M PASTAMANCINI | Decision 2694696
Date Published: Oct 11, 2017
OPPOSITION No B 2 694 696
Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)
a g a i n s t
Azienda Agricola Mancini, impresa agricola, Località San Rustico snc, 63815 Monte San Pietrangeli, Italy (applicant).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 694 696 is upheld for all the contested goods.
2. European Union trade mark application No 15 042 336 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 042 336. The opposition is based on, inter alia, European Union trade mark registration No 7 021 439. 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 European Union trade mark registration No 7 021 439.
- The goods
The goods on which the opposition is based are, inter alia, the following:
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); spices; ice.
The contested goods are the following:
Class 30: Processed grains, starches, and goods made thereof, baking preparations and yeasts; cannelloni; pasta shells; pasta preserves; flour-based gnocchi; macaroni; macaroni [uncooked]; pasta containing eggs; pasta for incorporating into pizzas; fresh pasta; pasta in the form of sheets; wholemeal pasta; instant noodles; deep frozen pasta; prepared pasta; pasta for soups; dried pasta; spaghetti; noodles; soba noodles [Japanese noodles of buckwheat, uncooked]; instant soba noodles; udon noodles [uncooked]; bean-starch noodles (harusame, uncooked); wholemeal noodles; buckwheat noodles; somen noodles [very thin wheat noodle, uncooked]; dried noodles; dumplings; dried tortellini; tortellini; vermicelli [noodles]; dumpling skins; gnocchi; pasta-wrappings for gyoza; lo mein [noodles]; Asian noodles; instant udon noodles; udon (Japanese style noodles); snack foods consisting principally of pasta; Chinese noodles [uncooked]; egg noodles; ziti.
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.
Yeasts are contained in both lists of goods. These goods are, therefore, identical.
The contested processed grains include, as a broader category, the opponent’s rice. The contested goods made thereof (i.e. of processed grains) include, as a broader category, the opponent’s preparations made from cereals. The contested baking preparations include, as a broader category, the opponent’s baking-powder. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, all these sets of goods are considered identical.
The contested cannelloni; pasta shells; pasta preserves; flour-based gnocchi; macaroni; macaroni [uncooked]; pasta containing eggs; pasta for incorporating into pizzas; fresh pasta; pasta in the form of sheets; wholemeal pasta; instant noodles; deep frozen pasta; prepared pasta; pasta for soups; dried pasta; spaghetti; noodles; soba noodles [Japanese noodles of buckwheat, uncooked]; instant soba noodles; udon noodles [uncooked]; bean-starch noodles (harusame, uncooked); wholemeal noodles; buckwheat noodles; somen noodles [very thin wheat noodle, uncooked]; dried noodles; dumplings; dried tortellini; tortellini; vermicelli [noodles]; dumpling skins; gnocchi; pasta-wrappings for gyoza; lo mein [noodles]; Asian noodles; instant udon noodles; udon (Japanese style noodles); Chinese noodles [uncooked]; egg noodles; ziti are various types of pasta, made from unleavened dough of wheat or buckwheat flour or other products and water, that are used in the preparation of various dishes. They are either identical to the opponent’s preparations made from cereals, because they are included in or overlap with the category, or at least similar to them, because they have the same purpose, distribution channels and relevant public and can also be in competition.
The contested starches and goods made thereof can have the same producers, relevant public and distribution channels as the opponent’s flour. Furthermore, they can be in competition. Therefore, they are similar.
The contested snack foods consisting principally of pasta are foodstuffs with pasta as their main ingredient. They can have the same relevant public and distribution channels as the opponent’s preparations made from cereals. Furthermore, they can be in competition. Therefore, they are similar to a low degree.
- 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 to different degrees are directed at the public at large. The degree of attention is likely to vary from lower than average to average, since some of the goods (e.g. flour) are inexpensive products for daily consumption.
