OPPOSITION No B 2 247 941

Precocinados Angel Bosch,SL, Pol. Industrial Fonde de Litera, N-II Km 442 Parc 54

22520 Fraga, Spain (opponent), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

Compagnie de Saint Cyr S.A., 2, Place de Strasbourg, 2560 Luxembourg, Luxembourg (applicant), represented by Lexxon Avocats, 57 place de la République, 69002 Lyon, France (professional representative)

On 18/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 247 941 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 808 219. The opposition is based on Spanish trade mark registration No 2 887 800. The opponent invoked Article 8(1)(a) and (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.

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; meat extracts, preserved, dried and cooked. fruit and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats.

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, ready meat, ice

Class 35: retailing, retail sale, catalog sales and sales through worlwide computer networking of food, beverages and pre-cooked plates

Class 43: Services for providing food and drink

The contested goods are the following:

Class 29: Milk and milk products; Edible oils and fats; Dairy-based beverages; Milk beverages, milk predominating; Cream [dairy products]; Edible oils; Milk; Soya milk [milk substitute]; Dried milk; Flavoured milk powder for making drinks; Milk powder; Milk products; Dairy-based beverages; Milk beverages, milk predominating; Cream [dairy products]; Edible oils; Milk; Soya milk [milk substitute]; Dried milk; Flavoured milk powder for making drinks; Milk powder; Milk and milk products; Milk products; Dairy-based beverages; Milk beverages, milk predominating; Cream [dairy products]; Edible oils; Milk; Soya milk [milk substitute]; Dried milk; Flavoured milk powder for making drinks; Milk powder; Milk and milk products; Milk products; Dairy-based beverages; Milk beverages, milk predominating; Cream [dairy products]; Edible oils; Milk; Soya milk [milk substitute]; Dried milk; Flavoured milk powder for making drinks; Milk powder; Milk and milk products; Milk products; Dairy-based beverages; Milk beverages, milk predominating; Cream [dairy products]; Edible oils; Milk; Soya milk [milk substitute]; Dried milk; Flavoured milk powder for making drinks; Milk powder.

Class 30: Drinking chocolate; Cocoa-based beverages; Coffee-based beverages; Chocolate-based beverages; Tea-based beverages; Cocoa-based beverages; Prepared cocoa and cocoa-based beverages; Coffee; Coffee-based beverages; Decaffeinated coffee; Instant coffee; Coffee, tea, cocoa and artificial coffee; Chicory [coffee substitute]; endive used as a substitute for coffee; Chocolate-based beverages; Espresso coffee; Coffee essences; Tea essences; Chocolate beverages with milk; Coffee beverages with milk; Cocoa beverages with milk; Instant cocoa powder; Preparations composed of glucose for use in creaming coffee; Preparations composed of glucose for use as substitutes for cream; Preparations composed of glucose for use as milk substitutes; Chocolate flavored beverage making preparations; Vegetal preparations for use as coffee substitutes; Glucose syrup for use in the manufacture of foods; Glucose syrup for use as a gelling agent for food; Glucose syrup for use as a sweetener for food; Glucose syrup for use as a fermenting aid for food; Glucose syrup for use as a preservative for food; Glucose syrup for use as a texture improver for food; Artificial coffee; Tea substitutes; Sugar; Tea; Tea-based beverages; Vanilla [flavoring] [flavouring]; vanilla; Vanillin [vanilla substitute]; Coffee flavorings [flavourings]; Flavourings for beverages; Coffee beverages with milk; Chicory [coffee substitute]; Chocolate beverages with milk; Powdered shortenings; preparations composed of glucose for use in creaming tea.

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 milk and milk products (listed four times); edible oils (listed six times) and fats; milk (listed five times); milk products (listed five times) are identically contained in both lists of goods (and services).

The contested soya milk [milk substitute] (listed five times); dried milk (listed five times) is included in the broad category of the opponent’s milk. Therefore, they are identical.

The contested milk powder (listed five times); flavoured milk powder for making drinks (listed five times); dairy-based beverages (listed five times); milk beverages, milk predominating (listed five times); cream [dairy products] (listed five times) are included in the broad category of the opponent’s milk products. Therefore, they are identical.

Contested goods in Class 30

The contested coffee (listed twice), tea (listed twice), cocoa and artificial coffee (listed twice); sugar are identically contained in both lists of goods and services.

