OPPOSITION No B 1 983 546

Frank Hoffmann Konserven GmbH, Dachsweg 12, 51109 Cologne, Germany (opponent)

a g a i n s t

Victor Mira Ramón, C/ Construcción nº 1, 03380 Bigastro (Alicante), Spain, Victor Manuel Ferrandez García, C/ Construcción nº 1, 03380 Bigastro (Alicante), Spain (applicants), represented by ARS Privilegium S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative).

On 02/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 983 546 is upheld for all the contested goods, namely 

Class 29:        Meat, fish, poultry and games; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats.

Class 30:        Mustard; vinegar, sauces (condiments); spices.

Class 31:        Agricultural, horticultural and forestry products not included in other classes; fresh vegetables and fruits.

2.        European Union trade mark application No 10 365 997 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 365 997 namely against some of the goods in Classes 29, 30 and 31. The opposition is based on European Union trade mark registration No 62 950. 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 29:        Meat, fish, poultry and game; meat extracts; dried fruits and vegetables; jellies, namely meat, fish, fruit and vegetable jellies, jams; edible oils and fats; preserves, namely meat, fish, fruit and vegetable preserves, pickles.

The contested goods are the following:

Class 29:        Meat, fish, poultry and games; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats.

Class 30:        Mustard; vinegar, sauces (condiments); spices.

Class 31:        Agricultural, horticultural and forestry products not included in other classes; fresh vegetables and fruits.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods 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 meat, fish, poultry and games (in plural form); meat extracts; dried fruits and vegetables; jams; edible oils and fats are identically contained in both lists of goods.

The contested jellies include, as a broader category, the opponent’s jellies, namely meat, fish, fruit and vegetable jellies. Therefore, they are considered identical.

The contested preserved frozen and cooked fruits and vegetables are included in the broad category of the opponent’s fruit and vegetable preserves. Therefore, these goods are considered identical.

The contested compotes is a dish of fruit stewed with sugar or in a syrup, while the opponent’s jams is a sweet spread or preserve made from fruit and sugar. These goods have the same nature and purpose in that they are both cooked fruit foodstuffs. They can have the same commercial origin and they are in competition, having the potential to replace one another. Moreover, they are distributed through the same distribution channels and target the same relevant public. Therefore, they are highly similar.

Contested goods in Class 30

The contested sauces (condiments) are highly similar to the opponent’s fruit and vegetable preserves in Class 29 as they have the same purpose. They can coincide in producers, end users and distribution channels. Moreover, they are in competition.

The contested spices are similar to the opponent’s meat extracts, as they have the same purpose, namely to flavour meals. They usually have the same commercial origin, distribution channels and relevant public. Furthermore, they are in competition.

The contested mustard; vinegar are similar to a low degree to the opponent’s meat extracts, as they have the same purpose, namely flavouring meals. They target the same public and are offered through the same distribution channels.

Contested goods in Class 31

The contested agricultural, horticultural and forestry products not included in other classes are land products not having been subjected to any form of preparation for consumption. In particular, agricultural products result from the cultivation of the soil and from farming, and some of them are intended for human consumption; horticultural products include fruits, berries, nuts, vegetables, etc., and forestry products result from the art and science of managing forests, tree plantations and related natural resources. Non-timber forest products include edible fruits and nuts. These goods are similar to a low degree to the opponent’s dried fruits and vegetables in Class 29. Although they do not have the same nature (products not having been subjected to any form of preparation for consumption, versus products prepared for consumption or conservation), they have the same purpose of human consumption and they may be in competition with each other since the final consumer can choose between the same type products being either fresh or processed. Furthermore, they have the same distribution channels and they target the same consumers.

The contested fresh vegetables and fruits are similar to a low degree to the opponent’s dried fruits and vegetables, as they can coincide in end users and distribution channels. Furthermore, they are in competition.

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

3. The signs

VICTOR
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 word mark, ‘VICTOR’, and has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark, composed of several elements: two golden-yellow upper case letters ‘V’ connected by a golden-yellow ampersand ‘&’, protruding from a circle within the background there are different shades of blue which is outlined by two red lines and a gold line in the centre and twelve golden-yellow stars running around the inside edge of the circle. Underneath the verbal element ‘V&V’ is represented the expression ‘Victor & Victor’ in golden-yellow title case letters connected by an ampersand. The protruding verbal element ‘V&V’ of the contested sign, due to its position and size, is considered more dominant (visually eye-catching) than the other elements of this figurative sign.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to determine the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The word ‘VICTOR’, contained in both signs, will be perceived by a significant part of the relevant public as the male first name ‘VICTOR’. It cannot be excluded that for a part of the relevant public, the word ‘VICTOR’ will be perceived as meaning of ‘a person who defeats an enemy or opponent in a battle, game, or other competition’ (information extracted from Oxford English Dictionary on 01/03/2017 at https://en.oxforddictionaries.com/definition/victor). This element is of an average distinctiveness for the relevant goods.

