OPPOSITION No B 2 721 010

Vegetalia, S.L., Mas Montserrat (S/N), Castellcir, 08183 Barcelona, Spain (opponent), represented by María José Garreta Rodríguez, Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Lutz Convenience Food GmbH, Justus-von-Liebig-Str. 48, 86899 Landsberg am Lech, Germany (applicant), represented by Peter A. Rätsch, Kaiser-Wilhelm-Ring 35, 40545 Düsseldorf, Germany (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 721 010 is upheld for all the contested goods.

2.        European Union trade mark application No 14 684 138 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 684 138 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 521 875 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 5: Food and dietetic substances adapted for medical or veterinary use, baby food, infant food.

Class 29: Meat, fish, poultry and game; meat extracts; fruits and vegetables and canned vegetables, frozen, dried and cooked; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa and coffee substitutes; rice; tapioca and sagu; flour and preparations made from cereals; bread, pastry and confectionery; ice creams; sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Grains and agricultural, horticultural and forestry products, not included in other classes; live animals; fruits and vegetables and fresh vegetables; seeds; plants and flowers; animal feed; malt.

Class 32: Beers; mineral and aerated waters and other soft drinks; fruit-based beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Import and export services; retail services in shops and via global data transmission networks; wholesale; mail order; catalogue sales; sales promotion for third parties.

Class 43: Restaurant services (food); temporary accommodation.

The contested goods are the following:

Class 29: Tofu; Preserved soya beans for food; Prepared potatoes and potato products of all kinds, included in class 29, including in the form of flakes, powdered potato, croquettes, French fries, fried potatoes, potato fritters, rösti (fried grated potato cakes), potato pancakes, crisps and sticks; Beans being ready meals; Fresh, chilled and frozen prepared meals, semi-prepared meals and partly prepared meals based on plants, consisting predominantly of plant proteins and/or soya proteins, other than soya flour; Dietetic food, not adapted for medical use, based on proteins, included in class 29; Vegetarian delicatessen foods, Consisting predominantly of soya-based meat substitute products; Fresh, chilled and frozen prepared meals, semi-prepared meals and partly prepared meals, consisting predominantly of soya beans and potatoes; Foodstuffs, namely prepared meals being meat substitutes consisting of plant products, in particular soya beans; Vegetarian spreads; All the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products.

Class 30: Flour and preparations made from cereals, cereals, husked wholegrain cereals, in particular wheat, oats, barley, rye, millet, corn and buckwheat, including the aforesaid goods in the form of mixtures and other preparations, in particular wheat bran, wheat germ, corn meal, corn semolina, linseed, muesli and muesli bars; Foodstuffs made from cereals; Rice; Bread; Pastry and confectionery; Fresh, chilled and frozen prepared meals, prepared meals being meat substitutes consisting of cereal products; Semi-prepared meals and Semi-prepared meals, Mainly consisting of rice, Noodles, maize, Couscous (semolina), Soya flour and/or Cereals; Farinaceous foods; Pizzas, quiches; Soya flour; Soya sauce, Tacos; Tapioca, sago; Pasta and wholemeal pasta; Noodles, fresh noodle meals, fresh noodle ready meals, in particular canneloni, lasagne, tortellini, ravioli, including all the aforesaid meals in frozen form; Baguettes and ready-to-eat toasted sandwiches or rolls mainly filled with cheese; Dietetic food, not adapted for medical use, based on carbohydrates, included in class 30; All the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products.

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 applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

The contested tofu; preserved soya beans for food; prepared potatoes and potato products of all kinds, included in class 29, including in the form of flakes, powdered potato, croquettes, French fries, fried potatoes, potato fritters, rösti (fried grated potato cakes), potato pancakes, crisps and sticks; dietetic food, not adapted for medical use, based on proteins, included in class 29; vegetarian spreads. All the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are included in, or overlap with, the broad category of the opponent’s fruits and vegetables and canned vegetables, frozen, dried and cooked. Therefore, they are identical.