The contested prepared cocoa; instant cocoa powder are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested decaffeinated coffee; instant coffee; espresso coffee are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested tea-based beverages (listed twice) overlap with the opponent’s tea. They are identical.

The contested coffee-based beverages (listed twice); coffee beverages with milk (listed twice) overlap with the opponent’s coffee. They are identical.

The contested drinking chocolate; chocolate-based beverages (listed twice); cocoa-based beverages (listed three times); cocoa beverages with milk; chocolate beverages with milk (listed twice); chocolate flavored beverage making preparations overlap with the opponent’s cocoa as they are all cocoa-based beverages. They are identical.

The contested chicory [coffee substitute] (listed twice); endive used as a substitute for coffee; vegetal preparations for use as coffee substitutes are various types of coffee substitutions included in the broad category of the opponent’s artificial coffee. They are identical.

The contested preparations composed of glucose for use in creaming coffee; preparations composed of glucose for use as substitutes for cream; preparations composed of glucose for use as milk substitutes; glucose syrup for use in the manufacture of foods; glucose syrup for use as a gelling agent for food; glucose syrup for use as a sweetener for food; glucose syrup for use as a fermenting aid for food; glucose syrup for use as a preservative for food; glucose syrup for use as a texture improver for food; preparations composed of glucose for use in creaming tea overlap with the opponent’s sugar since they are in their nature sugar used for different culinary purposes. They are identical.

The contested tea substitutes are similar to the opponent’s tea since they have the same purpose and method of use, furthermore they may coincide in their relevant publics distribution channels and origin. In addition the goods are in competition with each other.

The contested vanilla [flavouring]; vanilla; vanillin [vanilla substitute] are similar to the opponent’s sauces (condiments) as the goods may coincide in their method of use and their intended purpose. Furthermore, they may have the same distribution channels, relevant public and origin.

The contested tea essences are similar to a low degree to the opponent tea. Likewise, the contested coffee essences; coffee flavorings [flavourings] are similar to a low degree to the opponent’s coffee. The goods have the same purpose, as well the same method of use.

The contested flavourings for beverage, for instance coffee flavourings included in that category, are similar to a low degree to the opponent’s coffee. The goods may have the same purpose and method of use. Furthermore, they may coincide in their distribution channels and relevant publics.

The contested powdered shortenings are dissimilar to the opponent’s goods since they are ingredients used for the preparation of foodstuffs as a sub-category of raw materials. Consequently, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar. None of these goods coincide in any relevant points of contact, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

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 found to be identical or similar to different degrees are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a figurative mark represented as an orange circle containing a stylised drawing of a hot beverage accompanied by the letter ‘T’ depicted in black and the word ‘TENTO’ written in white and vertically (from bottom to top) in which the second letter ‘T’ of that word is stylised.

The contested sign is a figurative mark consisting of the verbal element ‘INSTENT’ written in white title letters and followed by a stylised, beige circular device which might be perceived as the letter ‘O’ or even as a coffee bean. The word is placed against a brown-coloured rectangular background.

The stylised image of a hot beverage from the earlier mark will be associated with a hot beverage or perhaps a soup. Bearing in mind that the relevant goods include foodstuffs and beverages this element is weak for part of these goods, namely for the goods in Class 30 including various prepared hot beverages and soups.

Furthermore, taking into account the relevant goods, the beige circle in the contested sign may be also seen as a coffee bean by a part of the public and since the goods in question include coffee and coffee-based beverages, this figurative element will also have a limited distinctiveness for that part of the public that will pay more attention to the more distinctive verbal element ‘INSTENT’.

The black letter ‘T’ in the earlier mark is the more eye-catching verbal element due to its size and position. However, the contested sign has no elements that could be considered more dominant than others.

Visually, the signs coincide in the letters ‘TENT*’ in their verbal elements, as well as in the final character ‘O’ to the extent that it will be perceived as a letter. However, the signs differ in the first three letters ‘INS’ in the contested sign and in the additional more eye-catching letter ‘T’ in the earlier mark. As regards to this, it must be noted that consumers tend to pay more attention to the beginnings of the signs as they read from left to right. Consequently, the distinctive first part of the contested sign, namely the letters ‘INS’, will have an impact on the overall visual perception of the signs and particularly on distinguishing between them.

