OPPOSITION No B 2 404 609

Jacob Fruitfield Foods and Irish Biscuits, 5 Ballygoran Court, Celbridge, Co. Kildare, Ireland (opponents), represented by William Fry, 2 Grand Canal Square, 2, Dublin, Ireland (professional representative)

a g a i n s t

Koninklijke Douwe Egberts B.V., Oosterdoksstraat 80, 1011 DK Amsterdam, The Netherlands (applicant), represented by Brandstock Legal Rechtsanwaltsgesellschaft mbH, Rückertstr. 1, 80336 München, Germany (professional representative)

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 404 609 is upheld for all the contested goods and services, namely:

Class 5: Dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; sugar substitutes for medicinal or therapeutic purposes; herbs; herbal teas for medical purposes; mineral beverage supplements; vitamin preparations.

Class 29: Milk and milk products; milk beverages, milk predominating; milk powder; creamers for beverages; dairy or dairy replacements.

Class 30: Coffee; coffee in filter packing; coffee capsules; portioned coffee; instant coffee; coffee-based beverages; coffee substitutes; coffee extracts; coffee essences; coffee flavourings; tea; instant tea; tea-based beverages; tea substitutes; tea extracts; tea essences; tea flavourings; iced tea; herbal infusions, other than for medicinal use; infusions consisting of tea, herbs, fruits, spices or flavourings or a combination of these products, other than for medicinal use; cocoa; cocoa-based beverages; chocolate-based beverages; honey; natural sweeteners; artificial coffee; iced coffee.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; syrups and other preparations for making non-alcoholic beverages; isotonic beverages; essences for making non-alcoholic beverages; beverages containing soya.

Class 43: Food and drink catering; serving of food and drinks in restaurants and bars; coffee and tea bar services; office catering services for the provision of coffee, tea and non-alcoholic beverages; self-service, carry-out, drive-through restaurant services; cafe, cafeterias, canteens, tea room, deli, snack bar services.

2. European Union trade mark application No 12 852 315 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and/or EUTMIR should be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 852 315 for the word mark ‘JACOBS DOUWE EGBERTS’, namely against all the goods and services in Classes 5, 29, 30, 32 and 43. The opposition is based on Irish trade mark registration No 243 202 for a series of the two word marks ‘JACOBS’ and ‘JACOB’S’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

On 03/12/2015 the applicant filed a limitation request by deleting some of the goods in Class 30 and the application was limited accordingly. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the remaining goods and services in Classes 5, 29, 30, 32 and 43 as detailed further below.

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 5: Food for babies.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, pickled, dried and cooked fruits and vegetables; jams, fruit sauces; eggs, milk and milk products; edible oils and fats; marmalade; sandwich fillings consisting wholly or principally of foods included in Class 29; salads; chilled prepared foods included in Class 29; snack foods and snack bars in Class 29; coleslaw; dairy products; yoghurts; granola yoghurts; desserts made from yoghurt; chilled yoghurt and muesli mixes; chilled desserts and desserts in Class 29; soups; smoothies (milk predominating); prepared meals in Class 29; malted drinks.

Class 30: Sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; snack foods and prepared meals; sandwiches; bread with sandwich fillings; sandwiches fillings consisting wholly or principally of foods included in Class 30; chilled prepared foods in Class 30; snack foods and snack bars in Class 30; food spreads for sandwiches; toasted sandwiches; salad dressings; confectionery; desserts in Class 30; cakes; cake slices; rice; noodles; pasta; prepared meals in Class 30; bread; bread wraps; bread roll sandwiches; ciabattas; paninis; non-medicated confectionery products; popcorn; fillings and toppings for confectionery; mixes for baking; flavourings, essences, bread soda; macaroon; nougat, marzipan, fondant; biscuit crumb; cream powder; custard powder; meringue shells; golden syrup; pizzas and pies; crackers; chocolate biscuit countlines; savoury snacks included in Class 30; baked snacks included in Class 30; chocolate snacks; crisps.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; fresh fruits and vegetables; seeds; malt.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

Class 39: Food delivery services; transport; packaging and storage of goods.

Class 43: Services for providing food and drink; restaurants; cafés.

Following the limitation mentioned in the preliminary remark above, the contested goods and services are the following:

Class 5: Dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; sugar substitutes for medicinal or therapeutic purposes; herbs; herbal teas for medical purposes; mineral beverage supplements; vitamin preparations.

