Green Mushroom Farm International business | Decision 2569377 - Omar Kassem Alesayi Marketing Co. Ltd. v. Green Mushroom Farm B.V.
Date Published: Oct 15, 2017
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.
Decision on Opposition No B 2 569 377 page: 6 of 10
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 ‘GREEN’ and the words ‘FARM’, ‘FARMS’ or ‘BUSINESS’ in
the marks are not meaningful in certain territories, for example in those countries
where English is not understood.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the non-English speaking part of the public, such as the Spanish, Italian
and Portuguese consumers.
The earlier mark is formed by two oval shapes. They are both formed by a yellow line
and the depiction of green fields on a green background inside. The one on the upper
part of the mark contains Arabic writing in yellow, and the oval on the lower part of
the mark contains the words “GREEN FARMS”, in Latin characters.
The Opposition Division notes that the earlier mark will be perceived by consumers
as containing two versions of the same mark, one being in Arabic (upper oval shape),
and the other one in Latin characters (lower oval shape). It is therefore likely that
consumers will disregard the Arabic version of the mark, focusing their attention on
the oval shape containing the words in Latin characters, these being the only ones
readable by the public in the relevant territory. The comparison will therefore be
focused on that later part of the mark, namely the following:
Decision on Opposition No B 2 569 377 page: 7 of 10
The contested sign is a figurative mark formed by figurative and verbal elements
contained within a rectangular black background. The upper half of the rectangle
contains the depiction of what seems to be a sunset depicted in different shades of
green. This element can also be perceived as the depiction of a green mushroom´s
underside (gills). The lowest part of the rectangular shape contains the words
‘GREEN MUSHROOM’ in standard white upper-case letters, followed in the next line
by the word ‘FARM’ in standard green upper-case letters, and of the same size as
‘GREEN MUSHROOM’. Below the word ‘FARM’, the terms ‘INTERNATIONAL
BUSINESS’ are written, in much smaller font size.
A negligible element refers to an element that due to its size and/or position is not
noticeable at first sight or is part of a complex sign. In the contested mark, the words
“INTERNATIONAL BUSINESS” are barely perceptible, due to their much smaller
size, the thin letters and the position they occupy within the mark. Consequently, they
are likely to be disregarded by the relevant public. Therefore, these words will not be
taken into consideration, and will not be part of the comparison that follows.
As explained above, for the part of the public on which the comparison is focused
(i.e. the non-English speaking part of the public) the words “GREEN”, “FARMS”,
“FARM” and “MUSHROOM” in the signs are meaningless and therefore of average
distinctive character.
The figurative elements in the marks are, as explained in the Decision of the Second
Board of Appeal, in Case R 2246/2016-2, of 3 May 2017, are of a limited nature.
Following the Board of Appeal´s view in the case referred to, it is considered that the
figurative elements in the marks herein compared are not set out in such a specific
and original way that would help consumers keep them in mind and contribute to
distinguishing between the signs.
In addition, it should be borne in mind that, where a trade mark is composed of verbal
and figurative elements, the former are, in principle, more distinctive than the latter,
because the average consumer will more readily refer to the goods in question by
quoting their name than by describing the figurative element of the trade mark. In
light of the characteristics of the figurative elements of the mark applied for and of the
earlier mark described above, the Opposition Division takes the view that that
general reasoning would apply in the present case. In conclusion, the figurative
elements are likely to be perceived by consumers essentially as decorative elements
and not as elements indicating the commercial origin of the goods and services (by
analogy, 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 45 and the case-law cited
therein)
Although the beginning of a mark cannot call into question the principle that the
examination of the similarity of trade marks must take into account the overall
impression produced by them (26/06/2008, T-79/07, Polaris, EU:T:2008:230, § 42
and the case-law therein cited), consumers generally pay greater attention to the
beginning of a mark than to the end (17/03/2004, T-183/02 & T-184/02, Mundicor,
EU:T:2004:79, § 81). In the present case the beginnings of the marks, namely the
word ‘GREEN’, are identical.
