OPPOSITION No B 2 440 454

Anton Dürbeck GmbH, Hessenring 120, 61348 Bad Homburg, Germany (opponent), represented by Patentanwälte Dr. Knoblauch Partgmbb, Schlosserstr. 23, 60322 Frankfurt, Germany (professional representative)

a g a i n s t

Alfonso Perez Carballo, Paseo General Martinez Campos 39 4ºIZQ., 28010 Madrid, Spain (applicant), represented by Andrea Sirimarco, Paseo de la Castellana 129 1º D 28046 Madrid, Spain (professional representative).

On 23/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 440 454 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 153 119, namely against all of the goods in Classes 29 and 31. The opposition is based on Community trade mark registration No 46 813. 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 31: Fresh fruit, in particular tropical fruits and citrus fruits; fresh vegetables.

The contested goods are the following:

Class 29: Prepared fruits; Canned fruits; Frozen fruits; Frosted fruits; Cooked fruits; Fruit chips; Frosted fruits; Glazed fruits; Fruit, stewed; Jams and fruit preserves; Preserved fruits; Fruit jellies; Fruit jellies, Fruit-based snack food, Fruit chips, Dried fruit products, Candied fruit snacks, Fruit spreads; Fruit-based snack food; Mixtures based on fruits and nuts; Milk drinks containing fruits; Jellies; Marmalade; Fruit, stewed; Fruit and vegetable spreads.

Class 31: Fresh fruits, Unprocessed fruits.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

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 Prepared fruits; Canned fruits; Preserved fruits; Frozen fruits; Frosted fruits; Dried fruit products, Cooked fruits are similar to a low degree to the earlier fresh fruits. The contested goods originally derive from fresh fruits. Nevertheless, the goods of the earlier right are unprocessed and the latter goods are processed goods. The goods are in competition, since the final consumer can choose between the fresh or processed products. Moreover, despite the fact that the producers of the goods might differ, they may be found in the same shops.

The same applies to the contested Fruit chips; Glazed fruits; Fruit, stewed; Jams and fruit preserves; Fruit jellies; Fruit jellies, Fruit-based snack food, Fruit chips, Candied fruit snacks, Fruit spreads; Fruit-based snack food; Mixtures based on fruits and nuts; Milk drinks containing fruits; Jellies; Marmalade; Fruit, stewed; Fruit and vegetable spreads. They have a remote link with the opponent’s fresh fruits in Class 31. Although their nature is different, these goods can be in competition with each other, since the final consumer can choose between the fresh or the processed products. Moreover, despite the difference in the producers of the goods (the opponent’s goods are produced by agriculturists and horticulturists and the applicant’s goods are produced by food manufacturers), they can be found in the same outlets.

Contested goods in Class 31

The contested Fresh fruits are identically contained in the list of goods in Class 31 of both signs under comparison.

The contested Unprocessed fruits is identical to the opponent’s Fresh fruit, since despite the different wording they refer to the same goods, that is they are synonyms.

2. The signs

FRUTASOL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the first five letters ‘FRUTAS-’. The signs differ in their ending ‘-OL’ and ‘-TICO’ and the depiction of a leaf placed above the letter ‘A’ in the contested mark.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the syllables ‘FRU-TA- present identically in both signs, and to that extent the signs are aurally similar. The pronunciation clearly differs in the syllables ‛STI-CO’ in the earlier sign and ‘-SOL’ in the contested mark.

Conceptually, although the words FRUTASOL in the earlier mark and FRUTASTICO in the contested sign have no meaning as such from the perspective of the public in the relevant territory, the first part of each sign, namely ‘FRUTA’ will be associated with the concept of ‘fruit’ by a significant part of the relevant public. This is because the Spanish and Portuguese word ‘FRUTA’ is close to the equivalent word ‘fruit’ in English, which is considered to be a basic English word. Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words that are known for the public perceiving it, it is likely that they will mentally divide the marks into the recognized terms or familiar parts forming it. In the present case, a part of the public will therefore naturally dissect the earlier mark ‘FRUTASOL’ into ‘FRUTA’ and ‘SOL’ (the word ‘SOL’ meaning ‘sun’ in Portuguese and Spanish) and will perceive the contested sign as containing a meaningful word ‘FRUTA’.

