OPPOSITION No B 2 453 556

Euromadi Iberica S.A., Laurea Miro 145, 08950 Esplugues de Llobregat (Barcelona),  Spain (opponent), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Борислав Димитров Борисов, кв. ‘Красно село’, бл.12, вх. А, ет. 6 ап. 18, 1680 София, Bulgaria (applicant), represented by Maria Nikolaeva Vladimirova, Polk. G. Yankov Str., bl. 104, office 5, 1797 Sofia, Bulgaria (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 453 556 is upheld for all the contested goods.

2.        European Union trade mark application No 13 123 138 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 123 138 . The opposition is based on international trade mark registration No 614 244 ‘VIVO’ designating France and Portugal, Portuguese trade mark registration No 457 810  and Spanish trade mark registration No 2 500 995(8) . 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 Portuguese trade mark No 457 810  and Spanish trade mark No 2 500 995(8) .

1. The goods and services

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

Earlier Portuguese trade mark No 457 810

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: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; malt.

Earlier Spanish trade mark No 2 500 995(8)

Class 43: Services for providing food and drink; services rendered by individuals or establishments aimed at preparing food and drink for consumption, as well as services destined to providing accommodation, shelter and food in hotels, boarding houses and other establishments providing temporary accommodation. accommodation reservation services for travellers, rendered primarily by travel agencies or brokers; animal shelter services.

The contested goods are the following:

Class 29: Meats; Dairy products and dairy substitutes; Processed fruits, fungi and vegetables (including nuts and pulses); Birds eggs and egg products; Fish, seafood and molluscs; Edible oils and fats; Meat extracts; Preserved fruits; Preserved vegetables; Fruit jellies; Jellies, jams, compotes, fruit and vegetable spreads; Stock; Cooked meat dishes; Prepared salads; Artificial milk based desserts; Desserts made from milk products; Potato chips; Potato snacks; Mashed potato; Soup pastes; Fruit desserts; Soup mixes; Soy chips; Mixes for making soup; Soya [prepared]; Soup powders; Seeds, prepared.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams, frozen yogurts and sorbets; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Salts, seasonings, flavourings and condiments; Rice; Tapioca; Sago; Flour; Cereals; Bread; Vol-au-vents; Confectionery made of sugar; Honey; Syrups and treacles; Yeast; Baking powder; Mustard vinegar; Sauces; Oats (Crushed -); Oats (Crushed -); Porridge oats; Flavoured popcorn; Pizza crusts; Wholewheat crisps; Prepared meals in the form of pizzas; Grain-based chips; Sushi; Processed unpopped popcorn; Microwave popcorn; Pizza; Cereal-based snack food; Chips [cereal products]; Farinaceous food pastes; Ribbon vermicelli; Spaghetti.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; Fresh fruits; Fresh vegetables; Fresh fruits, nuts, vegetables and herbs; Natural seeds; Seeds; Vegetable seeds; Seeds for fruit; Edible seeds [unprocessed]; Malt.

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 goods in Class 29

Fish; meat; meat extracts; edible oils and fats; dairy products (in the opponent’s list of goods referred to as milk products); preserved fruits; preserved vegetables; jellies, jams, compotes are identically contained in both lists of goods.

Some of the contested goods include, as broader categories, or overlap with more specific goods of the opponent. This is the case for the contested seafood, which includes the opponent’s fish, since seafood is considered any form of sea life treated as food; and for the contested processed fruits, fungi and vegetables (including nuts and pulses), fruit and vegetable spreads; fruit desserts; soya [prepared], which include or overlap with the opponent’s cooked fruits and vegetables. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the abovementioned opponent’s goods.

Some of the opponent’s goods include, as broader categories, more specific contested goods. This is the case for the contested birds eggs and egg products, which are included in the broad category of the opponent’s eggs; for the contested desserts made from milk products, which are included in the broad category of the opponent’s milk products; for the contested fruit jellies, which are included in the broad category of the opponent’s jellies; and for the contested potato chips; potato snacks; mashed potato; soy chips, which are included in the broad category of the opponent’s cooked vegetables. Consequently, these goods are identical.

The contested dairy substitutes; artificial milk based desserts coincide with the opponent’s milk products in the method of use. They are normally offered by the same providers, target the same end users and are distributed through the same channels. These goods are also in competition. Therefore, they are highly similar.

The contested molluscs coincide with the opponent’s fish in the method of use, end users, providers and distribution channels. Moreover, these goods are in competition. Therefore, they are similar to a high degree.

The contested seeds, prepared are to be understood as edible seeds; therefore, they coincide with the opponent’s preserved, dried fruits and vegetables in the method of use, providers, end users and distribution channels. Consequently, they are similar.

