OPPOSITION No B 2 460 908

Bauli S.p.A., Via G. Verdi, 31, 37060 Castel d'Azzano (Verona), Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Berchet 9, 35131 Padova, Italy (professional representative)

a g a i n s t

Halago – Alimentaria, S. A., C.P. 411 Verin – Oimbra, Km 2, Oimbra (Ourense), 32613 Oimbra, Spain (applicant), represented by Ab Patentiena - Gabinete Técnico de Patentes e Registos Lda., Rua da Madalena 214, 4º, 1100-325 Lisboa, Portugal (professional representative).

On 23/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 460 908 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 13 126 321. The opposition is based on European Union trade mark registration No 1 099 431. The opponent invoked Article 8(1)(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

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

Class 30: Bars of chocolate with puffed rice, chocolate in bars and in powder form, snacks, biscuits, ice cream, pastries, sweets, chocolates, pralines.

The contested goods are the following:

Class 30: Items of confectionery; pastries.

Contested goods in Class 30

Pastries are identically contained in both lists of goods.

The opponent’s pralines are included in the broader category of the applicant’s items of confectionery. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered 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 found to be identical are directed at the public at large. Given that they are foodstuffs which are normally not particularly expensive and may be frequently purchased, the degree of attention of the public will vary from average to lower than average.

3. The signs

	CHOCORINGS HALAGO
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the verbal element ‘Ciocorí’ placed in a red rectangle.

The verbal element ‘Ciocorí’ will not be associated with any meaning by the relevant public. Therefore, its distinctiveness for the relevant goods is normal.

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

The contested sign is a word mark, consisting of the verbal elements ‘CHOCORINGS HALAGO’.

The element ‘CHOCORINGS’ will be associated by the English-speaking part of the public with ring-shaped foodstuffs made of or containing chocolate. Bearing in mind that the relevant goods are pastries and items of confectionery, for this part of the public this element is non-distinctive, because it directly designates essential characteristics of the goods.

As for the non-English-speaking part of the public, the prefix ‘CHOCO-’ in the verbal element ‘CHOCORINGS’ will be associated throughout the European Union with ‘chocolate’, because this element is either identical or highly similar to the prefix that designates ‘chocolate’ in all the relevant territories. Therefore, given the nature of the relevant goods (foodstuffs that may consist of or contain chocolate), the prefix ‘CHOCO-‘ is non-distinctive for this part of the relevant public, because it will be perceived as an informative indication with the aforementioned descriptive sense vis-à-vis the characteristics of the foodstuffs at issue.

The element ‘HALAGO’ of the contested sign will be associated by the Spanish-speaking part of the public with the meaning of ‘flattery’ or ‘blandishment’. Taking into account the nature of the relevant goods, this element has no clear or univocal meaning and therefore, its inherent distinctiveness is normal. The element is meaningless for the remaining part of the public and, consequently, also of an average distinctiveness in relation to all the relevant goods.

Considering the abovementioned findings, it must be noted that the element ‘HALAGO’ of the contested sign is of normal distinctiveness for the entire relevant public, whereas the element ‘CHOCORINGS’, or at least the prefix ‘CHOCO-’ of this element, will be perceived as a non-distinctive informative indication throughout the relevant territory. Consequently, for a part of the public, the element ‘HALAGO’ is clearly the most distinctive element in the sign; for another part, that will perceive no meaning in the element that follows ‘CHOCO-’, this element (‘-RINGS’) is, alongside with ‘HALAGO’, the more distinctive part of the mark, considered as a whole.

The marks under comparison have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘C’, ‘I’, ‘O’, ‘R’. They also coincide in the positioning of the letter ‘C’ (in first and fourth position of both signs), in the positioning of the letter ‘O’ (placed in third and fifth position of both signs) and the letter ‘R’ placed in the sixth position of both signs. However, the signs differ in the positioning of the other letter in common – ‘I’ is placed in second position of the earlier sign, as opposed to seventh place in the contested sign. In addition, the letter ‘Í‘ in seventh position of the earlier sign differs from the letter ‘I’ due to its accent. The signs also differ in the letters ‘H’, ‘N’, G’, ‘S’ ‘L’ and ‘A’ present in the contested sign, which have no counterpart in the earlier sign. Furthermore, the earlier sign contains only one word only, whereas the contested sign consists of two verbal elements. Moreover, the coinciding letters described above do not constitute an independent component in either of the marks.

As the signs only coincide in aspects which are not visually perceptible as separate elements and which will not catch the public’s attention on their own, they convey clearly different overall impressions as a result of their differing structures and constituting elements, it is concluded that the signs are not visually similar.