Class 29: Milk and milk products; milk beverages, milk predominating; milk powder; creamers for beverages; dairy or dairy replacements.

Class 30: Coffee; coffee in filter packing; coffee capsules; portioned coffee; instant coffee; coffee-based beverages; coffee substitutes; coffee extracts; coffee essences; coffee flavourings; tea; instant tea; tea-based beverages; tea substitutes; tea extracts; tea essences; tea flavourings; iced tea; herbal infusions, other than for medicinal use; infusions consisting of tea, herbs, fruits, spices or flavourings or a combination of these products, other than for medicinal use; cocoa; cocoa-based beverages; chocolate-based beverages; honey; natural sweeteners; artificial coffee; iced coffee.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; syrups and other preparations for making non-alcoholic beverages; isotonic beverages; essences for making non-alcoholic beverages; beverages containing soya.

Class 43: Food and drink catering; serving of food and drinks in restaurants and bars; coffee and tea bar services; office catering services for the provision of coffee, tea and non-alcoholic beverages; self-service, carry-out, drive-through restaurant services; cafe, cafeterias, canteens, tea room, deli, snack bar services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 5

The contested dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; sugar substitutes for medicinal or therapeutic purposes; herbs; herbal teas for medical purposes; mineral beverage supplements are similar to the opponent’s food for babies since they can have the same purpose, share the same distribution channels and be produced by the same undertakings.

The contested vitamin preparations are similar to the opponent’s food for babies since they can have the same purpose, share the same distribution channels, target the same end users and be produced by the same undertakings.

Contested goods in Class 29

Milk and milk products are identically contained in both lists of goods.

The contested dairy (which must be interpreted as meaning dairy products) is identically covered by the opponent’s dairy products.

The contested milk beverages, milk predominating are included in the broad category of the opponent’s milk products. Therefore, they are identical.

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

The contested creamers for beverages overlap with the opponent’s dairy products. Therefore, they are identical.

The contested dairy replacements are highly similar to the opponent’s dairy products since these goods have the same methods of use and are in competition. Furthermore, they target the same relevant public, share the same distribution channels and are produced by the same undertakings.

Contested goods in Class 30

Honey is identically contained in both lists of goods.

The contested coffee essences; tea essences are included in the broad category of the opponent’s essences. Therefore, they are identical.

The contested coffee extracts; coffee flavourings; tea extracts; tea flavourings are included in, or overlap with, the broad category of the opponent’s flavourings. Therefore, they are identical.

The contested natural sweeteners include, as a broader category the opponent’s honey, treacle. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested coffee and coffee-based beverages include for example frappes and the opponent's milk products in Class 29 include for example milk shakes. Therefore, these goods can share the same distribution channels and be found in the same sections of supermarkets; they can target the same relevant public and be produced by the same undertakings. Furthermore, they are in competition. Therefore, the contested coffee; coffee-based beverages are similar to the opponent's milk products in Class 29.

The contested coffee in filter packing; portioned coffee; coffee capsules; instant coffee; coffee substitutes; tea; instant tea; tea-based beverages; tea substitutes; iced tea; herbal infusions, other than for medicinal use; infusions consisting of tea, herbs, fruits, spices or flavourings or a combination of these products, other than for medicinal use; cocoa; cocoa-based beverages; chocolate-based beverages; artificial coffee; iced coffee are similar to the opponent’s other non-alcoholic drinks in Class 32 since the contested goods consist of or include coffee, tea and cocoa all being beverages and which can therefore often be in competition with various soft drinks or other non-alcoholic beverages covered by the opponent's non-alcoholic drinks, as all these goods are consumed to quench thirst and/or for enjoyment. These goods target the same relevant public and share the same distribution channels. Furthermore, they can also coincide in the same producers. Therefore, all these contested goods are considered similar to the opponent’s other non-alcoholic drinks in Class 32.

Contested goods in Class 32

Mineral and aerated waters and other non-alcoholic beverages are identically contained in both lists of goods.

The contested isotonic beverages; beverages containing soya are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

The contested syrups and other preparations for making non-alcoholic beverages; essences for making non-alcoholic beverages are highly similar to the opponent’s other non-alcoholic drinks because they coincide in the following criteria: They have the same purpose. They are in competition. They coincide in distribution channels. They coincide in end user.

