OPPOSITION Nо B 2 264 409

 

"Bozhentsi" EOOD, oblast Gabrovo, obshtina Gabrovo, 5360 Selo Bozhentsite, Bulgaria (opponent), represented by Ivanka Pakidanska, 6 Trapezitsa Street, fl. 1, office 4, 1000 Sofia, Bulgaria (professional representative) 

 

a g a i n s t

 

Aleks Tchilikov, "Svishtovska" Str. 61, entr. "B", ap. 10, 5300 Gabrovo, Bulgaria (applicant).

 

On 08/05/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 264 409 is partially upheld, namely for the following contested goods and services: Class 29: Meat, fish, poultry and game; Meat extracts; Raw-dried, raw-smoked and cooked-smoked meat, Sausages; Lukanka (flat sausage); Sujuk (flat sausage); Ham; Jerky; Liver; Liver pâté; Preserved, cooked and dried fruits and vegetables; Vegetable and fruit salads; Soups; Potato chips; Croquettes; Nuts, processed (for consumption); Soya beans, preserved, for food; Frosted fruits; Fruit chips; Fruit peel; Raisins; Tofu; Jellies, jams, compotes; Eggs, milk and milk products; Condensed milk; Yogurt; Cheese; Milk beverages, milk predominating; Cream [dairy products]; Soya milk (milk substitute); Milk powder; Edible oils and fats; Oil and olive oil for nutritional purposes; Butter; Cocoa butter; Peanut butter; Margarine; Lard for food; Fatty substances for the manufacture of edible fats; Caviar. Class 30: Coffee, Coffee flavorings [flavourings]; Vegetal preparations for use as coffee substitutes; Tea, infusions, not medicinal; Cocoa, beverages flavoured with milk; Coffee beverages with milk; Frozen yogurt; Ice milk (ice cream); Preparations composed of glucose for use as substitutes for milk; Chocolate and cocoa beverages with milk; Sugar, rice, artificial coffee; Flour and preparations made from cereals, Bread, Biscuits, Baked dishes; Rusks; Bread rolls; Crackers; Couscous [semolina]; Noodles; Spaghetti; Corn flakes; Stick liquorice [confectionery]; Pancakes; Ravioli; Pizzas; Sandwiches; Farinaceous foods; Oat-based foods; Muesli, muesli bars; Milled and toasted corn; Flakes (oat and corn); Aniseeds (star-shaped); Popcorn; Potato flour for food; Chips (cereals); Pastry and confectionary; Frozen yogurt [confectionery ices]; Sweetmeats [candy]; Fondant (soft scented candy); Cookies; Waffles; Cakes, sponge cakes, fancy cakes; Bonbons; Halvah; Chocolate; Milk chocolate; Marzipan; Puddings; Tarts; Fruit jellies [confectionery]; Custard; Cake powder; Pralines (sugar coated confectionary products, nuts in particular); Ices; Dairy ice cream; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Mayonnaise; Ketchup (sauce); Soya sauce; Aromatic preparations for food; Spices; Sherbets, chilled (ice). Class 35: Bringing together, for others, of a variety of goods, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods: milk and milk products, Condensed milk, Sour milk (yoghurt), Cheese, Milk beverages (milk predominating), Cream (dairy products), Butter, Frozen yogurt bars, Ice milk (ice cream), Frozen yogurt (confectionery ices), Dairy ice cream. Class 40: Treatment of milk. Class 43: Services for providing food and drink; Food and drink catering; Restaurants; Cafeterias; Cafés; Snack-bars; Temporary accommodation; Hotels; Motels; Tourist homes; Boarding houses; Holiday camp services [lodging]; Retirement homes; Day-nurseries [crèches]; Accommodation bureaux [hotels, boarding houses]; Temporary accommodation reservations; Hotel and boarding house reservations; Providing campground facilities; Rental of meeting rooms; Rental of transportable buildings; Rental of tents; Rental of chairs, tables; Boarding for animals; Providing and preparing confectionery (food and drink).
2.		European Union trade mark application No 11 521 011 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3.		Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 521 011  (figurative mark), namely against all the goods and services in Classes 29, 30 and 43 and against some of the services in Classes 35 and 40. The opposition is based on, inter alia, European Union trade mark registration No 10 079 911 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the course of the proceedings the applicant started filing regularly restrictions of his EUTM application, each time taking one or several items out of his list. Furthermore, in the letters of 25/02/2018 and 26/12/2018 restricting the list of the contested EUTM application, the applicant points out that the opponent had not responded to the applicant´s submissions of 13/10/2017. The Office attempted several times to contact the applicant to confirm the address and means of communication since the applicant is receiving part of the Office´s communications but not the opponent´s submissions in response to the applicant´s observations and to the limitations filed on 15/12/2017 and 25/02/2018. Therefore, the Office has notified by means of public notification these opponent´s submissions and responses to the above limitations, as well as to the limitation filed on 26/12/2018 in which the opponent complains of the applicant´s strategy to delay the proceedings and clearly states that it maintains the opposition against all goods and services applied for and no further restrictions would change the scope of the opposition. The opponent´s submissions in response to the limitation of 12/05/2019 were duly sent to the applicant and the last two limitations do not concern the scope of the opposition.

