

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

European Union trade mark registration No 2 411 882

Class 29: Preserved, dried and cooked vegetables, in particular salted and pickled vegetables; soups and soup preparations, including vegetable soup preparations and meat broth concentrates; meat extracts; plant protein and plant extracts for food; mushrooms and garden herbs, as preserves, dried or frozen; not being semi-prepared or prepared meals.

Class 30: Sauces, salad dressings, spices, seasoning salt, condiments, additives for improving the taste of foodstuffs; salt; herb salt and vegetable salt for cooking purposes.

Slovenian trade mark registration No 7 480 552

Class 29: Soups, Meals (preserved).

Class 30: Sauce.

The contested goods are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats.

Class 30: Sauces (condiments); Spices.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods of European Union trade mark No 2 411 882, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Meat extracts are identically contained in both lists of goods (of earlier European Union trade mark No 2 411 882 and the contested mark).

Preserved, dried and cooked vegetables are identically contained in both lists of goods (of earlier European Union trade mark No 2 411 882 and the contested mark).

The contested frozen vegetables overlap with the opponent’s preserved, dried and cooked vegetables. Therefore, they are identical.

The opponent’s meals (preserved) of earlier mark No 7 480 552 can have the contested meat, fish, poultry and game; eggs, milk and milk products as their main ingredients. Therefore, they can have a similar nature and the same purpose. Furthermore, they are often marketed and distributed by the same undertakings and placed on adjacent shelves for sale in shops. Consequently, these goods are considered similar to a low degree.

Preserved, dried and cooked fruits; frozen fruits are similar to a low degree to the opponent’s preserved, dried and cooked vegetables of trade mark No 2 411 882. This is because these goods have the same distribution channels, relevant public and producers.

The contested jellies, jams, compotes are similar to a low degree to the goods preserved, dried and cooked vegetables of earlier mark No 2 411 882. This is because they have the same distribution channels, relevant public and producers.

The contested edible oils and fats are similar to a low degree to the opponent’s salad dressings in Class 30 of earlier mark No 2 411 882. They have the same purpose, distribution channels and relevant public.

Contested goods in Class 30

The contested sauces (condiments); spices are identically contained in the list of goods of earlier trade mark No 2 411 882.

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 and similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Vegeta
Earlier trade marks	Contested sign

The relevant territory is the European Union and particularly Slovenia.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘Vegeta’ is not meaningful in certain territories, for example, in those countries where Spanish or English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slovenian-, Czech-, Polish- and Hungarian-speaking parts of the public.

Earlier European Union trade mark registration No 2 411 882 is the word mark ‘VEGETA’ and earlier Slovenian trade mark registration No 7 480 552 is a figurative mark consisting of the verbal element ‘VEGETA’ in black stylised letters on a white background. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The contested sign is a figurative mark containing the word ‘VEGETALL’ in standard upper case letters, with the last three letters, ‘ALL’, in bold. Under this element, there is a green figurative element depicting leaves.

The figurative element of the contested sign will be associated with ‘green leaves’. Bearing in mind that the relevant goods are ‘natural foodstuff products’, this element is weak for some of the goods, namely meat, fish, poultry and game; eggs; edible oils and fats in Class 29.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the string of letters ‘VEGETA’. However, they differ in the last two letters, ‘LL’, of the contested mark. The signs also differ in the stylisation and colours of the signs and in the figurative element of the contested mark (although, as explained above, this figurative element is weak).

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.

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

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 letters ‛VEGETA’, present identically in all the signs. The pronunciation differs in the sound of the letters ‛LL’ of the contested mark, which have no counterpart in the earlier signs. However, these letters, because they are consonants, are not pronounced very distinctly and will not have a significant effect on the pronunciation of the sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

In the case of earlier trade mark registration No 2 411 882, 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 have 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.

The opponent claims that earlier trade mark No 7 480 552 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 contested goods are partly identical and partly similar to a low degree. They target the public at large with an average degree of attention.

The marks are visually similar to an average degree and aurally similar to a high degree. The conflicting signs coincide in the letters ‘VEGETA’, which constitute all the letters of the earlier signs and six out of eight letters of the contested mark. Furthermore, this string of the letters is at the beginning of the contested mark. The differences between the signs lie in the last two letters, ‘LL’, of the contested sign, which do not have a significant effect on the pronunciation of the sign, as explained above, and in the figurative element, which is weak for some of the contested goods. Moreover, consumers are, in general, less likely to notice differences towards the end of signs, and also the figurative element of the contested sign has a not such a strong impact on the consumer as the word element.

Account must also be 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.

In its observations, the applicant argues that the proof of use submitted by the opponent to prove the existence of the earlier rights is not sufficient. A request for proof of use must be expressed using positive wording and be explicit and unambiguous. In the present case, the applicant did not request that the opponent provide proof of use of the earlier marks. Therefore, the applicant’s arguments regarding the proof of use cannot be taken into consideration.

Furthermore, in its observations, the applicant compares the earlier figurative marks and the contested sign, giving more weight to their figurative elements and to the differences between the marks. Nevertheless, there have been earlier word marks and figurative marks that limit their figurative character to the stylisation of the letters.

The applicant also argues that the earlier trade mark has a low degree of distinctiveness given that there are many trade marks that include the verbal element ‘VEGE’. In support of its argument, the applicant refers to several trade mark registrations in different European Union countries. The applicant also submits printouts from the internet with details of marks containing the prefix ‘VEGE’ or the word ‘VEGETA’ in relation to foodstuffs. It argues that these marks can coexist on the European market.

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 ‘VEGE’. Under these circumstances, the applicant’s claims must be set aside.

In the present case, from the internet printouts submitted by the applicant, it cannot be concluded either that the public does not confuse those marks or that there is no relationship or agreement between the producers. Therefore, the documents submitted by the applicant cannot alter the above conclusion about the existence of likelihood of confusion between the marks in conflict in the present case.

The applicant 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.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Slovenian-, Czech-, Polish- and Hungarian-speaking parts of the public and, therefore, the opposition is well founded on the basis of the opponent’s Slovenian and European Union trade mark registrations. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

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

The opposition is also successful insofar as the goods found similar to a low degree are concerned because the high degree of aural similarity between the signs can outweigh the low degree of similarity between the goods.

Considering all the above, the opposition is well founded under Article 8(1)(b) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(1)(b) EUTMR, it is not necessary to examine the remaining grounds for earlier mark No 7 480 552 or the other earlier marks on which the opposition was based.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of opposing mark No 7 480 552 due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Martin EBERL

Anna POLITI

Vít MAHELKA

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.