CANCELLATION No 11 176 C (INVALIDITY)

Matkompaniet AB, Företagsgatan 55, 504 94 Borås, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 21120 Malmö, Sweden (professional representative)

a g a i n s t

Carlos Pineda Rivera and Dolores Pineda Magro, Medina y Galnares, 117-C1C, 41015 Sevilla, Spain (EUTM proprietors), represented by Fernández-Palacios Abogados, S.L.P., Plaza de la Magdalena, 9-4º, 41001 Sevilla, Spain (professional representative).

On 26/10/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 13 331 707 is declared invalid for some of the contested goods and services, namely:

Class 29: Edible oils; Butter preparations; Edible fats; Broth [soup]; Stewed apples; Dips; Fruit desserts; Artificial milk based desserts; Pollen prepared as foodstuff; Custard style yoghurts; Dairy puddings; Yoghurt desserts; Desserts made from milk products; Meats; Jellies, jams, compotes, fruit and vegetable spreads; Candied fruit snacks; Maraschino cherries; Cooked fruits; Fruit peel; Apple flakes; Coconut flakes; Fruit conserves; Coconut powder; Coconut, desiccated; Fruit jellies; Processed nuts; Dried fruit products; Fruit paste; Dried truffles [edible fungi]; Truffles, preserved; Processed fruits, fungi and vegetables (including nuts and pulses); Birds eggs and egg products; Fish, seafood and molluscs; Drinks made from dairy products; Cream [dairy products]; Buttercream; Dulce de leche [condensed milk]; Yoghurt; Cream cheese; Dairy products and dairy substitutes; Potato-based snack foods; Soy-based snack foods.