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 10 079 911 for the figurative mark .

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 29: Meat, fish, poultry and game products; Meat extracts; Slicing sausage; Frankfurters; Lukanka (flat sausage); Sujuk (flat sausage); Thigh ham; Jerky; Liver; Liver pâté; Preserved, cooked and dried fruits and vegetables; Vegetable and fruit salads; Soups; Potato chips and crisps; Potato wedges (sticks) for cooking in a deep fat fryer; Croquettes; Nuts, processed (for consumption); Soya beans, canned, for nutritional purposes; Crystallised fruits; Fruit chips; Fruit peels; Raisins; Dates; Hard caramel; Jellies, jams, compotes; Eggs; Milk and milk drinks; Yoghurts; Balkan cheese (Feta type); Hard cheese; Milk beverages in which milk predominates; Kefir (milk beverage from fermented milk); Kumyss (milk beverage from fermented mare's milk); Cream; Edible fats and oils; Oil and olive oil for nutritional purposes; Butter; Chocolate nut butter; Nut butter; And margarine; Lard for nutritional purposes; Casein for food; Substances for the production of oils for nutritional purposes; Caviar.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Extracts (infusions), for non-medical purposes, herbal teas; Coffee beverages with milk; Chocolate and cocoa beverages with milk; Flour and preparations made from cereals; Bread; Dough pieces; Cookies; Macaroni; Noodles; Crackers; Grain flakes (corn flakes); Baps; Crackers; Crepes; Ravioli; Pizzas; Sandwiches; Farinaceous foods; Oat-based foods; Muesli, muesli bars; Milled and toasted corn; Flakes (oat and corn); Aniseeds (star-shaped); Popcorn; Instant mashed potato; Chips (cereals); Pastry and confectionary; Candy; Fondant (soft scented candy); Dry biscuits; Wafers; Cakes, sponge cakes, fancy cakes; Fruit pies, pies; Puddings; Chocolate; marchpane; Goodies; Halvah; Fruit jellies (confectionery goods); Custard; Cake powders; Pralines (sugar coated confectionary products, nuts in particular); Ices, ice-creams; Honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces, condiments; Mayonnaise; Ketchup (sauce); Soy sauces; Aromatic preparations for food purposes; Infusions, not medicinal; Confectionery ices; Sherbets, chilled (ice).

Class 43: Services for providing food and drink; Restaurants; Bars; Cafés; Snack bars; Canteens; Food and drink catering; Temporary accommodation; Hotels; Motels; Tourist hostels, chalets; Guest houses; Holiday camp services (lodging); Retirement homes; Day-nurseries; Accommodation bureaux [resort hotel services, pensions]; Reservation of short-term accommodation; Hotel and boarding house reservations; Arranging facilities for camping; Reservation and rental of meeting rooms; Rental of portable buildings; Rental of tents; Boarding for animals.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Raw-dried, raw-smoked and cooked-smoked meat, Sausages; Lukanka (flat sausage); Sujuk (flat sausage); Ham; Jerky; Liver; Liver pâté; Preserved, cooked and dried fruits and vegetables; Vegetable and fruit salads; Soups; Potato chips; Croquettes; Nuts, processed (for consumption); Soya beans, preserved, for food; Frosted fruits; Fruit chips; Fruit peel; Raisins; Tofu; Jellies, jams, compotes; Eggs, milk and milk products; Condensed milk; Yogurt; Cheese; Milk beverages, milk predominating; Cream [dairy products]; Soya milk (milk substitute); Milk powder; Edible oils and fats; Oil and olive oil for nutritional purposes; Butter; Cocoa butter; Peanut butter; Margarine; Lard for food; Fatty substances for the manufacture of edible fats; Caviar.