Decision on Opposition No B 2 569 377 page: 8 of 10
For all of the above, it is considered that the most distinctive and the dominant parts
of the marks are their verbal elements, being their figurative elements of less
distinctive character and less visual impact.
Visually, the signs coincide in the term ‘GREEN’, and share the sequence of letters
‘F-A-R-M’ forming one entire term ‘FARM’ of the contested sign, and part of the word
‘FARMS’ in the earlier mark. The signs also coincide in the fact that parts of their
elements are depicted in different shades of green.
The marks differ visually in the ending ‘S’ of the earlier mark, and in the word
‘MUSHROOM’ of the contested mark.
The signs also differ in the way their respective elements are framed, namely within a
yellow and green oval shape in the earlier mark and within a black rectangular shape
in the contested mark. Lastly, they differ in their figurative elements (i.e. green fields
in the earlier mark vs. sunset or a mushroom’s gills in the contested sign).
However, the differing figurative elements are of limited impact for the reasons
explained above, which decrease their weight in the present comparison. In addition,
the coincidences between the marks are found in their most distinctive elements (i.e.
the verbal elements) part of which are found at the beginnings of the marks, which is
where the consumer´s attention is usually focused.
Therefore, and following the Board of Appeal´s analysis in Case R 2246/2016-2, it is
considered that the signs are similar to an average 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
sequence of letters ‘g-r-e-e-n’, present identically at the beginnings of both signs, and
in the sequence of letters ‘f-a-r-m’, which forms the entire term ‘FARM’ of the
contested mark, and the majority of the word ‘FARMS’ in the earlier mark.
The signs differ aurally in the sound of the word ‘MUSHROOM’ in the contested
mark.
For all of the above, the signs are phonetically similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the verbal
elements in the marks as meaningless, the figurative elements in them are still
perceived as having a concept, i.e. green fields in the earlier mark vs. a sunset or a
mushroom’s gills in the contested sign.
As the signs will be associated with a dissimilar meaning, the signs are conceptually
not similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 569 377 page: 9 of 10
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.
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 on which
the comparison is focused.
Therefore, the distinctiveness of the earlier mark for these consumers must be seen
as normal, despite the presence of some elements of lower than average distinctive
character (i.e. the figurative elements) in the mark, as stated above in section c) of
this decision.
e) Global assessment, other arguments and conclusion
The goods and services compared are partly identical, partly similar to different
degrees and partly dissimilar.
The signs at issue are visually and phonetically similar to an average degree.
Furthermore, the phonetic and visual similarities cannot be offset by the fact that they
are conceptually not similar.
In light of the overall impression of the signs, and in line with the Board of Appeal´s
Decision in Case R 2246/2016-2, it is considered that a significant part of the public
might be misled into thinking that, for the goods and services found to be identical or
similar, the contested mark and the earlier mark come from the same undertaking or,
as the case may be, from undertakings that are economically linked.
The applicant refers to previous decisions of the Office to support its arguments.
However, the Office is not bound by its previous decisions, as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous
decisions of the Office are not binding, their reasoning and outcome should still be
duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant
to the present proceedings, since they involve different signs and/or different goods
and/or services. Therefore, the same reasoning and analysis cannot be expected to
be followed and the same conclusion is not necessarily reached.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the non-English speaking part of the public, such as the Spanish, Italian
and Portuguese consumers, and therefore the opposition is partly well founded on
the basis of the opponent’s European Union trade mark registration. As stated above
Decision on Opposition No B 2 569 377 page: 10 of 10
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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade mark.
The opposition is also successful insofar as the contested services that are similar to
a low degree, since the similarity of the signs is enough to outweigh the low similarity
of those services.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this Article and directed at these services cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Ric WASLEY María del Carmen SUCH
SANCHEZ
Vít MAHELKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.