Furthermore, the signs differ in their additional figurative elements, even if some are of a limited distinctive character for some of the goods; in particular this is the stylised image of a hot beverage in the earlier mark, as well as the last character ‘O’ in the contested sign to the extent that it will be perceived as a coffee bean. In fact, the signs will also differ in the stylised letter ‘O’ for the public that grasps it this way, as well as in the distinctive stylisation of the second letter ‘T’ in the word ‘TENTO’ in the earlier mark. In addition, the backgrounds against which the verbal elements are placed also show some differences since they frame different geometrical figures, namely a circle in the earlier mark against a rectangle in the contested sign. The additional impact of the different colours, namely a striking orange in the earlier mark versus a chocolate brown in the contested sign, must also be given due consideration. Therefore, for the reasons discussed above, the signs are considered similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TENTO’ to the extent that the stylised ‘O’ in the contested sign will be perceived as a letter and uttered as such. The pronunciation differs in the sound of the letters ‛INS’ of the contested sign, which have no counterparts in the earlier mark and in view of the foregoing, in the letter ‘O’ (for some).. Furthermore, it cannot be excluded that a part of the Spanish public may refer to the earlier mark as [te-tento] uttering also the rather dominant letter ‘T’. Therefore, taking into account these factors, the signs will be similar to an average degree.

Conceptually, although the signs as a whole do not have any particular meaning for the relevant public, the element ‘INSTENT(O)’ in the contested sign, may allude to different cumulative concepts such as 1) the Spanish word ‘instante‘ meaning ‘instant’ 2) the Spanish word ‘instinto’ meaning ‘instinct’. Furthermore, regardless of their level of distinctiveness, the image in the earlier mark will be perceived as a hot beverage and the letter ‘O’ in the contested sign as a coffee bean by a part of the public. Therefore, to the extent that the signs will be associated with different concepts, the letter T and an image of a hot beverage versus a verbal element based on wordplay and/or a coffee bean, they are conceptually not similar. The signs will be further conceptually not similar for the public that perceives the verbal element ‘INSTENTO’ in the contested sign as meaningless.

As the signs have been found similar to a certain extent in some aspects 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.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found identical or similar to different degrees and the degree of attention was considered average.

The conflicting signs are similar to the extent that they have four or five letters in common, depending on consumers’ perception of the character ‘O’ in the contested sign, namely in the letters ‘TENT(O)’. However, account must be taken of the fact that a certain similarity would rather arise on a phonetic level for the public that will utter the signs as [TENTO] and [INSTENTO]. As commented above, the signs are conceptually not similar in any event since for some of the public each of them will allude to particular concepts, ‘INSTENTO’, and the other will contain an image of a hot beverage.

Furthermore, as illustrated above in section c), the signs show significant differences on a visual level. These differences may be summarised as follows: 1) different beginnings of the verbal elements (contested sign starts with the distinctive part ‘INS’); 2) additional verbal and figurative elements in the earlier mark with no counterparts in the contested sign; 3) presence of highly stylised letters in the verbal elements, in particular the letter ‘T’ in the earlier mark’s word ‘TENTO’ and the letter ‘O’ in the contested sign (if perceived as a letter at all); 4) different shapes, circle versus rectangle, and colours of the backgrounds, orange versus brown; 5) different positioning of the conflicting verbal elements, in particular horizontally in the contested sign and vertically in the earlier mark, including the presence of a more eye-catching verbal element, namely the black letter ‘T’. Consequently, bearing in mind that consumers do not usually dissect and analyse signs but perceive them as a whole, the additional and/or different distinctive verbal and/or figurative elements that are clearly perceivable are considered sufficient to exclude any likelihood of confusion.

Furthermore, the Court has stated that when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/09/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). The category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods and services are ordered and/or purchased. An aural or conceptual similarity between signs may be less important in the case of goods and services that are usually examined visually before being bought. In such cases, the visual impression of signs counts more in the assessment of likelihood of confusion. In particular, the visual similarity between signs may have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. For such goods therefore the visual differences are tantamount to a finding of no likelihood of confusion (15/04/2010, T-488/07 ‘EGLEFRUIT, EU:T:2010:145).

In the present case, the goods found to be identical or similar to different degrees, namely the foodstuffs and beverages in Classes 29 and 30, are fairly ordinary consumer products which are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07 ‘EGLEFRUIT, EU:T:2010:145). Therefore, the visual differences carry more weight in the overall assessment and compensate for the aural resemblance between the marks as stated in the aural comparison.

Considering all the above, even taking into account the identical and similar (to varying degrees) goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Steve HAUSER

Vanessa PAGE

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.