Class 30: Coffee, Coffee flavorings [flavourings]; Vegetal preparations for use as coffee substitutes; Tea, infusions, not medicinal; Cocoa, beverages flavoured with milk; Coffee beverages with milk; Frozen yogurt; Ice milk (ice cream); Preparations composed of glucose for use as substitutes for milk; Chocolate and cocoa beverages with milk; Sugar, rice, artificial coffee; Flour and preparations made from cereals, Bread, Biscuits, Baked dishes; Rusks; Bread rolls; Crackers; Couscous [semolina]; Noodles; Spaghetti; Corn flakes; Stick liquorice [confectionery]; Pancakes; Ravioli; Pizzas; Sandwiches; Farinaceous foods; Oat-based foods; Muesli, muesli bars; Milled and toasted corn; Flakes (oat and corn); Aniseeds (star-shaped); Popcorn; Potato flour for food; Chips (cereals); Pastry and confectionary; Frozen yogurt [confectionery ices]; Sweetmeats [candy]; Fondant (soft scented candy); Cookies; Waffles; Cakes, sponge cakes, fancy cakes; Bonbons; Halvah; Chocolate; Milk chocolate; Marzipan; Puddings; Tarts; Fruit jellies [confectionery]; Custard; Cake powder; Pralines (sugar coated confectionary products, nuts in particular); Ices; Dairy ice cream; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Mayonnaise; Ketchup (sauce); Soya sauce; Aromatic preparations for food; Spices; Sherbets, chilled (ice); Meat tenderizers, for household purposes.

Class 35: Presentation and marketing of goods and services via websites for sale of goods via communications means, namely milk and milk products, Condensed milk, Sour milk (yoghurt), Cheese, Milk beverages (milk predominating), Cream (dairy products), Butter, Frozen yogurt bars, Ice milk (ice cream), Frozen yogurt (confectionery ices), Dairy ice cream; Bringing together, for others, of a variety of goods, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods: milk and milk products, Condensed milk, Sour milk (yoghurt), Cheese, Milk beverages (milk predominating), Cream (dairy products), Butter, Frozen yogurt bars, Ice milk (ice cream), Frozen yogurt (confectionery ices), Dairy ice cream.

Class 40: Treatment of milk.

Class 43: Services for providing food and drink; Food and drink catering; Restaurants; Cafeterias; Cafés; Snack-bars; Temporary accommodation; Hotels; Motels; Tourist homes; Boarding houses; Holiday camp services [lodging]; Retirement homes; Day-nurseries [crèches]; Accommodation bureaux [hotels, boarding houses]; Temporary accommodation reservations; Hotel and boarding house reservations; Providing campground facilities; Rental of meeting rooms; Rental of transportable buildings; Rental of tents; Rental of chairs, tables; Boarding for animals; Providing and preparing confectionery (food and drink).

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

Meat, fish, poultry and game; meat extracts; lukanka (flat sausage); sujuk (flat sausage); jerky; liver; liver pâté; preserved, cooked and dried fruits and vegetables; vegetable and fruit salads; soups; potato chips; croquettes; nuts, processed (for consumption); frosted fruits; fruit chips; fruit peel; raisins; jellies, jams, compotes; eggs, milk; yogurt; milk beverages, milk predominating; cream [dairy products]; edible oils and fats; oil and olive oil for nutritional purposes; butter; cocoa butter; peanut butter; margarine; lard for food; fatty substances for the manufacture of edible fats and caviar are identically contained in both lists of goods (including synonyms).

The contested raw-dried, raw-smoked and cooked-smoked meat, sausages and ham are included in the broad category of, or overlap with, the opponent’s meat. Therefore, they are identical.

The contested soya beans, preserved, for food include, as a broader category, the opponent’s soya beans, canned, for nutritional purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested milk products and cheese include, as broader categories, the opponent’s hard cheese. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested condensed milk is included in the broad category of the opponent’s milk. Therefore, they are identical.

The contested soya milk (milk substitute) is highly similar to the opponent’s milk. Being milk substitutes, the contested goods are used in the same way and are in competition. They are sold in the same sections of supermarkets and target the same public. Moreover, they are produced by the same companies.

The contested tofu refers to an unfermented soya-bean curd, a food with a soft cheese-like consistency made from soya-bean milk, used in Asian and vegetarian cooking. The contested tofu is considered to be similar to the opponent’s soya beans, canned, for nutritional purposes, as it is likely that producers of the latter will also produce the former. Moreover, the goods target the same public and may be distributed through the same channels.

