OPPOSITION No B 2 457 862

Manuel Santiago Rodriguez, Avda. de les Alegries, 41, 17310 Lloret De Mar, Spain (opponent), represented by Molero Patentes y Marcas S.L., Paseo de la Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative)

a g a i n s t

Santiago & Santiago, Rua Principal, s/n, Montemuro, apartado 51, 2669-909 Malveira, Portugal (applicant), represented by Simões, Garcia, Corte-Real & Associados – Consultores, LDA., Rua Castilho 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative).

On 25/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 457 862 is upheld for all the contested goods.

2. Community trade mark application No 12 860 813 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 860 813. The opposition is based on Community trade mark registration No 12 643 987. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

The contested goods are the following:

Class 29: Birds eggs and egg products; dairy products and dairy substitutes; oils and fats.

Contested goods in Class 29

Oils and fats are identically contained in both lists of goods.

The contested birds eggs and egg products are included in the broad category of the opponent’s eggs to the extent that egg products include powdered eggs, white of eggs and yolk of eggs. Therefore, they are identical.

The contested dairy products and dairy substitutes include, as a broader category, the opponent’s milk products. Since the Opposition Division cannot dissect ex officio the broader category of the applicant’s goods, they are considered identical to the opponent’s goods.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a figurative mark containing the verbal element ‘Santiago’ in title case and, underneath it, starting under the letter ‘o’, the letters ‘FiV’. These two elements are written in a stylised green font. The letters ‘F’ and ‘V’ underneath are in upper case and the letter ‘i’ is in lower case. A small palm tree in the same green colour is depicted at the top of the letter ‘t’ of ‘Santiago’.

The contested sign is a figurative mark containing the verbal element ‘Santiago’ in a standard black font and depicted on a green background. Underneath these elements, the word ‘Naturalmente’ is written in a stylised black font. The two word elements are written in title case.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘Santiago’ written in title case. However, they differ in the word elements appearing underneath the word element ‘Santiago’: ‘FiV’ in the earlier trade mark and ‘Naturalmente’ in the contested sign. The figurative depiction of the palm tree has no counterpart in the contested sign. The green background of the contested sign has no counterpart in the earlier trade mark. Furthermore, the word elements of the earlier trade mark are written in green whereas they are written in black in the contested sign.

Aurally, the pronunciation of the signs coincides in the syllables ‘SAN/TI/A/GO’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛FiV’ of the earlier mark, and in the sound of the word element ‘Naturalmente’ of the contested sign, neither of which has a counterpart in the other mark.

Conceptually, the public in the relevant territory will perceive the earlier sign and the contested mark as the male name ‘Santiago’. Furthermore, the word element ‘Naturalmente’ of the contested sign will be understood as ‘something done in a natural way’. Moreover, the depiction of the palm tree in the earlier sign will be understood as a type of tree. Since the signs will be associated with similar meanings, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

As explained in part b), the element ‘Naturalmente’ of the contested sign will be associated with ‘something done in a natural way’. Bearing in mind that the relevant goods are foodstuffs, it is considered that this element is weak for these goods, namely for birds eggs and egg products; dairy products and dairy substitutes; oils and fats. The part of the relevant public that understands the meaning of the element will not pay as much attention to this weak element as to the other, more distinctive, element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks.

The element ‘Santiago’ in the earlier mark and in the contested sign is the dominant element as it is the most eye‑catching.

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.

5. 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 are directed at the public at large. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods are identical.

The signs are visually and aurally similar to the extent that they coincide in the verbal element ‘Santiago’ written in title case. However, they differ in the word elements appearing underneath the word element ‘Santiago’: ‘FiV’ in the earlier trade mark and ‘Naturalmente’ in the contested sign. The figurative depiction of the palm tree has no counterpart in the contested sign and the green background of the contested sign has no counterpart in the earlier trade mark. Furthermore, the word elements of the earlier trade mark are written in green whereas they are in black in the contested sign.

The verbal element ‘Naturalmente’ of the contested sign is considered weak for the relevant goods. Moreover, since the verbal element ‘Santiago’ is the distinctive and dominant element of the contested sign, the public will focus its attention on this element.

Furthermore, since the verbal element ‘Santiago’ of the earlier mark is the most eye-catching element, the public will focus its attention on this part of the sign as well.

As for the remaining figurative elements, namely the colouring and font of the letters in the contested sign and in the earlier mark, it should be borne in mind that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the two marks coincide visually, aurally and conceptually in their dominant element, which is of average distinctiveness, namely the verbal element ‘Santiago’.

In addition, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the difference established, which is confined to non‑distinctive or secondary elements and aspects, may go unnoticed by consumers, especially in relation to identical goods.

In view of the foregoing and considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section b) 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.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

The cases the applicant refers to are different trade marks and the only, somewhat, similar trade mark has additional elements and is not comparable to the present case.

This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 12 643 987. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Liliya YORDANOVA

Sandra IBAÑEZ

Ewelina SLIWINSKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.