The figurative element in the contested sign will be perceived as a leaf by the relevant public.

It follows that the signs are conceptually similar for a significant part of the relevant public to the extent that the word ‘FRUTA’ is capable of evoking the same idea in the consumer’s mind.

However, for a small the part of the public who will not understand the meaning of the aforementioned words, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account that there are some visual and aural coincidences, it is considered that 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 marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

The initial five letters ‘FRUTA-’ of the signs will be associated with ‛fruit’ by a significant part of the public. Bearing in mind that the goods found to be identical or similar to a low degree are fresh and processed fruits, it is held that this element of the marks is descriptive of the goods concerned. A significant part of the public that understands the meaning of this element will not pay as much attention to this descriptive element as to the other, more distinctive, elements of the signs. Consequently, for a part of the public, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

However, for a small the part of the public who will not understand the meaning of the aforementioned word, the signs under comparison have no elements which could be considered more distinctive than other elements.

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 in relation to any of the goods at hand 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 - for a part of the public -of a weak element in the mark as stated above in section c) of this decision.

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 or similar are directed at the public at large. Therefore, the level of attention that the relevant consumer will have at the time of making his or her purchase cannot be expected to be more than average.

6. Global assessment, other arguments and conclusion

The goods are partially identical and partially lowly similar.

The signs are visually and aurally similar to the extent that they share the sequence of the letters ‘FRUTAS-’. For a significant part of the public the sequence of the letters ‘FRUTA’ is descriptive and is considered to be a weak element of the marks. It should therefore be given less weight in the assessment of the likelihood of confusion.

Although the letters ‘FRUTAS’, which the marks have in common, are placed at the initial part of the signs, and consumers normally attach more importance to the beginnings of words, this principle cannot be automatically applied in each and every case, as likelihood of confusion has to be assessed on a case-by-case basis and depending on all the circumstances that are relevant to each particular case. Furthermore, the comparison of signs has to be carried out based on the overall impressions that they create and cannot be reduced to a matter of arithmetic.

In the present case, apart from the abovementioned overlap, the signs in dispute also present differences, which, in the opinion of the Opposition Division offset the coincidences resulting from the letters that they have in common.

The different endings ‘OL’ and ‘TICO’ of the marks are obvious (two versus four letters).This difference influences the aural comparison of the signs, namely the earlier mark is pronounced in three syllables (FRU-TA-SOL) while the contested sign is pronounced in four syllables (FRU-TA-STI-CO). Therefore, the signs differ in their lengths, rhythms and intonations. The relevant public will not overlook these differences or fail to hear them, even when the degree of attention when purchasing the goods in question is average.

This finding is valid even for the small part of the public that does not see any meaning in the sequence of the letters ‘FRUTA-’. For this part of the relevant public the element ‘FRUTA-‘ has a normal degree of distinctiveness. However, the fact remains that a different structure of the signs described above is clearly noticeable. The differences in the endings ‘OL’ and ‘TICO’ contribute to a different visual and aural perception of the marks in dispute, even taking into consideration the fact that in most cases consumers do not have the chance to compare marks directly, but have to rely on the imperfect picture of them that they have kept in mind

Bearing in mind the foregoing, it is considered that a certain degree of visual and aural similarity between the signs in dispute – arising from the letters (and sounds) which the marks have in common – is safely outweighed by the differences existing between the marks, as described above.

Considering all the above, even taking into account that some of the goods are identical, it is considered that the relevant public is not likely to believe that the earlier mark and the contested sign originate from the same undertaking or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public, within the meaning of Article 8(1)(b) CTMR. Therefore, the opposition must be rejected.

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 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) CTMIR, 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

Rhys MORGAN

Janja FELC

Reiner SARAPOGLU

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.