The contested soup pastes; soup mixes; mixes for making soup; soup powders coincide with the opponent’s spices in purpose, to the extent that these goods add flavour and enhance taste. They are usually offered by the same providers, target the same users and are distributed through the same channels. Therefore, they are considered similar.

The contested prepared salads; stock; cooked meat dishes are similar to a low degree to the opponent’s services for providing food and drink in Class 43. The provision of food and drinks in Class 43 mainly covers the services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not a sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark. In such cases, there is a low degree of similarity. The contested prepared salads; stock; cooked meat dishes are ready-made dishes sometimes sold in supermarkets, but as a general rule served in restaurants. Therefore, the use of these goods while providing food and drink will certainly lead to the conclusion that the provider of the service is responsible for their preparation.

The contested goods in Class 30

Sugar; coffee; tea; cocoa; ice; salt; rice; tapioca; sago; flour; bread; honey; treacle; yeast; baking-powder; mustard; vinegar; sauces are identically contained in both lists of goods.

Some of the contested goods include, as broader categories, or overlap with more specific goods of the opponent. This is the case for the contested bee products, which include the opponent’s honey; for the contested processed grains and goods made thereof; cereals, which include as a broader category the opponent’s preparations made from cereals; for the contested baking preparations, which include the opponent’s baking-powder; for the contested seasonings, which include the opponent’s salt; for the contested condiments, which include the opponent’s sauces (condiments); and for the contested substitutes of coffee, which include the opponent’s artificial coffee. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the abovementioned opponent’s goods.

Some of the opponent’s goods include, as broader categories, or overlap with more specific contested goods. This is the case for the contested confectionery made of sugar; vol-au-vents; sorbets; flavoured popcorn, which are included in the broad category of the opponent’s pastry and confectionery; and for the contested cereal-based snack food; chips [cereal products]; wholewheat crisps; grain-based chips; porridge oats; oats (Crushed – (listed twice); pizza; pizza crust; farinaceous food pastes; ribbon vermicelli; spaghetti, which are included in the broad category of or overlap with the opponent’s preparations made from cereals. Consequently, these goods are identical.

The contested substitutes of teas and cocoa coincide with the opponent’s tea and cocoa in the method of use, providers, end users and distribution channels. These goods are also in competition. Therefore, they are highly similar.

The contested ice creams, frozen yogurts have the same nature and purpose as the opponent’s milk products in Class 29. They are provided by the same entities, target the same end users and are distributed through the same channels. These goods are also in competition. Therefore, they are highly similar.

The contested starch and goods made thereof coincide with the opponent’s flour and preparations made of cereals in end users, providers and distribution channels. The goods are also in competition. Therefore, they are similar.

Natural sweeteners, sweet coatings and fillings, syrups, flavourings coincide with the opponent’s sugar in purpose, end users and distribution channels. They are also in competition. Therefore, they are similar.

The contested processed unpopped popcorn; microwave popcorn coincide in purpose, distribution channels and end users with the opponent’s preparations made from cereals. Since preparations made from cereals cover a large group of snacks, they may also be in competition with the contested processed unpopped popcorn; microwave popcorn. Consequently, these goods are similar.

The contested sushi; prepared meals in the form of pizzas are similar to a low degree to the opponent’s services for providing food and drink in Class 43, for the reasons of complementarity explained in the comparison of goods in Class 29 and because sushi is a dish normally served in restaurants and the use of ready-made sushi while providing the services concerned will certainly give the consumers the impression that it is the provider of the service who is responsible for its preparation.

The contested goods in Class 31

Horticulture and forestry products; fresh fruits; fresh vegetables; malt are identically contained in both lists of goods (including synonyms).

The contested agricultural crops are included in the broad category of the opponent’s agricultural products. Therefore, they are identical.

The contested natural seeds; seeds; vegetable seeds; seeds for fruit; edible seeds [unprocessed] are included in the broad category of the opponent’s seeds. Therefore, they are identical.

The contested nuts and herbs are included in the broad category of the opponent’s agricultural crops and forestry products. Therefore, they are identical.

The contested aquacultural crops are highly similar to the opponent’s agricultural products, as the contested goods (which may include seaweed, watercress and water chestnuts) have a similar nature and purpose (plants used for human consumption either as food or as raw ingredients in other products), can come from similar producers and can target the same end users via similar 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 are directed at the public at large. The degree of attention will range from low to average, since the majority of the relevant goods are cheap products for daily consumption.

