AKO | Decision 2669284
Date Published: Oct 11, 2017
OPPOSITION No B 2 669 284
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eileen Hudson, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)
a g a i n s t
Frai’mer Lux, Société à Responsabilité Limitée, Route de Luxembourg, 2, 4833 Rodange, Luxembourg (holder), represented by Cabinet Lavoix, 2 place d’Estienne d’Orves, 75009 Paris, France (professional representative).
On 21/03/2017, the Opposition Division takes the following
1. Opposition No B 2 669 284 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 256 594, namely all the goods in Classes 29 and 30. The opposition is based on, inter alia, international registration No 854 037 designating Benelux, Bulgaria, the Czech Republic, Spain, France, Croatia, Italy, Hungary, Austria, Poland, Portugal, Romania and Slovakia. 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 international registration No 854 037 designating Benelux, Bulgaria, the Czech Republic, Spain, France, Croatia, Italy, Hungary, Austria, Poland, Portugal, Romania and Slovakia.
- The goods
The goods on which the opposition is based are the following:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams, fruit purée; eggs, milk and milk products; edible oils and fats.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, bread, pastry; edible ice, honey, molasses; yeast, baking powder; salt; mustard; vinegar, sauces (seasonings); spices; refreshing ice.
Class 31: Agricultural, horticultural and forestry products and seeds, included in this class; living animals; fresh fruit and vegetables; seeds, fresh plants and flowers; fodder, malt.
Class 32: Beers, mineral waters and aerated waters and other non alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for mixing drinks.
The contested goods, after a limitation requested by the applicant, are the following:
Class 29: Meat, fish, poultry and game; meat extracts; seaweed extracts for food; eggs; cheeses; edible oils and fats; canned fish, meat, crab, fruit and vegetables; prawns and crabs not live; seafood not live; fish meal for human consumption; fish fillets; prepared fish spawn; cooked dishes based on crab, meat, fish and/or seafood.
Class 30: Yeast, baking powder; salt, mustard; vinegar; sauces, (condiments); seaweeds (condiments); salad dressings; spices; ice for refreshment.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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
The contested meat, fish, poultry and game; meat extracts; eggs; edible oils and fats are identically contained in both lists of goods. In addition, the contested canned fruit and vegetables are identical to the opponent’s preserved fruits and vegetables, since they are synonymous.
Moreover, the contested cheeses are a type of milk product and are therefore included in the opponent’s broad category of milk products. Consequently, they are identical.
In addition, the contested fish fillets are included in the broader category of the opponent’s fish; therefore, they are identical.
As regards the contested prawns and crabs not live; seafood not live, it should be noted that in popular language, the word ‘fish’ is used to describe any animal living exclusively in the water, primarily denoting vertebrate animals provided with fins and destitute of limbs, but extended to include various cetaceans, crustaceans, molluscs, etc. Against this background the contested seafood, prawns and crabs not live and seafood not live are considered to be included in the broader category fish covered by the earlier mark. Therefore, they are identical.
The contested canned meat, cooked dishes based on meat are obviously similar to the opponent’s meat, as they have the same purpose, target the same public, may coincide in their distribution channels and are even in competition with each other. The Court has confirmed the finding of similarity between a particular foodstuff and prepared meals mainly consisting of the same particular foodstuff (04/05/2011, T-129/09, Apetito, EU:T:2011:193). It follows that these goods are similar.
Similarly, the contested canned fish and crab; fish meal for human consumption; prepared fish spawn; cooked dishes based on fish, crab and/or seafood are similar to the opponent’s fish, as they have the same purpose, target the same public, have the same distribution channels and are even in competition with each other.
Finally, the contested seaweed extracts for food are considered similar to the opponent’s sauces (seasonings) in Class 30, as they have the same purpose (that of seasoning foodstuffs), can coincide in producers, end users and distribution channels, and are, furthermore, in competition.
Contested goods in Class 30
The contested yeast, baking powder; salt, mustard; vinegar; spices are identically included in both lists of goods.
In addition, the opponent’s refreshing ice and the contested ice for refreshment are synonymous and therefore identical. Likewise, both marks cover sauces. Although they are qualified as seasonings in the opponent’s list of goods and as condiments in the list of contested goods, they are nonetheless synonymous and, therefore, these goods are identical.
Moreover, as the contested salad dressings are a type of sauce, they are included in the opponent’s broader category of sauces (seasonings) and, therefore, these goods are identical.
Finally, the contested seaweeds (condiments) are also similar to the opponent’s sauces (seasonings) in the same class, as they have the same purpose of seasoning foodstuffs, can coincide in producers, end users and distribution channels, and are, furthermore, in competition.
- 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. They consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may therefore vary from low to average (26/04/2016, T-21/15, Dino, EU:T:2016:241, § 20).
- The signs
Earlier trade mark
The relevant territories are the Czech Republic, Spain, Austria, Italy, Benelux, Portugal, Bulgaria, Romania, Slovakia, Poland, Hungary, Croatia and France.
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).
Both marks are figurative marks. The earlier mark consists of the combination of letters ‘ARO’ written in lower case yellow bold letters against a blue background, the upper part and sides of which are rectangular and the lower part of which takes the shape of the red device displayed underneath. This device could be perceived as a tick, that is, a symbol of approval.
