Green Mushroom Farm International business | Decision 2569377 - Omar Kassem Alesayi Marketing Co. Ltd. v. Green Mushroom Farm B.V.

OPPOSITION DIVISION
OPPOSITION No B 2 569 377
Omar Kassem Alesayi Marketing Co. Ltd., 6th floor Alesayi Plaza, Baghdadiya,
Medina Road, Jeddah 21492, Saudi Arabia (opponent), represented by Abcor B.V.,
Frambozenweg 109/111, 2321 KA Leiden, the Netherlands (professional
representative)
a g a i n s t
Green Mushroom Farm B.V., Jogchem van der Houtweg 84 D, 2678 HA De Lier,
the Netherlands (applicant), represented by Wentholt IP, Nieuwe Hilversumseweg
33, 1406 TC Bussum, the Netherlands (professional representative)
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 569 377 is partially upheld, namely for the following
contested goods and services:
Class 29: Mushrooms, preserved; dried edible mushrooms; mushrooms puree;
mushrooms, preserved; mushrooms, prepared; dried truffles [edible fungi];
truffles, preserved.
Class 31: Mushroom spawn for propagation; fresh shiitake mushrooms;
mushrooms, fresh, for food; fungi; mushrooms, fresh; unprocessed
mushrooms; mushrooms, fresh; truffles, fresh.
Class 35: Retail services in relation to mushrooms; wholesale services in
relation to mushrooms.
2. European Union trade mark application No 14 025 531 is rejected for all the
above goods and services. It may proceed for the remaining services, namely
the following:
Class 35: Import and export of mushrooms;
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 14 025 531. The opposition is based on European
Union trade mark registration No 9 714 577. The opponent invoked Article 8(1)
(b) EUTMR.
On 07/10/2016, the Opposition Division rendered a decision that resulted in the
rejection of the opposition on the grounds that there was no likelihood of confusion,
Decision on Opposition No B 2 569 377 page: 2 of 10
given the different overall impression of the signs, even assuming the identity of the
goods and services involved.
The decision was appealed and the Board of Appeal decided in case R 2246/2016-2
on 03/05/2017. The Board’s decision annulled the contested decision and remitted
the case to the Opposition Division for further prosecution.
The Board considered that the figurative elements in the signs are of limited nature,
that the words “INTERNATIONAL BUSINESS” in the contested sign could be easily
overlooked due to their position and size, and that the degrees of visual and aural
similarities should have been considered to be average, instead of low.
Furthermore, the Board considered that the signs are of similar overall impression
and that, for the identical or similar goods and services, a significant part of the public
might be misled into thinking that those goods and services bearing the contested
mark and the earlier mark come from the same or economically-linked undertakings.
According to the above, the Board concludes the following (See Decision of the
Second Board of Appeal in Case R 2246/2016-2, of 3 May 2017, page 22):
Decision on Opposition No B 2 569 377 page: 3 of 10
PRELIMINARY REMARK - Applicable regulations
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.
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 29: Meat, fish, poultry and game, meat extracts; tuna fish of all kinds,
preserved, dried and tinned cooked fruits and vegetables, and beans, meat and
chicken gravy; jellies, jams, milk and milk products; condensed and sweetened milk
and powered milk; creams; crisps of all kinds, snacks; cornflakes and crisps, eggs,
yoghurt (milk products); edible oils and fats; preserves and gherkins, included in
class 29.
Class 30: Coffee and tea, cocoa, sugar, rice of all kinds; tapioca, sago, artificial
coffee, flour and preparations made from cereals, bread, biscuits, chocolates of all
kinds filled with dried fruits, noodles, pasta, biscuits, cakes and sweetmeats (candy),
pasta, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar,
sauces (condiments), ketchup sauces, tomato purées, herbs and spices, ice, nuts,
fresh pastries, popcorn, snacks, potato crisps.
Class 31: Agricultural, horticultural and forestry products and grains not included in
other classes, live animals, fresh fruits and vegetables and beans, seeds, natural
plants and flowers, foodstuffs for animals, malt; cattle feed; cattle feed for fattening
cattle, coconuts (fruits);pistachio nuts; shrubs; natural fruit trees.
