OPPOSITION No B 2 756 032

Eckes-Granini Group GmbH, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (opponent), represented by Eckes-Granini Group GmbH, Heinrich Prinz Reuss, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (employee representative)

a g a i n s t

Simona Carannante, Via Diocleziano 25, Parco Delta, 80078 Pozzuoli, Italy (applicant).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 032 is upheld for all the contested goods, namely 

Class 29: Drinks based on yogurt; yogurt drinks; drinking yogurts.

2.        European Union trade mark application No 15 431 001 is rejected for all the contested goods It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 431 001, namely against some of the goods in Class 29. The opposition is based on international trade mark registration No 1 006 185 designating the European Union. 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: Preserved, dried and cooked fruits and vegetables; milk and milk products.

Class 32: Mineral waters and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 29: Drinks based on yogurt; yogurt drinks; drinking yogurts.

Contested goods in Class 29

The contested goods drinks based on yogurt; yogurt drinks; drinking yogurts are covered by the earlier broader term milk products in Class 29. These goods are therefore identical.

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

3. The signs

YO
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 contested sign is a figurative mark consisting of the words ‘yo’ and ‘love’. These words are written in stylised letters, superimposing one another, with the word ‘yo’ in green and ‘love’ in pink. There is a pink heart at the beginning of the sign, just behind the word ‘yo’, which seems to reinforce the word ‘love’. There is also a swirl on top of the letter ‘v’, making the letter resemble an ice cream cone. The contested sign has no elements that could be considered clearly more dominant than other elements.

The element ‘yo’ of the earlier mark and the contested sign will be understood by part of the public, namely the English speakers, as an informal greeting. Another part of the public, namely the Spanish-speaking part will perceive it as being the Spanish word for ‘I’ and for the rest it is meaningless. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The word ‘LOVE’ in the contested sign is understood in all the Member States of the European Union, since it belongs to basic English vocabulary and is perceived as meaning: ‘liking something very much’. Together with the love heart device, these elements will be viewed as laudatory, simply evoking the idea that the consumer of the products will like them very much. Therefore, these elements have a slightly lower degree of distinctiveness. Furthermore, the device element resembling an ice cream will be seen as weak as it alludes to the method of preparing the contested goods, i.e. yogurt drinks served in a frozen format.

Visually, the signs coincide in ‘yo’, which is the entire earlier mark and the beginning of the contested sign. The word ‘yo’ stands out in the contested sign as it is depicted in green, while the remaining elements are pink. Furthermore, it is the most distinctive element of the contested sign. The signs differ in the additional weak element ‘LOVE’ in the contested sign as well as the figurative element and stylisation.

Therefore, in view of what has been said about distinctiveness above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘yo’ present identically in both signs. The pronunciation differs in the sound of the letters ‛LOVE’ of the contested mark. Nevertheless, given that this word is less distinctive than ‘yo’, it is also less likely to be pronounced and less likely to attract the consumer’s attention. If it is not pronounced, the marks will be aurally identical. Should the consumer pronounce it, the marks are held to be aurally highly similar.

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 by part of the relevant public, and considering that all the other elements in the contested sign have a lower degree of distinctiveness than the coinciding word ‘yo’, the signs are conceptually highly similar for this part of the relevant public.

For those consumers for whom ‘YO’ has no meaning, concepts will nevertheless be conveyed by the weak word ‘LOVE’, and the figurative elements in the contested sign. All of these elements will have a limited impact on consumers, but nevertheless represent a slight conceptual difference with regard to the earlier mark.  

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 at issue are identical and the signs have been found visually similar to an average degree, aurally identical or highly similar, depending on what is pronounced, and conceptually highly similar where applicable.

The earlier mark consists simply of the distinctive word ‘yo’. This word appears at the beginning of the contested sign and is easily identifiable as it appears in a different colour to all the other elements.

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). Specifically, they will see the contested sign as a stylised depiction of the earlier mark, together with some graphic and laudatory elements designed to promote the opponent’s brand.

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 international trade mark registration No 1 006 185 designating the European Union. 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

Chantal VAN RIEL

Lucinda CARNEY

Saida CRABBE

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.