Aurally, depending on the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs may coincide in the sound of the letters ‛C/I/O/C/O/R/Í‑C/H/O/C/O/RI’ (e.g. for the Italian, Romanian and Maltese-speaking part of the public). For the rest of the public, the pronunciation of the signs coincides only in the sound of the letters O/C/O/R/Í. For this part of the public, the pronunciation differs in the sequence of letters ‘C/H/O’ of the contested sign and ‘C/I/O/’ of the earlier sign. Irrespective of the different pronunciation rules in different parts of the public, the pronunciation of the signs also differs in the sequence of letters ‘N/G/S’ in the first verbal element of the contested sign and the verbal element ‘HALAGO’ of the contested sign which have no counterparts in the earlier mark. In addition, as examined above, the differing element ‘HALAGO’ is normally distinctive in the entire relevant territory and it is the most distinctive independent element of the contested sign.

Therefore, it is concluded that the signs are similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘CHOCORINGS’ included in the contested sign, will be associated by the English-speaking part of the public with chocolate foodstuffs in the shape of a ring. As regards the prefix ‘CHOCO’, its meaning will be perceived throughout the European Union.

The element ‘HALAGO’ will be perceived by the Spanish-speaking part of the public as ‘flattery’ or ‘blandishment’ (information extracted from Real Academia Española at www.rae.es). It is meaningless for the remaining part of the public.

The element ‘Ciocorí’ of the earlier sign will not be associated with any meaning by the relevant public.

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 trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Approximately 110 invoices dated within the period 2011-2014. On the majority of the invoices, the earlier mark appears as an indication of goods being sold under the brands ‘CIOCORI’S PZ CLASSICO’, ‘CIOCORI’, ‘CIOCORI BIANCO’ or ‘CIOCORI L’ORIG’. There are also some invoices on which the mark does not appear at all. All of the invoices are in Italian and the price is in euro.

• Printouts from the opponent’s website – www.ciocori.it. They are in Italian, dated in 2014 and according to the translation provided by the opponent, refer to the opponent’s product as being ‘the father of snacks’.

• Two printouts from the website of Ebay. They are in Italian and are not dated. They show the sale of two advertising signs displaying ‘CIOCORI’ snacks. According to the information provided by the webpage, these advertisements were used in 1976 and 1982 (presumably in Italy).

• Printouts from anonymous websites, some of which are undated and all of which are in Italian. One of them shows a picture of what look like magazines and some gramophone records. The sign is placed in the middle of the printout having no relation to any goods. The second printout shows the sign as appearing on what seems to be an advertising banner, on the packaging of a waffle; there is no indication whether these advertisements were actually used or when and where were they disseminated.

• Approximately 12 advertising pamphlets, all of which are in Italian; none of the documents is dated. The earlier mark is seen on each pamphlet, however, only on some of them does the brand appear affixed to the goods (foodstuffs resembling chocolate and chocolate items). One of the documents shows, according to the opponent, ‘a strong TV advertising campaign’. However, there is no evidence whatsoever in relation to this campaign (where and when it was broadcasted, on which channels, during what period, how frequently, by how many viewers it was seen, etc.).

• A one-page promotional document that allegedly contains data originating from a survey on the mark’s recognition. The opponent claims that the data in question originates from ‘Ac Nilsen’. The document is dated in 2008 and is in Italian. However, no copy or any other evidence of such a survey has been provided by the opponent.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The documents submitted show that the trade mark ‘Ciocorí’ has been used to some extent in relation to bars of chocolate, waffles and chocolate, in the territory of Italy. However, the evidence submitted does not provide any convincing and solid indication of the degree of recognition of the trade mark by the relevant public.

It is the opinion of the Opposition Division that this element is of extremely high importance for proving enhanced distinctiveness as a result of intensive use or reputation. Indeed, while there are many competitors on the marketplace, only a small number of them enjoy a substantial level of recognition by the relevant consumers. Consequently, the threshold of enhanced distinctiveness claimed by the opponent may be considered reached only when solid proof that the mark in question is known by a relevant part of the public has been submitted.

The submitted invoices show that the opponent has sold a vast amount of goods bearing its trade mark, but shed no light on the aforementioned degree of recognition. The same conclusion is valid for the information stemming from the opponent itself (printouts from its own website) which has, naturally, reduced probative value when it is not corroborated by independent and objective sources.

The advertising materials submitted by the opponent either do not indicate a source or in the case of the alleged ‘strong TV advertising campaign’, there is no additional evidence showing that the trade mark was actually advertised in the channels mentioned by the opponent.