Class 32: Non-alcoholic mineral and aerated waters and other non-alcoholic drinks,
non-alcoholic dark beers; syrups and other preparations for making non-alcoholic
beverages; juices and beverages.
The contested goods and services are the following:
Decision on Opposition No B 2 569 377 page: 4 of 10
Class 29: Mushrooms, preserved; dried edible mushrooms; mushrooms puree;
mushrooms, preserved; mushrooms, prepared; dried truffles [edible fungi]; truffles,
preserved.
Class 31: Mushroom spawn for propagation; fresh shiitake mushrooms; mushrooms,
fresh, for food; fungi; mushrooms, fresh; unprocessed mushrooms; mushrooms,
fresh; truffles, fresh.
Class 35: Import and export of mushrooms; retail services in relation to mushrooms;
wholesale services in relation to mushrooms.
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 Mushrooms, preserved; dried edible mushrooms; mushrooms puree;
mushrooms, preserved; mushrooms, prepared; dried truffles [edible fungi]; truffles,
preserved consist of edible fungi, which are forestry products, prepared in different
ways in order to be preserved. Therefore, they are similar to an average degree to
the opponent´s forestry products in Class 31, in which the fresh mushrooms are
included. The goods herein compared coincide in nature, distribution channels and
points of sale, are in competition with each other, are directed at the same
consumers and can come from the same kinds of undertakings.
Contested goods in Class 31
The contested Mushroom spawn for propagation; fresh shiitake mushrooms;
mushrooms, fresh, for food; fungi; mushrooms, fresh; unprocessed mushrooms;
mushrooms, fresh; truffles, fresh fall in the broad category of the opponent’s forestry
products in Class 31. Therefore, these goods are identical.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Although the nature, purpose and method of use of these
goods and services are not the same, they have some similarities, as they are
complementary and the services are generally offered in the same places where the
goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail services in relation to mushrooms are similar to a low
degree to the opponent’s forestry products in Class 31, where mushrooms are
included.
The same principle applies to the services that consist exclusively of activities
revolving around the actual sale of goods, such as wholesale services. Therefore, the
contested wholesale services in relation to mushrooms are, for the same reasons
described in the previous paragraph, similar to a low degree to the opponent’s
forestry products in Class 31.
Import and export services are not considered to be a sales service and thus cannot
be subject to the same arguments as the comparison of goods with retail services.
Decision on Opposition No B 2 569 377 page: 5 of 10
Import and export services relate to the movement of goods and normally require the
involvement of customs authorities in both the country of import and the country of
export. These services are often subject to import quotas, tariffs and trade
agreements. As they are classified in Class 35, they are considered to relate to
business administration.
These services do not relate to the actual retail or wholesale of the goods; they would
be preparatory or ancillary to the commercialisation of such goods. For these
reasons, goods are to be considered dissimilar to import and export services for
those goods. The fact that the subject matter of the import/export services and the
goods in question are the same is not a relevant factor for finding similarity.
Therefore, according to the above, the contested Import and export of mushrooms
are dissimilar to forestry products in Class 31. These contested services are also
dissimilar to the rest of goods on which the opposition is based. The reasons for this
are that they differ in nature, purpose, method of use, distribution channels and
points of sale. In addition, they are neither complementary nor in competition, are not
directed at the same consumers, and are not likely to come from the same kinds of
undertakings.
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 and services assumed to be identical are directed at
both the public at large and professionals. The attention paid by consumers during
the purchase of these goods and services is deemed to be average, lower than
average or higher than average, depending on their characteristics. For instance, in
relation to some of the goods involved (e.g. mushrooms, fresh) the level of attention
paid is likely to be lower than average, due to the low prices of these goods, and to
the fact that they constitute frequent/daily purchases. For services such as those
related to the wholesale services, directed mainly at professionals, consumers will
pay a higher than average level of attention, due to the high prices of the services,
the fact that they are not purchased daily or to the economic consequences that the
choice could have.