The contested milk powder (which is regular milk in a dehydrated form) and the opponent’s milk coincide in their purpose and nature. Furthermore, these goods may target the same public and are in competition with each other. Therefore, they are considered to be at least similar.

Contested goods in Class 30

Coffee; tea, infusions, not medicinal; cocoa; coffee beverages with milk; chocolate and cocoa beverages with milk; sugar, rice, artificial coffee; flour and preparations made from cereals, bread; crackers; corn flakes; noodles; ravioli; pizzas; sandwiches; farinaceous foods; oat-based foods; muesli, muesli bars; milled and toasted corn; flakes (oat and corn); aniseeds (star-shaped); popcorn; potato flour for food; chips (cereals); pastry and confectionary; fondant (soft scented candy); cookies; waffles; cakes, sponge cakes, fancy cakes; halvah; chocolate; milk chocolate; marzipan; puddings; fruit jellies [confectionery]; custard; cake powder; pralines (sugar coated confectionary products, nuts in particular); ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); mayonnaise; ketchup (sauce); soya sauce; aromatic preparations for food and sherbets, chilled (ice) are identically contained in both lists of goods (including synonyms).

The contested coffee flavorings [flavourings] overlap with the opponent´s aromatic preparations for food purposes. These goods are, therefore, identical.

The contested vegetal preparations for use as coffee substitutes and the opponent’s artificial coffee overlap and are, therefore, identical.

The contested biscuits, baked dishes; rusks; bread rolls; couscous [semolina]; spaghetti; pancakes and tarts are included in the broad category of the opponent´s preparations made from cereals (the latter covering essentially anything that can be made from processed cereals). Therefore, they are identical.

The contested beverages flavoured with milk include, as a broader category, the opponent’s coffee beverages with milk. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested frozen yogurt; stick liquorice [confectionery]; frozen yogurt [confectionery ices]; sweetmeats [candy] and bonbons are included in, or overlap with, the opponent’s broad category of confectionary. These goods are, therefore, considered to be identical.

The contested ice milk (ice cream) and dairy ice cream are included in the broad category of, and therefore identical to, the opponent’s ice-creams.

The contested spices include, as a broader category, the opponent’s aniseeds (star-shaped). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested preparations composed of glucose for use as substitutes for milk are similar to at least a low degree to the opponent’s milk. Being milk substitutes, the contested goods are used in the same way and are in competition. Furthermore, they target the same public.

However, the contested meat tenderizers, for household purposes are dissimilar to all goods and services covered by the earlier mark. The contested goods are enzymatic substances that break down the peptide bonds between the amino acids found in complex proteins. These goods can be found in supermarkets and are thought for household purpose use. However, these goods and all the opponent’s goods and services have a different nature, serve a different purpose and usually have a different commercial origin.

Contested services in Class 35

The opponent specified in its notice of opposition and in its observations submitted on 05/11/2013 (i.e. within the 3-months opposition period ending on that day) that it directs its opposition only against part of the services in Class 35, namely the bringing together, for others, of a variety of goods, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods with respect to particular goods as well as presentation and marketing of goods and services via websites for sale of goods via communications means with respect to particular goods. The opponent also clearly listed the particular goods – object of the contested services, namely milk and milk products, condensed milk, sour milk (yoghurt), cheese, milk beverages (milk predominating), cream (dairy products), butter, frozen yogurt bars, ice milk (ice cream); frozen yogurt (confectionery ices), dairy ice cream.

The applicant maintains in its observations that the opponent’s claim would be vague and would not correspond to the official translation to the specification in Class 35 of the contested mark which would read: bringing together, for others, of a variety of goods, in particular paints, varnishes, lacquers (excluding the transport thereof), enabling customers to conveniently view and purchase those goods;…

In the Opposition Division’s view, indeed, the use of the term ‘in particular’ (which introduces a non-exhaustive list of examples) requires interpretation as to the definition of the exact scope of the contested application in Class 35. However, account is to be taken of the fact that the initial application filed by the applicant contained the vague term bringing together, for others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods and in response to the classification deficiencies raised by the Office, the applicant specified the particular items to which the above services refer. Based on the above clarification, the Opposition Division is of the view that, contrary to the applicant’s claim, the exact scope of the contested services in Class 35 can be defined and that the opponent clearly specified in relation to which goods the applicant’s services in Class 35 are contested.

