OPPOSITION No B 2 468 463

Dallant, S.A., Laureà Miró, 392, 08980 Sant Feliu de Llobregat (Barcelona), Spain (opponent), represented by Durán‑Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Pride Establishment for Industry & Agriculture, P.O. Box 925530, Alkarameh, Amman 11190, Jordan (applicant), represented by Cam Trade Marks and IP Services, St. John’s Innovation Centre, Cowley Road, Cambridge CB4 0WS, the United Kingdom (professional representative).

On 27/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 468 463 is upheld for all the contested goods.

2. Community trade mark application No 13 185 517 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 13 185 517. The opposition is based on Community trade mark registration No 8 731 655. 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 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; aromatic preparations for food use.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers); wines, spirits and liqueurs.

The contested goods are the following:

Class 29: Preserved, dried and cooked fruits and vegetables; jams; compotes; edible oils and fats; dates.

Class 30: Coffee, tea, cocoa, and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; honey; treacle; vinegar; sauces (condiments); spices.

Class 31: Live animals; fresh fruits and vegetables; seeds.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 29

The contested dates are the fruit(s) of the date palm, having sweet edible flesh and a single large woody seed (information extracted from Collins English Dictionary on 15/10/2015 at www.collinsdictionary.com). Therefore, since they are included in the broad category of the opponent’s fresh fruits in Class 31, they are identical.

The contested preserved, dried and cooked fruits and vegetables are fruits and vegetables that have been treated in order to ensure their conservation. They are highly similar to the opponent’s sauces (condiments) in Class 30, which include, inter alia, fruit and vegetable sauces. These goods have the same purpose. They target the same consumers and are produced by the same undertakings, which distribute them through the same channels, namely supermarkets and food shops, where they are normally displayed in close proximity. Moreover, they are in competition.

The contested jams and compotes are similar to the opponent’s sauces (condiments) in Class 30. They have the same purpose, as they can be served together and can be either spread on bread or used to accompany and flavour a main dish. These goods are sold through the same distribution channels, can be found in the same areas of stores and supermarkets and have the same relevant public. Furthermore, they are in competition.

The contested edible oils and fats are similar to the opponent’s sauces (condiments) in Class 30 given that they coincide in purpose and methods of use and are in competition with each other. Moreover, they coincide in their relevant consumers.

Contested goods in Class 30

Coffee, tea, cocoa, and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; honey; treacle; vinegar; sauces (condiments); spices are identically contained in both lists of goods.

Contested goods in Class 31

Live animals; fresh fruits and vegetables; seeds are identically contained in both lists of goods.

2. The signs

DALLANT
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 Spanish‑speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letter sequence ‘DALLA-’. On the other hand, they differ in their final letters, ‘NT’ in the earlier mark and ‘H’ in the contested sign, and in the figurative elements resembling letters in Arabic script or, simply, the ornamentation following the verbal component in the contested sign.

The fact that the contested sign depicts the verbal element ‘Dallah’ in title case letters, has no influence on the visual comparison of the signs, since the earlier mark is a word mark. It is settled case-law that a word mark is a mark composed entirely of letters, of words or of combinations of words, written in printed characters in normal font, without any specific figurative element. As a consequence, the protection which results from registration of a word mark relates to the word mentioned in the application for registration and not to the specific figurative or stylistic elements which that mark might have (judgment of 21/09/2012, T‑278/10, ‘Western Gold’, paragraph 44).

Aurally, the pronunciation of the signs coincides in the sound of the letter sequence /D/A/L/L/A/, present identically in both signs, and to that extent the signs are aurally similar. Since the letter ‘H’ is silent in Spanish, it will not be pronounced. The pronunciation differs in the sound of the final letters /N/T/ in the earlier mark. The figurative elements resembling Arabic script letters in the contested sign are not to be pronounced by the relevant public.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned 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 distinctive or more dominant (visually eye‑catching) 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.

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 and similar to various degrees are considered foodstuffs for everyday consumption and target the public at large. The degree of attention may vary from average to lower than average.

6. Global assessment, other arguments and conclusion

The goods are identical and similar to various degrees. They target the public at large.

The comparison of the conflicting signs has shown that they are similar to the extent that they coincide visually and aurally in the letter sequence ‛DALLA’. The contested sign consists of this letter sequence with the last letter ‘H’, which is silent, and thus it will not be pronounced. The letter sequence ‛DALLA’ represents the beginning and, moreover, constitutes the first five of the seven letters of the only word component of the earlier sign.

Consumers generally tend to focus on the first element 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 fact that, insofar as the verbal elements are concerned, the contested sign includes the beginning of the opponent’s mark has to be taken into account when assessing the likelihood of confusion between the marks.

In the present case, this is even more so as the only minor difference in the verbal elements of the conflicting signs is the presence of the last two letters, ‘N‑T’, of the opponent’s mark, taking into account that the last letter ‘H’ in the contested sign is silent.

As regards the contested sign, which consists of a composition of verbal and figurative elements, the principle has been established that the word 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 most readily refer to a sign by its verbal component.

Furthermore, the additional visual differences between the signs are confined to somewhat secondary elements, namely the graphical elements resembling letters in Arabic script or simply the ornamentation in the contested sign, and therefore, are not sufficiently differentiating the signs at issue.

In this respect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Furthermore, the evaluation of likelihood of confusion implies some interdependence between the relevant factors and, in particular, the 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 (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 17).

Considering all the above, given also the normal degree of distinctiveness of the earlier mark, the average to lower than average degree of attentiveness of the relevant consumer and, especially, the degree of visual and aural similarity of the word elements of the marks in question, the Opposition Division finds that there is a likelihood of confusion on the part of the public, including the risk that the public might believe that the goods in question (similar or identical) come from the same undertaking or, at least, from economically linked undertakings.

As stated above in section b) of the 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 well founded on the basis of the opponent’s Community trade mark registration. It follows that the contested sign 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

Plamen IVANOV

Eamonn KELLY

Gordana TRIPKOVIC

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.