Eat Real | Decision 2492638 - MIP METRO Group Intellectual Property GmbH & Co. KG v. Dinesh Patel
Date Published: Feb 7, 2018
OPPOSITION DIVISION
OPPOSITION No B 2 492 638
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235
Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual
Property GmbH & Co. KG, Eva Schiller, Metro-Str. 1, 40235 Düsseldorf, Germany
(employee representative)
a g a i n s t
Narottam Holdings Limited, The Oberoi Centre, Level 15, Business Bay, Dubai,
United Arab Emirates (applicant), represented by Bond Adams LLP, 94 London
Road, LE2 0QS, Leicester, United Kingdom.
On 02/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 492 638 is upheld for all the contested goods.
2. European Union trade mark application No 13 663 901 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 663 901 . The opposition is based on, inter
alia, European Union trade mark registration No 9 512 609 .
The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 492 638 page: 2 of 7
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 European Union trade mark registration No 9 512 609.
a) The goods
The goods on which the opposition is based are, among others, the following:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and stewed
fruit and vegetables; jellies for food; jams, compotes; eggs, milk and milk products;
edible oils and fats; broth, broth concentrates, fat-containing mixtures for bread
slices, butter, peanut butter, broth concentrates, meat jellies, fruit preserved in
alcohol, preparations for making bouillon, fruit jellies, lobsters, not live, yoghurt,
cocoa butter, crystallized fruits, potato crisps, potato fritters, cheese, Kephir (milk
beverage), coconut butter, coconut, dessicated, soups, croquettes, crustaceans, not
live, liver pâté, almonds, ground, margarine, marmalade, milk beverages, milk
predominating, whey, nuts, prepared, olives, preserved, pickles, mushrooms,
preserved, pollen prepared as foodstuff, raisins, cream, sauerkraut, shellfish, not live,
ham, soya beans, bacon, gelatine for food, preparations for making soup, tofu,
tomato purée, tomato juice for cooking, truffles, preserved, sausages, charcuterie;
antipasti, included in this class, meat, fish, poultry and game products, minced meat
and meat preparations, ready meals and partially cooked meals and salads, mostly
consisting of meat and/or fish and/or poultry and/or sausage and/or game, ready
meals and partially cooked meals and salads, mostly consisting of fruit and/or
vegetables, vegetarian sandwich spreads, included in this class, butter milk, fresh
cream, curd, milk powder, dietetic foods not for medical purposes based on white of
egg, fats, fatty acids, with added vitamins, minerals, trace elements, either
individually or in combination, included in this class, legumes, potatoes and
prepared potato products, included in this class, cheese products and cheese
preparations, coffee whitener, potato dumplings, mashed potatoes, caviar, coconut
milk, snacks, included in this class, extruded potato products for consumption,
included in this class, potato sticks, dried fruits, dried, roasted, salted and/or spiced
hazelnuts, peanuts, macadamia nuts, cashew nuts, pistachio nuts, chips, quark, rösti
(Swiss potato dish), sour cream, soya products as meat replacements, included in
this class, all the above mentioned in class goods also available as preserves or
frozen, as far as this is possible.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee replacement; flours
and cereal preparations, bread, pastries, edible ices; honey, golden syrup; yeast,
baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for
refreshment, flavorings (flavourings), other than essential oils, for beverages,
flavourings other than essential oils, flavorings (flavourings), other than essential oils,
for cakes, thickening agents for cooking foodstuffs, binding agents for ice cream
Decision on Opposition No B 2 492 638 page: 3 of 7
(edible ices), biscuits, sweetmeats (candy), bread rolls, sandwiches, cornflakes, iced
tea, essences for foodstuffs, except etheric essences and essential oils, meat
tenderizers, for household purposes, meat pies, meat gravies, spring rolls, pastries,
cereals, husked barley, tea-based beverages, condiments, glucose for food, gluten
for food, yeast, coffee flavorings (flavourings), coffee-based beverages, cocoa
products, cocoa-based beverages, candy for food, capers, potato flour for food;
biscuits, ketchup (sauce), cake powder, cakes, cake paste, corn, milled, corn,
roasted, corn flour, maltose, malt for human consumption, marzipan, mayonnaise,
farinaceous foods, gruel, with a milk base, for food, nutmeg, flour-milling products,
muesli, noodles, breadcrumbs, pastries, pies, pancakes, pizzas, popcorn, puddings,
popcorn, quiches, ravioli, dressings for salad, sandwiches, leaven, chocolate,
chocolate-based beverages, mustard meal, soya flour, soya sauce, sherbets (ices),
spaghetti, powders for ice cream, starch for food, sushi, natural sweeteners, tacos,
tapioca flour for food, tomato sauces, pasta, tarts, tortillas, glucose for food, waffles,
seasonings, aromatic preparations for food, confectionary, rusks, confectionary for
decorating Christmas trees; ready meals and partially cooked products and salads,
mostly consisting of rice and pasta, baking powder, cereal products, corn snacks,
bread for toasting, bread for sandwiches, all croissants and baguettes, with and
without fillings, crispbread, hamburgers, vegetarian burgers, hot dogs, rice snacks,
produced using extrusion methods, wheat, rice and corn products for food, corn
crisps, popcorn, salt sticks, savoury snacks, pretzels; confectionary, pralines, also
filled, sugar foam products, chocolate products, chocolate marshmallows, wine and
fruit gums, liquorice (confectionery), sweet spreads for bread, insofar as included in
this class, sweets and desserts, pudding powder, red fruit jelly, rice pudding, gnocchi,
tortellini, macaroni, lasagne, spaetzle, Maultaschen (Swabian ravioli), fruit sauces,
ready-made sauces, remoulade, pepper, dietic foods not for medical purposes based
on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements
individually or in combination, included in this class, pot herbs; fruit sauces.