Contested services in Class 43

The contested food and drink catering; serving of food and drinks in restaurants and bars; coffee and tea bar services; office catering services for the provision of coffee, tea and non-alcoholic beverages; cafe, cafeterias, canteens, tea room, deli, snack bar services are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.

The contested self-service, carry-out, drive-through restaurant services are included in the broad category of the opponent’s services of restaurants. Therefore, they are identical.

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 mostly directed at the public at large but some goods are also directed at business customers, such as, professionals in the health care sector with specific professional knowledge or expertise.

The degree of attention in relation to the relevant goods and services will vary from average (in relation to most of the goods and services concerned, e.g. those in Classes 32 and 43) to higher than average (in relation to some of the goods concerned such as dietetic foods adapted for medical purposes, which have an impact on the consumer’s health).

3. The signs

JACOBS	JACOBS DOUWE EGBERTS
Earlier trade mark (1 in the series of 2)	Contested sign

The relevant territory is Ireland.

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 the word mark ‘JACOBS’ and the contested sign is the word mark ‘JACOBS DOUWE EGBERTS’.

The element ‘JACOBS’ of both signs is an ancient Anglo-Saxon surname which, although it exists in the relevant territory and will be perceived as referring to a surname, is not a common surname in Ireland or known by the relevant public as a common surname. Since the surname ‘JACOBS’ has no particular meaning in relation to the goods and services concerned, it is distinctive.

The element ‘DOUWE’ of the contested sign is a male given name of German origin mainly used in Dutch and the element ‘EGBERTS’ is the genitive form of the very rare male given name (and also surname) ‘EGBERT’. Although both Douwe and Egbert are (principally) given names, taking into account that Douwe is not a generally known name in Ireland, that Egbert is also a very rare name, that these words are preceded by a surname (Jacobs) that are usually not followed by first names (in commercial use) and that ‘EGBERTS’ with an ‘S’ makes this word more akin to a surname (in line with for example Jacobs) for consumers in Ireland, the relevant public, or at least a significant part thereof, is likely to perceive both ‘DOUWE’ and ‘EGBERTS’ as consisting of two more unusual surnames. Since these elements of the contested sign will neither have any particular meaning in relation to the goods and services concerned, they are distinctive.

Visually and aurally the signs coincide in the word/sound ‘JACOBS’ which is the only, and distinctive, word of which the earlier mark consists and present at the beginning of the contested sign. However, they differ in the additional words/sounds ‘DOUWE EGBERTS’ of the contested sign, which are also distinctive.

Therefore, the signs are visually and aurally similar to a below average degree overall.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same surname ‘JACOBS’ (which is not a common surname) but the contested sign will also be associated with two additional unusual surnames, which are not present in the earlier mark, the signs are also conceptually similar to a below 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.

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 reputation 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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

In the present case, the goods and services are identical or similar to varying degrees and the degree of attention of the relevant public is average or higher than average depending on the goods and services in question.

Although the contested sign contains the two additional names ‘DOUWE EGBERTS’, which, for the reasons outlined in section c) of this decision, are likely to be perceived by the relevant public as two unusual surnames, which are not present in the earlier mark, the signs are still visually, aurally and conceptually similar to a below average degree on account of the coincidence in the surname ‘JACOBS’, which, although it may not be considered as unusual as ‘DOUWE’ and ‘EGBERTS’, will still not be perceived as a common surname.

When two signs contain the same surname but only one of them also contains a given first name (or another surname as the case may be), the rule of thumb is that normally there will be likelihood of confusion. Consumers might be misled and attribute a common origin to the goods/services concerned. The presence of another surname in one of the conflicting signs will not suffice to safely distinguish the signs in the minds of the consumers since the presence of the same surname, unless it is common, is likely to be perceived as identifying the same, or an economically linked, commercial origin.

In view of the above, even if consumers (both with an average and an higher than average degree of attention) will perceive the differences between the signs on account of the additional elements ‘DOUWE EGBERTS’ (which will be perceived as unusual surnames) in the contested sign, since they will still also recall the same surname ‘JACOBS’ in both signs, which will not be perceived as a common surname, consumers are still likely to attribute the same commercial origin to the identical or similar goods and services offered under the respective signs, or otherwise to commercial origins that are economically linked.

As a result, the Opposition Division finds that there is a likelihood of confusion on the part of public in the relevant territory in relation to all the goods and services concerned, which are either identical or similar to varying degrees.

Therefore, the opposition is well founded on the basis of the opponent’s Irish trade mark registration No 243 202. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

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.