- The signs
Earlier trade mark
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 word ‘PASTA’ is meaningful in certain territories, for example in Italy, where it designates a type of food that is made from flour and water. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.
The earlier mark is a word mark composed of two words, ‘MAMA’ and ‘MANCINI’.
The contested sign is a figurative sign containing a bold upper case letter ‘M’, under which the verbal element ‘PASTAMANCINI’ is depicted in a smaller upper case typeface.
The verbal element ‘MAMA’ of the earlier mark will be understood by the Italian-speaking part of the public as ‘mother’. This is because the Italian equivalent of this word, ‘mamma’, is very similar. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The word ‘MANCINI’ of the earlier mark refers to an Italian surname. Given that this element has no connection with the characteristics of the relevant goods, it has an average degree of distinctiveness.
The letter ‘M’ of the contested sign will be perceived by the relevant public as a letter of the Latin alphabet (see, for example, 08/05/2012, T-101/11, G, EU:T:2012:223, § 56). The distinctiveness of this letter is average, since it does not refer to any of the characteristics of the relevant goods.
It can reasonably be assumed that the Italian-speaking part of the public will split the verbal element ‘PASTAMANCINI’ of the contested sign into two separate words, ‘PASTA’ and ‘MANCINI’, both conveying specific concepts for this part of the public, as explained in detail in the previous paragraphs. That such a dissection is likely is confirmed by the Court, which has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
As explained above, Italian-speaking consumers will associate the word ‘PASTA’ of the contested sign with a particular type of food. Bearing in mind that the relevant goods are different types of pasta and preparations/ingredients related to its production, this element is non-distinctive for these goods. The relevant consumer will perceive this element as merely providing information about the kind of the goods or their purpose. Consequently, the relevant public will not pay as much attention to this element as to the other, distinctive, elements of the sign. As a result, the impact of this element on likelihood of confusion is immaterial.
The last verbal element of the contested sign, ‘MANCINI’, has an average degree of distinctiveness for the relevant goods, for the reasons given above.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
The letter ‘M’ of the contested sign is the dominant element as it is the most eye-catching.
Visually and aurally, the signs coincide in the sequence of the letters/sounds ‘MANCINI’. However, they differ in all the remaining elements/sounds, ‘MAMA’ of the earlier mark and ‘M’ and ‘PASTA’ of the contested sign. Furthermore, they differ visually in the stylisation of the contested sign. When it comes to the aural aspect of the comparison, even though the contested sign also includes the letter ‘M’, this will be taken as a reference to the word ‘MANCINI’ so it will probably not be pronounced.
Considering all the above, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the meanings of the signs and their individual elements given above.
As stated above, the element ‘MANCINI’, included in both signs, will be associated with an Italian surname. To that extent and taking into consideration the concepts of the elements that are of average distinctiveness, ‘MAMA’ and ‘M’, as well as the concept of the element ‘PASTA’, which is devoid of distinctiveness, 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.
- 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 relevant goods from the perspective of the Italian-speaking part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As concluded above, the goods are identical or similar to various degrees and they target the public at large, whose degree of attention varies from lower than average to average. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.
The signs in conflict are similar to an average degree on all levels, as explained in detail in section c) of this decision. The differences between the signs, although some of them lie in elements that are distinctive to an average degree or in a dominant element, are not sufficient to counteract their similarities.
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 covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line, or to endow a trade mark with a new, fashionable image.
In the present case, although the relevant public might detect certain visual, aural and conceptual differences between the two signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the ‘MANCINI’ brand.
Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the Italian-speaking part of the public in the relevant territory, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 021 439. 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.
It follows from the above that the contested sign must be rejected for all the contested goods, even though some of them are similar to a low degree to the opponent’s goods, since, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods is clearly offset by the average degree of similarity between the signs.
As earlier European Union trade mark registration No 7 021 439 leads to the success of the opposition and to the rejection of the contested sign 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).
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.