OPPOSITION No B 2 487 596

Giuseppa Pernicano, Ackerstraße 53, 8604 Volketswil, Switzerland; Cirrincione Pietro Azienda Agricola, Via XXIV Maggio, 183-90020 Baucina (PA), Italy (opponents), represented by Boehmert & Boehmert Anwaltspartenrschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Importadora del Carmen S.A., Calle 25 de Mayo 639 7D San Miguel de Tucumán, Argentina (applicant), represented by V&A Vilches y Asociados S.L., Rambla 192 1ª 08201 Sabadell (Barcelona), Spain (professional representative).

On 17/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 487 596 is partially upheld, namely for the following contested goods:

Class 31: Agricultural crops, horticulture and forestry products.

2. Community trade mark application No 13 182 316 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponents filed an opposition against all the goods of Community trade mark application No 13 182 316. The opposition is based on Community trade mark registration No 12 078 515. The opponents 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: Olives; Olives, preserved; Processed olives; Pickled olives; Olives for food; Olive oil; Olive oil for food; Olive pastes; pastes, Consisting predominantly of olives.

Class 30: Spices; Seasonings, condiments, spice pastes and sauces, containing olive oil and/or olives; Lactose-free chocolate, chocolate goods, chocolate preparations, made using olive oil.

Class 31. Olives (fresh).

The contested goods are the following:

Class 31: Foodstuffs and fodder for animals; Live animals, organisms for breeding; Agricultural and aquacultural crops, horticulture and forestry products; Litter for animals.

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.

The opponents’ goods include olives. ‘Olive’ is defined as an evergreen oleaceous tree, Olea europaea, of the Mediterranean region but cultivated elsewhere, having white fragrant flowers, and edible shiny black fruits; also the fruit of this plant is eaten as a relish and used as a source of olive oil.

The contested agricultural crops, horticulture and forestry products include as a broader category the opponents’ goods in Class 31, olives (fresh). It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponents’ goods.

Fodder or animal feed is any agricultural foodstuff used specifically to feed domesticated livestock, such as cattle, goats, sheep, horses, chickens and pigs. Therefore, the contested foodstuffs and fodder for animals have nothing in common with the opponents’ goods, which are intended for human consumption. These goods clearly have different natures (food for human consumption/used in cookery versus foodstuffs for animals), different purposes (feeding humans/flavouring versus feeding animals) and different methods of use. The goods are not complementary or in competition with each other. Moreover, they do not have the same commercial origin, they are not distributed through the same channels and they target different relevant publics. Therefore, these goods are dissimilar.

Live animals, organisms for breeding have nothing in common with the opponents’ goods. They have different natures and they also differ in their producers and end users. They are usually sold through different distribution channels and, even if they were found in the same department store, they would not be placed next to each other. Furthermore, they are not in competition, nor are they necessarily complementary. It follows that these goods are dissimilar.

Litter for animals refers to materials forming a surface-covering layer, such as straw, hay or other absorbent materials, for animals. It has nothing in common with the opponents’ foodstuffs, in particular olives. These goods have different natures (food for human consumption/aromatic plants used in cookery versus bedding, litter), different purposes and different methods of use. They are not complementary or in competition with each other. Moreover, they do not have the same commercial origin, they are not distributed through the same channels and they target different relevant publics. Therefore, these goods are dissimilar.

Aquacultural crops, in contrast to agricultural crops, are products of aquafarming, which is the farming of aquatic organisms such as fish, crustaceans, molluscs and aquatic plants. The contested aquacultural crops are dissimilar to the opponents’ olives, and have nothing in common with them. The natures of the goods and their methods of use and purposes are clearly dissimilar. Furthermore, these goods do not coincide either in their methods of commercialisation (their distribution channels are different) or in their end users.

2. The signs

CHIARELIO
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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 Italian-speaking part of the relevant public.

The earlier mark is a word mark, ‘CHIARELIO’. The contested mark is a figurative mark, containing the verbal element ‘CHIARELLO’: ‘CHIA’ is depicted in bold red lower case letters, with an accent over the letter ‘i’; ‘rello’ is depicted in yellow lower case letters. Two green ears of wheat are depicted growing from the last letter of this element, ‘O’. Underneath, in the bottom right corner, a second verbal element, ‘ORGANIC’, is depicted in italicised green upper case letters. At the top of the mark, a barely noticeable verbal element, ‘OMEGA 3’, is depicted in title case in a red typescript; this element is underlined with a green wavy line.