The contested beans being ready meals; fresh, chilled and frozen prepared meals, semi-prepared meals and partly prepared meals based on plants, consisting predominantly of plant proteins and/or soya proteins, other than soya flour; vegetarian delicatessen foods, consisting predominantly of soya-based meat substitute products; fresh, chilled and frozen prepared meals, semi-prepared meals and partly prepared meals, consisting predominantly of soya beans and potatoes; foodstuffs, namely prepared meals being meat substitutes consisting of plant products, in particular soya beans. All the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products can have the same origin, purpose and method of use as the opponent’s fruits and vegetables and canned vegetables, frozen, dried and cooked. When the ingredient can be considered as being the main ingredient of the prepared dish, a similarity can exist (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 12 & 29). Therefore, these goods are similar.

Contested goods in Class 30

Rice; bread; pastry and confectionery; tapioca, sago; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are included in the broad category of the opponent’s rice; bread; pastry and confectionery; tapioca, sago. Therefore, they are identical.

The contested soya sauce; the aforesaid good in combination with vegetarian meat substitute products, being vegetarian meat substitute product or used for vegetarian meat substitute products is included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested soya flour; the aforesaid good in combination with vegetarian meat substitute products, being vegetarian meat substitute product or used for vegetarian meat substitute products is included in the broad category of the opponent’s flour. Therefore, they are identical.

The contested farinaceous foods; the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products include or overlap with, the opponent’s goods bread and pastry. Therefore, they are identical.

The contested flour and preparations made from cereals, cereals, husked wholegrain cereals, in particular wheat, oats, barley, rye, millet, corn and buckwheat, including the aforesaid goods in the form of mixtures and other preparations, in particular wheat bran, wheat germ, corn meal, corn semolina, linseed, muesli and muesli bars; foodstuffs made from cereals; dietetic food, not adapted for medical use, based on carbohydrates, included in class 30; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are identical to the opponent’s flour and preparations made from cereals, rice because the opponent’s goods are included in, or overlap with, the contested goods.

The contested semi-prepared meals and semi-prepared meals, mainly consisting of rice; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products can have the same origin, purpose and method of use as the opponent’s rice. When the ingredient can be considered as being the main ingredient of the prepared dish, a similarity can exist (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 12 & 29). Therefore, these goods are similar.

The contested baguettes and ready-to-eat toasted sandwiches mainly filled with cheese; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are similar to the opponent’s bread, since they have the same nature, can coincide in producer, end user and distribution channels.

The contested fresh, chilled and frozen prepared meals, prepared meals being meat substitutes consisting of cereal products; semi-prepared meals and semi-prepared meals, mainly consisting of maize, couscous (semolina), soya flour and/or cereals; pizzas, quiches; tacos; rolls mainly filled with cheese; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are similar to the opponent’s preparations made from cereals since they have the same method of use and can coincide in end user and distribution channels.

The contested semi-prepared meals and semi-prepared meals, mainly consisting of, noodles; fresh noodle meals, fresh noodle ready meals, in particular canneloni, lasagne, tortellini, ravioli, including all the aforesaid meals in frozen form; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are lowly similar to the opponent’s preparations made from cereals, since they can coincide in end user and distribution channels. Furthermore, they are in competition. 

The contested pasta and wholemeal pasta; noodles; all the aforesaid goods in combination with vegetarian meat substitute products, being vegetarian meat substitute products or used for vegetarian meat substitute products are lowly similar to the opponent’s preparations made from cereals, since they have the same method of use and can coincide in end user and distribution channels.

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 to varying degrees are directed at the public at large. The degree of attention is considered to 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 two circles in the earlier mark are not descriptive or allusive as they have no meaning in relation to the relevant goods. They are therefore distinctive. However, the two plants protruding from the circle will be of limited distinctiveness as they can be perceived as a reference to the natural character of some of the opponent’s goods.

