OPPOSITION No B 2 258 302

Mondelez Deutschland Coffee GmbH, Langemarckstrasse 4-20, 28199 Bremen, Germany (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)

a g a i n s t

Eco Green Progress Energy Hydroponics Ltd trading as Eco Green Progress Hydroponics Ltd, 65, Ag. Sikelianou Str., Psychiko, 15451 Athens, Greece (applicant), represented by Zemberis, Markezinis, Lambrou & Associates Law Firm, 18, Omirou Street, 10672 Athens, Greece (professional representative).

On 30/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 258 302 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa and artificial coffee; Artificial coffee, Chicory [coffee substitute], Chocolate beverages with milk, Chocolate-based beverages, Cocoa, Cocoa beverages with milk, Cocoa products, Cocoa-based beverages, Coffee, Coffee (Unroasted -), Coffee beverages with milk, Coffee flavorings [flavourings], Coffee-based beverages, Iced tea, Infusions, not medicinal, Tea, Tea-based beverages, Vegetal preparations for use as coffee substitutes.

2. European Union trade mark application No 11 868 411 is rejected for all the above goods. 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 11 868 411, namely against all goods in Class 30. The opposition is based on international trade mark registration No 723 338 designating Denmark and Sweden. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

ADMISSIBILITY

According to Rule 15(2)(c) EUMIR, the notice of opposition shall indicate the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) of the Regulation are fulfilled.

According to Rule 17(2) EUTMIR, if the notice of opposition has not been filed within the opposition period, or if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c), and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

According to Article 41(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EUTM application. The contested application was published on 24/07/2013. Therefore, the time limit for the opponent to file its opposition expired on 24/10/2013.

In its submission of further facts, evidence and arguments on 09/03/2016 the opponent for the first time invoked Article 8(2)(c) EUTMR.

Therefore, this ground was invoked as a basis of the opposition after the expiry of the opposition period. Consequently, the opposition must be rejected as inadmissible, as far as is based on this ground.

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

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

Class 30: Coffee, coffee extracts, coffee substitutes, coffee-based beverages and preparations therefor, tea.

The contested goods are the following:

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour; Ices; treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Cooking salt; Salt for preserving foodstuffs; Meal; Corn meal; Flour-milling products; Marinades; Almond paste; Starch for food; Chow-chow [condiment]; Husked oats; Husked barley; Flavorings, other than essential oils, for beverages; Flavorings, other than essential oils, for cakes; Aromatic preparations for food; Flavorings, other than essential oils; Essences for foodstuffs, except etheric essences and essential oils; Infusions, not medicinal; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Garden herbs, preserved [seasonings]; Oatmeal; Crushed oats; Oat-based food; Malt for human consumption; Cocoa beverages with milk; Coffee beverages with milk; Chocolate beverages with milk; Cloves [spice]; Ham glaze; Gluten prepared as foodstuff; Star aniseed; Aniseed; Glucose for culinary purposes; Ice for refreshment; Cereal preparations; Baking soda [bicarbonate of soda for cooking purposes]; Malt extract for food; Noodle-based prepared meals; Fondants [confectionery]; Pasta; Dough; Baking powder; Sea water for cooking; Allspice; Cocoa; Corn, milled; Corn, roasted; Cinnamon [spice]; Capers; Curry [spice]; Seasonings; Condiments; Relish [condiment]; Coffee flavorings [flavourings]; Artificial coffee; Coffee; Unroasted coffee; Ketchup [sauce]; Quiches; Chicory [coffee substitute]; Bean meal; Fruit coulis [sauces]; Turmeric for food; Couscous [semolina];  Meat pies; Meat gravies; Custard; Cream of tartar for culinary purposes; Preparations for stiffening whipped cream; Barley meal; Crushed barley; Linseed for human consumption; Thickening agents for cooking foodstuffs; Yeast; Ferments for pastes; Mayonnaise; Macaroni; Meat tenderizers, for household purposes; Maltose; Mint for confectionery; Sausage binding materials; Rice-based snack food; Nutmegs; Mustard; Spices; Beer vinegar; Oat flakes; Tomato sauce; Vinegar; Ice, natural or artificial; Iced tea; Vegetal preparations for use as coffee substitutes; Potato flour for food; Pesto [sauce]; Binding agents for ice cream; Pepper; Peppers [seasonings]; Ginger [spice]; Pasties; Pies; Pizzas; Groats for human food; Soya bean paste [condiment]; Cocoa-based beverages; Tea-based beverages; Coffee-based beverages; Puddings; Leaven; Gluten additives for culinary purposes; Ravioli; Spring rolls; Rice; Sago; Pasta sauce; Soya sauce; Dressings for salad; Sauces [condiments]; Sandwiches; Cheeseburgers [sandwiches]; Saffron [seasoning]; Celery salt; Semolina; Mustard meal; Wheat flour; Powders for ice cream; Cake powder; Soya flour; Chocolate-based beverages; Sushi; Spaghetti; Tacos; Tabbouleh; Tapioca; Tapioca flour for food; Tortillas; Breadcrumbs; Tea; Chutneys [condiments]; Noodles; Vermicelli [noodles]; Seaweed [condiment]; Wheat germ for human consumption; Hominy; Hominy grits; Gruel, with a milk base, for food.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 30