The activity of retail in goods as a service is referred to in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. Retail services concerning the sale of particular goods are similar 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 bringing together, for others, of a variety of goods, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods concern the following particular goods: milk and milk products; condensed milk; sour milk (yoghurt); cheese; milk beverages (milk predominating); cream (dairy products); butter; frozen yogurt bars; ice milk (ice cream); frozen yogurt (confectionery ices); dairy ice cream. The majority of the said goods were already compared above and found identical to particular goods covered by the opponent’s specification in Classes 29 and 30, with the exception of sour milk (yoghurt) and frozen yogurt bars which are, however, identical respectively to yoghurt (being a synonym of sour yoghurt) and to confectionery (as these goods overlap). Consequently, the contested retail services with respect to particular goods are similar to the respective opponent’s goods.

Contrary to the opponent’s submissions, however, the above principle is not applicable to the remaining contested services in Class 35, namely presentation and marketing of goods and services via websites for sale of goods via communications means: milk and milk products; condensed milk; sour milk (yoghurt); cheese; milk beverages (milk predominating); cream (dairy products); butter; frozen yogurt bars; ice milk (ice cream); frozen yogurt (confectionery ices); dairy ice cream. These contested services consist of providing others, in principal other commercial undertakings, with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. These services are mainly provided by advertising companies who study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a customised strategy regarding the advertising of their goods and services.

These contested services differ in nature and purpose from the opponent’s goods and services in Classes 29, 30 and 43. The conflicting goods and services have different distribution channels, target a completely different public and have a different commercial origin. Furthermore, they are not in competition with, or complementary to each other. Therefore, they are dissimilar.

Contested services in Class 40

Although, in principle, goods and services are different in nature, given that services are intangible whereas goods are tangible, they may be similar if consumers would be likely to think that they come from the same undertaking or economically linked undertakings. The contested treatment of milk covers processing of milk with a view to preparing milk or milk products which then will be put in sale. It follows that these contested services are similar to a low degree to the opponent’s milk in Class 29 as they can have the same producers or suppliers, distribution channels, relevant public and are complementary to each other.

Contested services in Class 43

Services for providing food and drink; restaurants; cafés; snack-bars; temporary accommodation; hotels; motels; holiday camp services [lodging]; retirement homes; day-nurseries [crèches]; accommodation bureaux [hotels, boarding houses]; hotel and boarding house reservations; rental of meeting rooms; rental of transportable buildings; rental of tents; boarding for animals are identically contained in both lists of services (including synonyms).

The contested food and drink catering; cafeterias and providing and preparing confectionery (food and drink) are included in the broad category of the opponent´s services for providing food and drink. Therefore, these services are considered to be identical.

The contested tourist homes; boarding houses and providing campground facilities are included in the broad category of the opponent´s temporary accommodation. Therefore, these services are considered to be identical.

The contested temporary accommodation reservations include, as a broader category, the opponent’s reservation of short-term accommodation. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s goods.

The remaining contested rental of chairs, tables and the opponent´s rental of tents are similar. It is common that the companies providing customers with tables and chairs also offer many other pieces of furniture and equipment that might be necessary for large gatherings such as weddings and other celebrations. Therefore, the services at issue are directed at the needs of the same public. Moreover, the commercial origin of these services is the same, as are the channels of distribution.

2. 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 found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention is considered to be average.

3. 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 earlier mark consists of the word ‘Боженци’ written in slightly stylised Cyrillic letters.

The contested sign is a figurative mark comprising the verbal element ‘БОЖЕНЦИ’ (in slightly stylised capital Cyrillic letters) and its transliteration in Latin characters, ‘BOZHENTSI’, with a stylised wooden cart wheel between the two verbal elements.

A significant part of the consumers in the European Union does not understand Cyrillic script and will not be able to read and pronounce the earlier mark. However, within the European Union, the earlier mark, as well as the verbal element on top of the contested sign, will be read and pronounced by the public in Bulgaria (the Cyrillic alphabet being the official alphabet in Bulgaria) as well as by the part of the public in the Baltic Member States with a very good command of Russian and other parts of Central and Eastern Europe, such as the Czech Republic, Slovakia and Poland, where Russian used to be studied at schools and where part of the population still has at least some basic knowledge of the Russian language (see to this effect 19/07/2017, T-432/16, Медведь, EU:T:2017:527, § 23-31).

This part of the public will have no difficulties to read also the second verbal element of the contested sign written in Latin characters (including the public in Bulgaria where the Latin alphabet is known and widely understood due to its extensive use, not just in industry and commerce but also in mass media).