3. The signs

Earlier trade marks	Contested sign

The relevant territories are Portugal and 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 earlier marks are identical figurative marks composed of the verbal element ‘Vivó’ written in a rather standard white font, depicted on a red background, surrounded by a white frame. For both the Spanish and Portuguese publics, the verbal element containing the accented letter ‘Ó’ has no meaning. Even though some parts of the public will associate this element with ‘vivo’ – the first person singular of the Spanish verb ‘vivir’ and the Portuguese ‘viver’, both meaning ‘to live’ – there is no reference to the relevant goods and it does not render the earlier marks non-distinctive, especially when perceived as a whole. The verbal element of the earlier marks is the most distinctive, since the frame and the red background together form a rather standard, label-like shape, which is incapable of indicating the commercial origin of the goods.

Contrary to the opponent’s observations, the contested sign is not a word mark, but a figurative sign depicting a transparent bottle on a black background incorporating the verbal element ‘Vibo’ in a circular frame. The verbal element ‘Vibo’ has no meaning for either the Portuguese or the Spanish public and is therefore distinctive.

The figurative element of the contested mark depicts a bottle. Taking into account that some of the goods in Class 29, namely some types of dairy products, edible oils, stock, and Class 30, namely syrups, honey, vinegar, are normally sold in bottles, this element is considered non-distinctive for these goods. It has a normal degree of distinctiveness for the remaining goods. However, it should be noted that 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 three out of the four letters of their verbal elements and in these elements being surrounded by a frame. They differ in the penultimate letters in their verbal elements (‘V’ in the earlier marks and ‘B’ in the contested sign), the accent over the final letter ‘O’ in the earlier marks, the red background of the earlier marks, the black background of the contested sign and the depiction of the bottle in the contested sign, which is non-distinctive for some of the goods in Classes 29 and 30. Account is taken of the fact that the verbal elements of all the signs are the only elements that consumers can refer to; therefore, their high degree of coincidence is particularly important.

Overall, the signs are visually similar to a low degree.

Aurally, only the elements ‘Vivó’ and ‘Vibo’ can be taken into account. These elements have the same length, and the consonants ‘v’ and ‘b’ will be identically pronounced by the Spanish-speaking public. However, the acute accent over the letter ‘o’ in the earlier marks changes their rhythm, rendering the pronunciation of the marks highly similar rather than identical. The part of the Spanish public that will disregard the acute accent in the earlier marks will identically pronounce the verbal elements of the signs.

The Portuguese-speaking public pronounces the letters ‘v’ and ‘b’ slightly differently. This minor difference would be the only difference in pronunciation for the part of Portuguese public that disregards the acute accent in the earlier marks. For the part of the public that perceives the accent on the last letter of the earlier marks, the rhythms of the signs will also be slightly different. Nonetheless, the signs will be pronounced in a highly similar way.

Overall, the signs are aurally at least highly similar for the Spanish-speaking public and aurally highly similar for Portuguese-speaking public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public in the relevant territories that sees the acute accent in the earlier marks (for which the verbal elements of the signs have no meanings), the conceptual comparison is not possible for the goods in Classes 29 and 30 for which the depiction of the bottle is non-distinctive. For the rest of the goods, the signs are conceptually not similar, since the contested mark contains a depiction of a bottle, which will be perceived as such.

For the part of the public in the relevant territories that disregards the acute accent, the element ‘Vivo’ in the earlier marks has a meaning, as explained above, and the element ‘Vibo’ in the contested sign is a fanciful word. In that case, the signs are conceptually not similar for some of the goods in Classes 29 and 30, for which the depiction of the bottle is non-distinctive. For the rest of the goods, the signs are conceptually dissimilar.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory, and even the perception of the verbal element ‘Vivó’ as ‘Vivo’ does not influence the distinctiveness of the earlier marks, since its meaning is not related to the relevant goods. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

In the present case, the vast majority of the goods are identical, and some are similar to a high, average or low degree. The signs are visually similar to a low degree and aurally at least highly similar for the Spanish-speaking public and aurally highly similar for the Portuguese-speaking public. The conceptual comparison is not possible for part of the public, and for another part of the public the signs are conceptually not similar or dissimilar.

The earlier marks enjoy a normal degree of distinctiveness.

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). In the present case, the aural identity or high degree of similarity between the signs and the identity and similarity between the goods offset the low degree of visual similarity between the signs, especially given that the degree of attention of the relevant public ranges between low and average. This public will not refer to the contested mark by describing the bottle but will pronounce the word depicted on the bottle, and thus the visual and aural similarities between the verbal elements of the signs become more important in the evaluation of the likelihood of confusion and therefore are sufficient to outweigh the low degree of similarity between some of the goods.

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).

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 Portuguese trade mark No 457 810 and Spanish trade mark No 2 500 995(8). It follows that the contested trade mark must be rejected for all the contested goods.

As the above mentioned earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Ioana MOISESCU	Birgit Holst FILTENBORG	Zuzanna STOJKOWICZ

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.