For the purpose of comparison, most of the contested goods in this class can be classified in the following categories: coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; convenience foods and savory snacks; flavourings; binding agents for culinary purposes; thickening and stiffening agents for culinary purposes. The remaining contested goods in this class, which do not fall into those categories, are: meat tenderizers, for household purposes and sea water for cooking.

The contested coffee, coffee beverages with milk, coffee-based beverages; coffee (unroasted -); artificial coffee, chicory [coffee substitute]; vegetal preparations for use as coffee substitutes; tea; iced tea; tea-based beverages in the category of coffee, tea, cocoa and artificial coffee are identical to the opponent’s coffee, coffee extracts, coffee substitutes, coffee-based beverages and preparations therefor, tea, either because they are identically listed in Class 30 of the earlier mark (including synonyms), or because they are included in or overlap with the goods of the earlier mark or vice versa.

Some other goods in this category namely chocolate beverages with milk; chocolate-based beverages; cocoa; cocoa beverages with milk; cocoa products; cocoa-based beverages; infusions, not medicinal are at least similar to the opponent’s coffee based beverages and coffee based beverages containing milk in Class 30, since both categories of goods are (stimulating) beverages of plant origin. As a consequence they are in competition with each other and can coincide in nature, purpose, method of use, end users and distribution channels.

The contested coffee flavorings [flavourings] in the same category are substances (powders, liquids, etc.) used to give a coffee flavour to other foodstuffs or beverages. Although they differ in nature, they have the same purpose and method of use as the opponent’s goods. Therefore, they are similar to a low degree.

However, the remaining contested goods in the other categories, i.e. rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; convenience foods and savory snacks; flavourings; binding agents for culinary purposes; thickening and stiffening agents for culinary purposes; meat tenderizers, for household purposes and sea water for cooking have no relevant points in common with to the opponent’s coffee and tea beverages. Even though the opponent’s goods are for human consumption, this is not enough for finding similarity with the contested foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food which tend to have a different origin. Furthermore, they are not imperative for the consumption of the other and are not commonly substituted for one another and even if found in large department stores, the goods in comparison would not be placed next to each other. Therefore, they are dissimilar to the opponent’s goods in Class 30.

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 various degrees are directed at the public at large. The degree of attention will be average.

3. The signs

MILEA
Earlier trade marks	Contested sign

The relevant territories are Sweden and Denmark.

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).

In this respect it must be noted that the earlier mark, being a single word mark, has no element that could be clearly considered more distinctive or dominant (visually eye catching) than other elements.