The word ‘ARO’ of the earlier mark might be understood by the Spanish- and Portuguese-speaking parts of the public as referring to a ‘hoop’, a ‘ring’ or a ‘rim’ (see http://www.reverso.net/translationresults.aspx?lang=EN&direction=spanish-english and http://www.reverso.net/translationresults.aspx?lang=EN&direction=portuguese-english). For the remaining part of the relevant public, this element conveys no concept. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The figurative elements and colours of the earlier mark are merely decorative and, therefore, are less distinctive than the word element. It is it is very common for rectangles to be used as backgrounds for verbal elements or to highlight information contained in the mark (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27). In addition, the rectangular background is a basic and commonplace geometric shape and, for this reason, it will not – in the presence of word elements – attract the attention of the consumers more than said word elements (12/09/2007, T-304/05, Pentagon, EU:T:2007:271, § 22, by analogy). Moreover, the same is true of the red symbol of approval at the bottom of the sign, which is a banal pictogram (see, as regards the depiction of a zigzag, 13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 39).
Therefore, the verbal element ‘ARO’ is considered more distinctive than the figurative elements. However, due to their size and their role as the background for the word element ‘ARO’, and taking account of the fact that the combination of the two is unusual and somewhat fanciful, the figurative elements will most probably not be overlooked and, therefore, cannot be considered negligible.
Accordingly, neither the figurative elements nor the word element of the earlier mark may be regarded as either dominant (visually eye-catching) or negligible.
It is therefore the overall impression conveyed by the earlier mark which must be taken into account (22/06/2010, T-490/08, CM Capital Markets, EU:T:2010:250, § 43).
The contested sign is composed of a verbal element, ‘AKO’, depicted in fanciful black upper case letters in a gothic-style typeface. Although this verbal element has no meaning as such in any of the relevant languages, it might evoke to the Hungarian-speaking part of the public the word ‘AKÓ’, which is a volume unit that was used before the metric system was adopted.
As the verbal element ‘AKO’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Therefore, it is considered more distinctive than its graphical depiction. The contested sign obviously has no element that could be considered clearly more dominant (visually eye-catching) than other elements.
Before carrying out the comparison of the signs, it must be pointed out that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Visually, the signs coincide in the sequence of letters ‘A*O’, placed in the same order in both marks.
However, they differ in their middle letters, ‘R’ in the earlier mark and ‘K’ in the contested sign placed in the middle in both cases. They also differ in their figurative elements, namely their respective typefaces (a basic typeface in lower case in the earlier mark versus a fanciful gothic typeface in upper case in the contested sign) and the colours of the letters (yellow in the earlier mark versus black in the contested sign), as well as in the figurative device of the earlier mark, which has no counterpart in the contested sign.
Taking into account the fact that, as far as their figurative elements are concerned, the marks differ significantly from each other, it is considered that the partial coincidence in their word elements (in their first letter, ‘A’, and last letter, ‘O’) – which, moreover, are short – creates only a low degree of similarity between the signs.
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 their first letter, ‘A’, and last letter, ‘O’. In addition, as they have the same number of letters, they have the same rhythm.
However, they differ in the sound of the middle letter in both signs, that is, ‘R’ in the earlier mark and ‘K’ in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the Spanish- and Portuguese-speaking parts of the public might perceive a meaning in the earlier mark, and the Hungarian-speaking public might perceive a meaning in the contested mark, as explained above, in each case the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public.
Likewise, although part of the public might perceive a tick, that is, a symbol of approval, in the earlier mark, the contested sign does not convey this concept of approval and, therefore, the signs are not conceptually similar for that part of the public.
For the remaining part of the public, since neither of the signs has a meaning, a conceptual comparison is not possible and does not influence the assessment of the similarity between the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The signs in dispute both have three letters; they are, consequently, short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.
The differing letters are neither aurally nor visually similar. Moreover, the signs are not conceptually similar, at least for a part of the public.
In addition, the graphic depictions of the marks are not similar, which will not go unnoticed by the relevant consumer, even when relying on the imperfect recollection of the marks that he or she has kept in mind.
Indeed, the verbal elements of the signs are in noticeably different fonts. In addition, whereas the verbal element of the earlier mark is in lower case letters, the verbal element of the contested sign is in upper case letters. Finally, the rectangular background on which the earlier mark’s word element is displayed has a particular form – its bottom part consists of two intersecting red lines, evoking a symbol of approval – and has no counterpart in the contested sign.
Taking the above into account, the fact that the signs coincide in two letters is not sufficient to lead to a finding that there is a likelihood of confusion.
The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).
Therefore, the visual differences between the signs, in particular as far as their figurative elements are concerned, are particularly important in the present case and are sufficient to counteract the similarities between the signs.
Considering all the above, even taking into account that the goods are identical or similar, there is no likelihood of confusion on the part of the public.
Consequently, the opposition must be rejected.
The opponent has also based its opposition on earlier German trade mark registration No 3 020 110 533 725. However, this mark covers the same sign as the one that has already been compared and covers the same goods. Moreover, the perception of the German-speaking public has already been assessed, since international registration No 854 037, in relation to which the existence of a likelihood of confusion has been analysed, also covers Austria, where German is the official language. Therefore, the outcome cannot be different as regards the existence of a likelihood of confusion between the contested sign and earlier German registration No 3 020 110 533 725.
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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Carmen SÁNCHEZ PALOMARES
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.