The contested goods are the following:
Class 29: Preserved, dried and cooked fruits, nuts and vegetables; jellies, jams;
eggs, milk and milk products; edible oils and fats; potato crisps; and fruit bars, nut
bars, yoghurt coated bars, cashew and cranberry bars, sultana and pumpkin seed
bars, sesame and peanut bars, date bars, and almond and cashew bars.
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); and
spices, chocolate bars.
Contested goods in Class 29
The contested preserved, dried and cooked fruits, nuts and vegetables; jellies, jams;
eggs, milk and milk products; edible oils and fats; potato crisps are identically
contained in both lists of goods (including synonyms).
The contested and fruit bars, nut bars, yoghurt coated bars, cashew and cranberry
bars, sultana and pumpkin seed bars, sesame and peanut bars, date bars, and
almond and cashew bars are included in or overlap with the opponent’s snacks.
Therefore, they are identical.
Decision on Opposition No B 2 492 638 page: 4 of 7
Contested goods in Class 30
The contested 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); and
spices are identically contained in both lists of goods (including synonyms).
The contested chocolate bars are included in the broad category of chocolate
products. Therefore, they are identical.
b) 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.
c) The signs
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common element ‘REAL’ is meaningful in certain territories, for example, in those
countries where Spanish is understood. Consequently, the Opposition Division finds it
Decision on Opposition No B 2 492 638 page: 5 of 7
appropriate to focus the comparison of the signs on the Spanish-speaking part of the
public.
The element ‘REAL’ will be understood as ‘existing in fact and not imaginary’ by the
relevant public. As it is not descriptive, allusive or otherwise weak for the relevant
goods, it is distinctive.
The element ‘EAT’ of the contested sign is meaningless for the relevant public and is,
therefore, distinctive.
The figurative element consisting of a leaf of the contested sign will be perceived as
such by the relevant public. This element and the stylisation of the contested sign
have a decorative nature.
The graphic elements of the earlier mark have decorative nature.
The marks have no elements that could be considered clearly more dominant than
other elements.
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 ‘REAL’. However, they differ in the word ‘EAT’ of the
contested sign and the figurative elements of the signs.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REAL’,
present in both signs. The pronunciation differs in the sound of the letters ‛EAT’ of the
contested sign.
Therefore, the signs are 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 (Real), the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
Decision on Opposition No B 2 492 638 page: 6 of 7
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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 weak graphic elements in the mark as stated above
in section c) of this decision.
e) Global assessment, other arguments and conclusion
The goods are identical.
The marks are visually, aurally and conceptually similar to an average degree. In
particular, they coincide in the element ‘REAL’ that is the only verbal element of the
earlier mark and is entirely included and has an independent distinctive role in the
contested sign. However, they differ in the word ‘EAT’ of the contested sign and in
the figurative elements of the marks that have a decorative nature.
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).
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).
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).
It is considered that the differences between the marks are not sufficient to overcome
the similarities.
Considering all the above, there is a likelihood of confusion on the part of the
Spanish-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 9 512 609. It follows that the contested trade mark
must be rejected for all the contested goods.
Decision on Opposition No B 2 492 638 page: 7 of 7
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
As the earlier right European Union trade mark registration No 9 512 609 leads 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 right 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
Pedro JURADO
MONTEJANO
Francesca CANGERI
SERRANO
Erkki MÜNTER
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.