However, the contested figurative mark does. In relation to the goods in question, the words ‘Fresh Line’ will be perceived by the relevant public as referring to a product range of recently made or obtained beverages and the black drop above the word ‘melia’ as a reference to colour and/or liquid form of the (final) product. Therefore, these weak elements are clearly less distinctive than the meaningless word ‘melia’. Furthermore, due their relatively small script and location underneath the word ‘melia’, the words ‘Fresh Line’ will be considered to be of secondary importance to the other, more eye‑catching elements of the contested sign.

Visually, both signs are composed of a word containing the same five letters, three of which are placed in the same order: ‘M-L-A’. The only difference is that their vowels, the ‘E’ and ‘I’, change place. However, this difference must be considered a rather minor one, as it occurs in a less prominent position, hidden between the more noticeable identical letters marking the beginning, centre and ending of the marks and merely concerns a mere swop of the same letters. Whilst the signs further differ in the additional words ‘Fresh Line’ and the figurative device of a drop in the contested sign, these elements have little impact on the overall visual impression due to subordinate role of the words ‘Fresh Line’ and weak character of both elements. Therefore, the signs are visually similar to an average degree.

Also, aurally, both signs are composed of a word having three syllables, namely: ‘MI‑LE-A’ and ‘ME-LI-A’ and the same letter sequence, ‘M‑L‑A’. The fact that the central vowels ‘E’ and ‘I’ are interchanged is not enough to dispel the similarity arising out of the highly similar pattern and rhythm produced by the more striking sound of the identical first letters of each syllable. Furthermore, considering that the words ‘Fresh Line’ of the contested sign are not likely to be pronounced due to their subordinate location and obvious reference to the goods in question, the marks must be considered aurally similar to a high degree.

Conceptually, the words ‘MILEA’ of the earlier mark and ‘MELIA’ of the contested sign will be perceived as meaningless, fanciful, terms. As mentioned above, the words ‘Fresh Line’ and the device element of the contested sign will be perceived as meaningful and to this extent the signs are not conceptually similar. However, these elements will have very little influence on the overall perception of the signs in question, because they will be perceived as referring to the liquid and fresh character of the goods in question and not as an indicator of origin or element that could distinguish the signs conceptually.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 public in the relevant territory. 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 (eighth recital of the CTMR). 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, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods 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 has been concluded above, the contested goods in Class 30 were found partly identical, partly similar to various degrees and partly dissimilar to those of the earlier mark and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

The marks in dispute have been found to be visually similar to an average degree and aurally to a high degree while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them. Indeed, the only meaningful elements, i.e. the words ‘Fresh Line’ and the device of a drop, will not have much of an impact on the overall perception of the signs, considering that they will be perceived as referring to the liquid and fresh character of the goods in question and not as an indicator of origin or element that could distinguish the signs conceptually.

Thus, on the basis of all the foregoing, also taking into account that the average consumer only rarely has the chance to make a direct comparison between different marks but must place his/her trust in the imperfect picture of them he/she has kept in mind, the mere change of position of the letter ‘I’ and ‘E’ in the only verbal element of the earlier mark and the more distinctive and eye-catching verbal element of the contested sign are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could reasonably believe that the contested goods come from the same undertaking or from economically-lined undertakings.

Having regard to the principle of interdependence, according to which a higher degree of similarity between the marks counteracts a lower degree of similarity between the conflicting goods and services and vice versa, it is reasonable to find that this does not only apply to the identical and similar goods but also to the lowly similar goods. Considering that the lowly similar coffee flavorings [flavourings] are relatively cheap daily consumer products, the average consumer of these goods cannot be assumed to possess a level of sophistication that would enable him to safely distinguish between the marks at hand.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark. The rest of the contested goods 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 cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 04/11/2013 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After several extensions of the cooling off period this this time limit was expired on 09/03/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Adriana VAN ROODEN

Reiner SARAPOGLU

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.