As pointed out by the opponent, ‘Боженци’ (Bozhentsi in Latin characters) will be seen by the Bulgarian public as referring to the name of a small village in Northern Bulgaria, famed for its fully-preserved architectural style from the Bulgarian Renaissance period. From the perspective of this part of the public, the word ‘Боженци’ will be linked to the geographical origin of at least some of the relevant goods and services (e.g. temporary accommodation in Class 43) and will be consequently of very limited distinctiveness.

However, for the remaining part of the relevant public the verbal elements of the marks are meaningless and, therefore, normally distinctive. Consequently, the Opposition Division deems it appropriate at this point to proceed with the examination of the signs on the basis of the non-Bulgarian part of the public that will be able to read and pronounce the earlier mark and the element in Cyrillic of the contested sign, as listed above.

The figurative element of the contested sign depicting a stylised wooden cart wheel has an average degree of inherent distinctiveness since it has no direct relation to the goods and services at issue.

The contested sign has no element that could be considered clearly more dominant than other elements. However, when a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the denominative element as a point of reference (20/06/2019, T-390/19, WKU, EU:T:2019:439, § 65; 23/05/2019, T-837/17, SkyPrivate, EU:T:2019:351, § 39; 18/02/2004, T-10/03, Contorflex, EU:T:2004:46, § 45).

Visually, the signs coincide in the verbal element ‘Боженци’ of both signs. However, they differ in all other verbal and/or figurative elements of the conflicting signs. On account of the fact that the earlier mark and the element on the top of the contested sign differ only in their respective stylisations, the signs are visually similar, albeit to a lower than average degree.

Aurally, although the contested sign consists of two words, ‘БОЖЕНЦИ’ and ‘BOZHENTSI’, one is a transliteration of the other, which means that the relevant consumers will most likely pronounce the contested sign as a single word and not repeat the same word twice. Therefore, the signs will be pronounced identically.

Conceptually, from the perspective of the relevant public only the figurative element of the contested sign will be associated with a concept. Therefore, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 acquired enhanced distinctiveness (and not inherent distinctiveness, as interpreted by the applicant) in the territory of Bulgaria for milk and milk products, yoghurts and cheese and enjoys an enhanced scope of protection. However, considering the focus on the non-Bulgarian public, the 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 and services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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. 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).

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.

The contested goods and services are partly identical, partly similar to different degrees and partly dissimilar to the opponent’s goods and services.

The signs are visually similar (albeit to a lower than average degree), aurally identical and conceptually not similar.

According to the Opposition Division, the fact that the earlier mark is almost identically reproduced in the element on top of the contested sign (the differences being limited to the respective stylisations) as well as the fact that the second verbal element of the contested sign will be seen by the relevant public as a transliteration into Latin of the word written in Cyrillic, will lead the relevant public to make a connection between the conflicting signs and see the contested sign as a new version or a sub-brand of the earlier mark directed at a different geographical market.

In light of the foregoing considerations and taking into account the notion of imperfect recollection and the interdependence of the various factors, the sufficient degree of similarity between the signs and the earlier mark’s normal degree of distinctiveness, the relevant public could be led to believe that the relevant goods and services come from the same undertaking or economically-linked undertakings.

The Opposition Division takes note of the applicant´s arguments in relation to later trade mark applications and designs containing the element ‘Боженци’ and purportedly tolerated by the opponent. The opponent maintains that these trade mark applications were either filed by undertakings economically linked with the opponent or not tolerated by the latter and submits evidence in this respect. However, as correctly pointed out by the opponent, such later trade mark applications and designs have no bearing on the present proceedings.

For the sake of completeness, it has to be pointed out that while, indeed, in the opponent´s submissions of 05/11/2013 the numbers of the invoked earlier marks were swapped, this is a mere clerical mistake. Consequently, the applicant´s contention that he could not prepare a ´correct and well-grounded reply to the opposition´ must be dismissed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-Bulgarian public that will be able to read and pronounce the earlier mark and the element in Cyrillic in the contested sign (as listed above) and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 trade mark must be rejected for the goods and services found to be identical or similar (including to a low degree only) to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

Since the opposition is partially 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 and reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the European Union trade mark registration No 9 805 896 for the figurative mark .

Since this mark does not cover a broader scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

 

 

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

 

 

Claudia MARTINI

Denitza STOYANOVA-VALCHANOVA

Renata COTTRELL

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.