The printouts submitted by the opponent as allegedly coming from the websites of third parties are insufficient to substantiate the claims and information put forward by the opponent. In addition, the opponent has not provided any explanation of these documents. Consequently, the Opposition Division is unaware of the nature of these websites and of the reliability of the information mentioned therein. It is not clear if the websites are managed and maintained by independent third parties; it is not clear if they represent an important publication or have a significant impact among the relevant public; it is also not possible to verify how many visitors these websites have or, for that matter, any other relevant information on the importance that should be given to statements mentioned in these websites. In addition, only few of the documents reveal websites’ names (Ebay and www.ciocori.it ). The rest are neither visible, nor referred to by the opponent.

The single-page document, referred to as a ‘survey’ by the opponent in the translation it submitted, is insufficient to substantiate the information claimed by the opponent. The opponent has not provided any evidence that the market survey it refers to has been conducted by an independent agency to establish that the mark is widely recognised by the relevant public. In addition, the opponent did not submit any opinion polls, which, in principle, are the most suitable means of evidence for providing information concerning the degree of knowledge of its mark and the position it occupies in the market in relation to its competitors.

It would have been expected that additional evidence be submitted, namely declarations from clients/distributors or from independent third parties (in particular, Chambers of Commerce and/or other professional associations) attesting to the intensive use or reputation of the mark ‘Ciocorí’, sales orders, audits confirming the claimed revenues, verifiable data of the market share held, contracts with distributors/clients, advertisement expenditures, opinion polls, market surveys and any other document issued by third parties that would confirm the opponent’s claims as regards market share, revenue and sales volumes.

In summary, the information and evidence submitted by the opponent is not sufficient to show, beyond any reasonable doubt and without the use of deductive reasoning, that the earlier trade mark is known by a significant part of the public in the relevant territory.

Therefore, the Opposition Division concludes that the evidence filed is not sufficient to demonstrate that the mark ‘Ciocorí’ has reached the threshold for enhanced distinctiveness through use in the relevant territory.

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. Global assessment, other arguments and conclusion

The goods have been found identical. Similarities and dissimilarities between the signs have been established.

The signs are visually dissimilar. Aurally, they are similar to a low degree for part of the public, namely for Italian-, Romanian and Maltese-speaking consumers for whom the pronunciation of the signs may coincide in the sound of the letters ‛C/I/O/C/O/R/Í‑C/H/O/C/O/RI’.

However, contrary to the opponent’s view, the signs also have obvious differences that offset these similarities. The earlier mark contains only one verbal element, the seven-letter word ‘Ciocorí’, whereas the contested sign is composed of two words, ‘CHOCORINGS HALAGO’. The differing letters and the second verbal element of the contested sign create a different overall impression and clearly differentiate the marks.

For the remaining part of the relevant public, the pronunciation of the signs is also noticeably different, as are their overall structures and rhythms (i.e. four syllables versus six syllables); these aspects are also important with regard to the overall impressions conveyed by the marks. These differences are sufficient to justify the conclusion that consumers are unlikely to confuse the signs in question, even in relation to identical goods.

Furthermore, it is established case law that consumers are not in the habit of artificially dissecting a trade mark and analysing its individual parts (and even less so if those parts have no meaning); rather, they see and perceive the mark in its entirety. In view of this, there is no reason consumers would mentally break down the first verbal element of the contested sign, ‘CHOCORINGS’, into the elements ‘CHOCORI’ and ‘NGS’, as neither of these elements has a meaning for them; instead, as seen above, English-speaking consumers will perceive the whole element as an informative non-distinctive indication, whereas the remaining consumers will understand the meaning of the prefix ‘CHOCO-’, although the term as a whole has no clear meaning for them.

Considering the above, consumers are likely to perceive ‘HALAGO’ as the more distinctive element of the contested sign and to pay more attention to it, because this is the only independent and fully distinctive part of the mark.

As stated above, neither mark has any element that could be considered more dominant than other elements. The letters ‘C’, ‘I’, ‘O’, ‘R’, which the signs have in common, do not form an independent element in the contested sign and, as explained above, the public will not artificially dissect the mark and thus perceive these letters as a separate element.

Furthermore, it has not been demonstrated that the earlier sign enjoys an enhanced distinctiveness in the relevant territory.

Therefore, based on a global assessment of all the relevant factors, it must be concluded that the differing elements of the marks are clearly perceptible and safely counteract the similarities between the signs, resulting in different overall impressions of the marks.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 (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

Deirdre QUINN

Gueorgui IVANOV

Begoña URIARTE VALIENTE

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. 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 (Article 2(30) EUTMFR) has been paid.