The verbal element ‘V&V’ is most likely to be perceived by the relevant public as the acronyms of the expression ‘VICTOR & VICTOR’, appeared at the bottom of the mark, connected by the conjunction ‘and’, due to the presence of the ampersand symbol (‘&’) which denotes the word ‘and’. However, it cannot be excluded that another part of the relevant public will perceive the single letters ‘V’ and ‘V’ as those letters connected by an ampersand. Irrespective the different perceptions that would be attributed to the verbal element ‘V&V’, the latter is considered to have a normal degree of distinctiveness for the relevant goods.

The figurative element of the twelve stars will be perceived by the relevant public as such, that is, as twelve golden-yellow stars placed consecutively around in the inside edge of a circle. It cannot be excluded that at least a part of the relevant public will perceive it as a depiction of the circle of twelve golden-yellow stars of the European flag. Bearing in mind that the relevant goods are food products in Classes 29, 30 and 31 that can be produced or originate from a country of the European Union, it is considered that this element is weak for these goods since it might simply indicates the place of origin of the goods. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the marks. Consequently, for that part of the public, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. Other figurative features of the contested sign, such as the circle and the blue background, the graphical arrangement of the sign, perform only a decorative function within the mark and, as such, are less distinctive than the other elements with a normal degree of distinctiveness.

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; 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). This principle is fully applicable to the present case, because the relevant public will clearly read and pronounce twice the verbal element ‘VICTOR’ of the contested sign.

Visually, the signs coincide in the word ‘VICTOR’ which forms the entire verbal component of the earlier mark. They differ in the remaining verbal elements of the contested sign, namely the two letters ‘V’ connected by an ampersand (‘V&V’), the verbal element ‘& VICTOR’, as well as the stylisation and figurative elements of the contested sign, as described above.

Therefore, the signs are visually similar to a low 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 word ‘VICTOR’, present identically in both signs. In the contested sign, the verbal element ‘VICTOR’ is repeated and, thus, will be pronounced twice, but it will still be the same verbal element as in the earlier mark. The pronunciation differs to the extent that the contested sign contains the sounds of the additional two letters ‘V’, which are not shared in the earlier mark. Furthermore, they also differ in the pronunciation of the ampersands, which will be recognised by the relevant public, due to its widespread and common use nowadays, as mentioned above, as the conjunction ‘and’, or, depending on the different languages spoken in the relevant territory, as, for example, ‘und’ (in German), ‘et’ (in French) or ‘en’ (in Dutch).

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, id est, the same male personal forename ‘VICTOR’ and as a significant part of the relevant public will most likely see the letters ‘V&V’ of the contested sign as a reference to the initial letter of ‘VICTOR & VICTOR’ and as complementing this element, the signs are conceptually similar to a high degree.

For another part of the public that will perceive the letters ‘V’ and ‘V’ as such, the marks are conceptually similar to an average degree since they coincide in the word ‘VICTOR’.

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

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 goods are partly identical and partly similar (to various degrees).

The signs are visually, aurally and conceptually similar on account of the common element ‘VICTOR’, which forms the entire verbal component of the earlier mark and it is repeated twice in the contested sign. Although the differing element ‘V&V’ of the contested sign is distinctive, it does not alter the fact that the element ‘VICTOR’ has an independent distinctive character in both signs. Furthermore, since the remaining differences between the signs are confined to weak and secondary elements that are essentially decorative, they are insufficient to enable the average consumer to safely distinguish between the signs, taking also into consideration that the degree of attention of the relevant public is considered to be average.

The verbal element ‘V&V’ enjoys a dominant position within the contested sign. It is true that the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or several of its components. Nonetheless, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. The fact that an element is not dominant does not imply in any way that it is negligible. In the present case, the word ‘VICTOR’ in the contested sign is far from being negligible and plays, as mentioned above, an independent distinctive role, since it is clearly perceptible. There is no great variation in the stylisation of this word and it is easily recognisable and legible. In this regard, the Opposition Division points out that the word ‘VICTOR’, present in the contested sign as a separate and clearly identifiable element, reproduces twice the earlier mark in its entirety. Therefore, the marks will be clearly associated by the relevant public due to this common word ‘VICTOR’ which constitutes the earlier mark and which is repeated in the contested sign.  

Considering all the above and also bearing in mind taking into account the principle of interdependence mentioned above and that the earlier mark has a normal degree of distinctiveness and that average consumers rarely have the chance to make a direct comparison between marks, but must trust in their imperfect recollection of them, the Opposition Division considers that the visual, aural and conceptual coincidences between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association between the marks in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 62 950. 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) EUTMIR.

The Opposition Division

Andrea VALISA

José Antonio GARRIDO OTAOLA

Michele M. BENEDETTI-ALOISI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.