OPPOSITION No B 2 461 070

HelloFresh GmbH, Rosenthaler Straße 42, 10178 Berlin, Germany (opponent), represented by Rösler · Rasch · van der Heide & Partner Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bodenseestr. 18, 81241 Munich, Germany (professional representative)

a g a i n s t

Perfetti van Melle S.p.A., Via XXV Aprile 7, 20020 Lainate (Milano), Italy (applicant), represented by Alessandro Biraghi, Perfetti van Melle S.p.A., Via XXV Aprile 7, 20020 Lainate (Milan), Italy (employee representative).

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

DECISION:

1. Opposition No B 2 461 070 is upheld for all the contested goods.

2. Community trade mark application No 13 276 613 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 13 276 613. The opposition is based on Community trade mark registration No 10 532 976, in relation to which the opponent invoked Article 8(1)(b) CTMR, and a company name in Germany for the word sign ‘HelloFresh GmbH’, in relation to which the opponent invoked Article 8(4) 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, inter alia, the following:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; four and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

The earlier Community trade mark is registered for the entire class heading of Class 30 of the Nice Classification. It was filed on 29/12/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

The contested goods, after the English translation has been checked against the original Italian version and cake dough replaced with pastry and sweets (Italian ‘pasticceria and dolci’), are the following:

Class 30: Caramels, candy, pastry, sweets, chewing gum, chocolate, jellies (confectionery), lollipops, toffee, candy mints, pastilles, liquorice [confectionery], sugar, coffee, cocoa.

Contested goods in Class 30

Bearing in mind what has been stated about the scope of protection of the earlier mark, caramels, candy, pastry, sweets, chewing gum, chocolate, jellies (confectionery), pastilles, liquorice [confectionery], sugar, coffee, cocoa are included identically in both lists of goods.

The contested lollipops, toffee, candy mints are included in the broad category of the opponent’s confectionery. Therefore, they are considered identical.

2. The signs

	HI FRESH
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 English-speaking part of the relevant public.

The earlier mark is a figurative mark resembling a black and white certification label or quality label, consisting of a circle with a dotted perimeter and a wavy line around it, crossed by a ribbon with the inscription ‘Hello Fresh’. Just underneath the ribbon is a depiction of a white leaf. The contested sign is a word mark, ‘HI FRESH’.

Visually, the signs are similar to the extent that they coincide in their second verbal element, ‘FRESH’, and the first letter, ‘H’, of their first verbal elements. However, they differ in the letters ‘ELLO’ of the first verbal element of the earlier mark versus the letter ‘I’ of the first verbal element of the contested sign, and the figurative elements and graphic depiction (as described above) of the earlier mark, including the typescript of the verbal elements.

Aurally, the pronunciation of the signs coincides in the sound of their first letters, ‘H’, and the sound of their second verbal elements, ‛FRESH’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sounds of the letters ‛ELLO’ in the earlier mark versus ‘I’ of the contested sign.

Conceptually, the element ‘FRESH’, which the signs have in common, will be understood by the English-speaking part of the public as meaning ‘recent, newly made and natural’.

Furthermore, ‘Hello’ will be understood by the public as a form of greeting, and the verbal element ‘Hi’ in the contested sign is an informal synonym for the same word. Therefore, the signs are conceptually similar, to the extent that they both refer to the same concept of an expression of greeting and to the meaning of the word ‘Fresh’, although the combination ‘Hello’/‘Hi Fresh’ does not make any particular sense.

The relevant public will also recognise in the earlier mark the concept of a white leaf and may associate the circular figurative element with a certification label or quality label.

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 word ‘FRESH’, contained in both marks, makes reference to ‘recent, newly made natural’, and it will be understood as such throughout the relevant territory. Bearing in mind that the goods in relation to which there could be confusion are most of the opponent’s goods, such as chocolate, confectionery, it is considered that the word is descriptive of a characteristic of these goods; in fact, ‘fresh’ is the most common adjective used in the marketing of foodstuffs. For this reason, the word ‘FRESH’ (present in both marks) will not be perceived by the public as an indication of origin for the products, but will be seen simply as a word that commonly appears on the labels of such products. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks.

The figurative elements of the earlier mark are of lower than average distinctiveness: a leaf device, such as the white leaf in the earlier mark, is commonly used for natural products, or those having a natural origin, and the dotted circle with a wavy border will be associated with a certification label or quality label. It is for this reason that the verbal elements are considered more distinctive than the figurative elements. Consequently, the additional figurative elements have only a limited impact when assessing the likelihood of confusion between the marks.

The marks under comparison have no elements that could be considered clearly 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, despite the presence 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 are directed at the public at large. The degree of attention is likely to be lower than average, considering that the goods are cheap and purchased frequently.

6. Global assessment, other arguments and conclusion

The goods are identical.

The signs in question are similar on account of the element that they have in common, ‘FRESH’, and the letter ‘H’ of the first verbal elements of the marks, ‘Hello’ and ‘Hi’. The differences between the signs are confined to the remaining letters of their first words, ‘ELLO’ in the earlier versus ‘I’ in the contested sign, and the graphic depiction of the earlier mark, including the typescript of the verbal elements.

However, the similarity on all three levels of examination – proceeding from the verbal element that they have in common, ‘FRESH’, the signs’ identical first letters, ‘H’, and the conceptual similarity in the verbal elements ‘Hello’ and ‘HI’ – leads to an overall similarity between the signs.

As is clear from consistent case-law, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see by analogy, judgment of 11/11/1997, C‑251/95, ‘Sabèl, paragraph 23; and judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, paragraph 25).

As stated above in section c) of this decision, less attention will be paid by the relevant public to the elements that are devoid of distinctive character when comparing the signs. The figurative elements of the earlier marks are minimal: the circular element resembles a certification label and thus indicates the certified quality of the products in question, while a leaf device is one of the most commonly used symbols for natural products.

Nevertheless, when signs consist of both verbal and figurative components, the public pays more attention to the verbal element, since the verbal component of the sign usually has a stronger impact on the consumer. This is because the public does not tend to analyse signs and will more readily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T‑312/03, ‘Selenium Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24; and decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59).

The applicant refers to previous decisions of the Office to support its arguments, namely decision of 16/11/2002, R 793/2001-2 – ‘INCEL/LINZEL’; decision of 31/03/2006, B 724 361 – ‘CAROLL/CAROLE LITTLE’; decision of 31/03/2006, B 720 997 – ‘BRIGHT GREY/BRIGHT RED’; and decision of 30/04/2002, B 263 766 – ‘DELTAFORCE/DACROFORGE’. 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.

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 (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since the signs are entirely different from the marks at issue, and the relevant goods are also entirely different from those in the present case.

Considering all the above, there is a likelihood of confusion on the part of the English-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 well founded on the basis of the opponent’s Community trade mark registration No 10 532 976. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) CTMR.

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

Eamonn KELLY

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.

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.