Visually, the signs are similar to the extent that they coincide in the string of letters ‘CHIAREL*O’. There is also a high degree of visual similarity between the penultimate letter, ‘l’, of the contested sign and the letter ‘I’ in the earlier mark. However, the signs differ in the verbal elements ‘ORGANIC’ and ‘Omega 3’ and all the figurative elements and stylisation of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters /CHIAREL*O/, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the signs’ penultimate letters, ‛I’ versus ‘L’. This difference in one sound may hardly be noticed, particularly since it results from the penultimate letters. The signs also differ in the pronunciation of the word elements ‘ORGANIC’ and ‘OMEGA 3’ of the contested sign, which have no counterparts in the earlier mark. However, due to their size, particularly that of ‘OMEGA 3’, the public may not even perceive and therefore, not pronounce them.

Conceptually, the earlier sign has no meaning for the Italian-speaking public. The relevant consumer might perceive the concept behind the element ‘ORGANIC’ in the contested sign as ‘of, relating to, derived from, or characteristic of living plants and animals’, since it is very close to its Italian equivalent ‘organico, organica’ and the concept behind the element ‘OMEGA 3’ as ‘any of various polyunsaturated fatty acids that are found primarily in fish, fish oils, vegetable oils, and leafy green vegetables, and that seem to reduce the risk of stroke and heart attack’ since this is an indication widely used nowadays on foodstuffs. These elements are present only in the contested sign. A part of the public may notice the two green ears of wheat, which only further reinforce the concept of natural, organic, grain-based products. Since one of the signs has no meaning (the earlier sign), the signs are not conceptually similar.

Taking into account the abovementioned visual and aural 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 or dominant (visually eye‑catching) than other elements.

The element ‘ORGANIC’ of the contested sign will be associated with ‘relating to or derived from living plants and/or animals’. Bearing in mind that the relevant goods are agricultural products, it is considered that this element is weak for all the goods in Class 31. The public understands the meaning of the element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘OMEGA 3’ of the contested sign will be associated with ‘any of various polyunsaturated fatty acids that are found primarily in fish, fish oils, vegetable oils, and leafy green vegetables, and that seem to reduce the risk of stroke and heart attack’. Bearing in mind that the relevant goods are agricultural products, it is considered that this element is weak for all the goods in Class 31. The public understands the meaning of this element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign is composed of three verbal elements and the descriptive figurative element of two green ears of wheat, which only conveys and further reinforces the concept of natural, organic, grain-based products, i.e. is also weak. The remaining figurative elements and stylisation, namely the green line and the typescript, are of a purely decorative nature. Consequently, the additional graphic elements have only a limited impact when assessing the likelihood of confusion between the marks.

The element ‘CHIARELLO’ 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 opponents did not explicitly claim that their 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 and at professionals, such as agricultural engineers and farmers. The degree of attention will be average.

6. Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar and target both the public at large and professionals. Considering the nature of the goods, the degree of attention of the average consumer will be average.

The signs are similar. The earlier mark and the dominant element of the contested sign coincide in eight out of nine letters, whereas these differentiating letters also show a high degree of visual similarity.

The fact that the beginnings of the earlier mark and of the dominant element of the contested mark are identical is particularly significant bearing in mind that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Furthermore, the differing verbal elements, ‘ORGANIC’ and ‘OMEGA 3’, as well as the figurative elements of the contested mark are weak and therefore have a limited impact in the assessment of the likelihood of confusion between the marks.

Neither the earlier mark nor the dominant element of the contested mark has a meaning that could help the consumer to distinguish between the two. Therefore, the consumers will have to rely only on their imperfect recollection when they encounter the marks, since they rarely have the chance to make a direct comparison between different marks.

Overall, the Opposition Division concludes that the similarities between the marks are sufficient to cause a likelihood of confusion on the part of the public in respect of the identical goods.

Considering all the above, there is a likelihood of confusion on the part of the Italian-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.

Therefore, the opposition is partially well founded on the basis of the opponents’ Community trade mark registration No 12 078 515. It follows that the contested trade mark must be rejected for the contested goods that have been found identical to the opponent’s goods.

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Francesca DINU

Gordana TRIPKOVIC

Plamen IVANOV

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.