The element ‘VEGETALIA’ of the earlier sign will be associated with the Spanish word ‘VEGETAL’ which means ’of, relating to, or obtained from plants’. Bearing in mind that the relevant goods are foodstuffs, this element is weaker than average for these goods.

The element ‘VEGETARIA’ of the contested sign will be associated with the Spanish word ‘VEGETARIANO/A’ by the relevant public, which means ‘consisting of vegetables or plants’ or ‘somebody who abstains from eating animal food’. Bearing in mind that the relevant goods are foodstuffs, this element is weaker than average for these goods.

Contrary to the applicant’s arguments, the earlier mark has no elements that could be considered clearly more dominant than other elements, as there is no element that stands out from the rest.

Visually, the marks are similar because they share the first six letters, ‘vegeta’, and the last letter ‘a’. However, the signs differ in their consonants ‘l’ and ‘r’, in the respective seventh letters and in the different representation of the penultimate letter ‘i’ of the marks. 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. Consequently, the identical beginnings of the signs is of particular importance. Also the length of the signs and the fact that the different letters are positioned towards the end of the signs means these will not be clearly identified. As such this difference loses weight.

The marks also differ in the figurative elements present in the earlier sign, which have no counterpart in the contested sign and in the typeface of the respective verbal elements. However, 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).

In the light of the above, even where ‘VEGETALIA and ‘VEGETARIA’ are deemed to be elements weaker than average, the signs are deemed to be visually similar to a low degree.

Aurally, the opposing marks will be pronounced as four syllables, with the pronunciation of the first three syllables ‘ve-ge-ta’ being identical in both cases. The pronunciation of the fourth syllable, ‘lia’ and ‘ria’ respectively, points both to similarities, caused by the presence of the vowels ‘i’ and ‘a’, and to differences, due to the distinction between the consonants ‘l’ and ‘r’. The Opposition Division is of the opinion that the inverted letter will be read as ‘i’ by the vast majority, if not all, of the relevant consumers. The signs also have a very similar rhythm and intonation because they share the same number of syllables and an identical vowel sequence. That being so, the only difference between the letters ‘l’ and ‘r’ is not sufficient to offset the identical nature of the first three syllables and the similarity due to the presence of the vowels ‘i’ and ‘a’ in the pronunciation of the fourth syllable.

Therefore, and once again taking into account the distinctiveness of the elements, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘VEGETALIA’ of the earlier mark and ‘VEGETARIA’ of the contested sign will be associated, as regards the relevant goods, with foodstuffs which do not contain meat. The two plants and the circles will be perceived as such. Despite the fact that the concepts pertinent to both marks are of low distinctiveness, the signs are similar to an average degree. The Opposition Division does not concur with the applicant’s finding that the verbal elements denote different concepts. As seen above, both marks will be understood as relating to plants.

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, despite the presence of an element weaker than average in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical and partly similar to varying degrees while the level of attention of the public at large is average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to a low degree whereas aurally and conceptually they are similar to an average degree.

The verbal elements are identical in most of their letters and, even though the distinctiveness per se of the coinciding part of the signs is lower than average, the distinctiveness of an element of the earlier mark is only one of the factors taken into consideration when assessing likelihood of confusion on the part of the public. In the present case, the verbal elements have identical lengths only differing in one letter in their final part, resulting, overall, in a very similar rhythm and intonation. Furthermore, the figurative aspects of the contested sign, as explained above, are not so striking as to produce a visual impact on the public.

All these aspects contribute to a finding of likelihood of confusion.

The applicant claims that the ending “-ia” is very common in Spanish. However, as correctly stated by the opponent, even if many words in Spanish may have this ending, that does not mean that the word “VEGETALIA” is of common use.

The opposition is also successful insofar as concerns the goods that are similar to a low degree, since the similarity of the marks is enough to outweigh the low similarity of those goods.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 521 875. 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

Eva Inés PÉREZ SANTONJA

Richard BIANCHI

Vanessa PAGE

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.