Class 30: Chocolate-based ready-to-eat food bars; Crumble; Rice biscuits; Crackers made of prepared cereals; Savory pastries; Mincemeat pies; Cereal-based snack food; Snack food products consisting of cereal products; Snack food products made from cereal flour; Sweet glazes and fillings; Syrups and treacles; Foodstuffs made of a sweetener for making a dessert; Foodstuffs made of a sweetener for sweetening desserts; Foodstuffs made of sugar for sweetening desserts; Sugar; Sugar, other than for medical use; White sugar; Sugar candy [for food]; Caramelised sugar; Crystal sugar [not confectionery]; Palm sugar; Grape sugar; Powdered sugar for preparing isotonic beverages; Granulated sugar; Boiled sugar; Invert sugar; Sugar for making jellies; Liquid sugar; Sugar for making jams; Sugar for making conserves of fruit; Invert sugar cream [artificial honey]; Sweet spreads [honey]; Sweeteners (Natural -); Natural sweeteners in the form of fruit concentrates; Sweeteners (Natural -) in granular form; Fruit sugar; Glucose powder for food; Buckwheat jelly (Memilmuk); Royal jelly; Agave syrup for use as a natural sweetener; Maltose; Spray crystallized maltose for food; Honey; Herbal honey; Biological honey for human consumption; Natural honey; Natural ripe honey; Tablets (Non-medicated -) made of glucose with a caffeine base; Polysaccharides for use as food for human consumption; Glucose preparations for food; Foodstuffs made of sugar for making a dessert; Propolis for food purposes; Bee glue; Honey substitutes; Sugar substitutes; Cube sugar; Cocoa-based beverages; Cocoa; Cocoa products; Coffee; Chocolate extracts; Preparations based on cocoa; Coffee, teas and cocoa and substitutes therefor; Cereals; Doughs, batters, and mixes therefor; Yeast and leavening agents; Dried and fresh pastas, noodles and dumplings; Farinaceous foods; Foodstuffs made from dough; Foodstuffs made from soybean; Processed cereals for food for human consumption; Carbohydrate preparations for food; Preparations for making bakery products; Food preparations based on grains; Farinaceous food pastes; Grist; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice confectionery; Ice cream stick bars; Ice cream drinks; Ice cream confectionery; Frozen yogurt confections; Confectionery ices; Ice cream desserts; Ice cream gateaux; Frozen custards; Mixtures for making frozen confections; Mixtures for making ice cream confections; Frozen yoghurts; Ice-cream cakes; Cereal bars and energy bars; Sweets (candy), candy bars and chewing gum; Bread; Pastries, cakes, tarts and biscuits (cookies); Cotton candy; Foods with a cocoa base; Foodstuffs containing chocolate [as the main constituent]; Foodstuffs containing cocoa [as the main constituent]; Almonds covered in chocolate; Snack foods consisting principally of confectionery; Chocolate flavourings; Confectionery items coated with chocolate; Wafered pralines; Chocolate waffles; Chocolate coated nougat bars; Viennoiserie; Fruited scones; Jam buns; Chocolates; Liqueur chocolates; Chocolate; Chocolate with alcohol; Imitation chocolate; Non-medicated chocolate; Chocolate for toppings; Chocolate for confectionery and bread; Aerated chocolate; Orange based confectionery; Flavoured sugar confectionery; Nut confectionery; Non-medicated flour confectionery containing chocolate; Non-medicated flour confectionery containing imitation chocolate; Non-medicated flour confectionery coated with imitation chocolate; Non-medicated flour confectionery coated with chocolate; Confectionery containing jelly; Confectionery having wine fillings; Confectionery having liquid fruit fillings; Confectionery having liquid spirit fillings; Chocolate flavoured confectionery; Mint flavoured confectionery (Non-medicated -); Liquorice flavoured confectionery; Confectionery in frozen form; Frozen confectionery containing ice cream; Confectionery made of sugar; Chocolate confectionery having a praline favour; Non-medicated chocolate confectionery; Chocolate confectionery containing pralines; Non-medicated flour confectionery; Non-medicated mint confectionery; Non-medicated confectionery in jelly form; Confectionery in liquid form; Dairy confectionery; Non-medicated confectionery in the shape of eggs; Non-medicated confectionery having toffee fillings; Non-medicated confectionery having a milk flavour; Non-medicated confectionery for use as part of a calorie controlled diet; Non-medicated confectionery containing chocolate; Non-medicated confectionery containing milk; Confectionery containing jam; Chocolate bark containing ground coffee beans; Creamed rice; Puddings; Cocoa based creams in the form of spreads; Chocolate creams; Chocolate spreads; Croissants; Decorations [edible] for christmas trees; Chocolate decorations for confectionery items; Chocolate decorations for cakes; Turkish delight; Turkish delight coated in chocolate; Boiled confectionery; Frozen dairy confections; Panned sweets (Non-medicated -); Frozen confections on a stick; Korean traditional sweets and cookies [hankwa]; Chocolate vermicelli; Chocolate fondue; Chocolate coated fruits; Crackers; Crackers flavoured with fruit; Salted wafer biscuits; Fruit jellies [confectionery]; Waffles; Waffles with a chocolate coating; Sugar-coated coffee beans; Halvah; Potato flour confectionery; Marzipan; Chocolate marzipan; Sweet bean jam coated with sugared-bean based soft shell [nerikiri]; Kheer mix (rice pudding); Mousses (Chocolate -); Mousse confections; Mousses (Dessert -) [confectionery]; Chocolate coated nuts; Chocolate coated macadamia nuts; Coated nuts [confectionery]; Cinnamon rolls; Panettone; Pancakes; Sandwich spread made from chocolate and nuts; Spreads made from chocolate and nuts; Dried sugared cakes of rice flour (rakugan); Sweet pounded rice cakes (mochi-gashi); Soft pin-rolled cakes of pounded rice (gyuhi); Pastry crust; Pavlovas made with hazelnuts; Butterscotch chips; Poppadums; Rice-based pudding dessert; Prepared desserts [chocolate based]; Prepared desserts [confectionery]; Chilled desserts; Chocolate based products; Candy; Almond confectionery; Peanut confectionery; Peanut butter confectionery chips; Non-medicated confectionery products; Confectionery for decorating Christmas trees; Bakery goods; Rice puddings containing sultanas and nutmeg; Semolina pudding; Chocolate spreads for use on bread; Nougat; Truffles [confectionery]; Truffles (rum -) [confectionery]; Tiramisu; Tablet (confectionary); Marzipan substitutes; Imitation custard; Dessert souffles; Sopapillas [fried bread]; Chocolate topping; Instant dessert puddings; Ready-to-eat puddings; Yorkshire puddings; Savory sauces, chutneys and pastes; Popcorn seasoning; Flavourings for foods; Flavourings made from fruits; Vanilla flavorings; Cinnamon powder [spice]; Bases for making milk shakes [flavourings]; Flavorings and seasonings; Edible essences for foodstuffs [other than etheric substances and essential oils]; Sweeteners consisting of fruit concentrates; Cinnamon [spice]; Flavour enhancers for food [other than essential oils]; Synthetic thickeners for foodstuffs; Vegetable thickeners; Seasoning mixes; Peppermint for confectionery; Flavourings for cakes; Aromatic preparations for food; Sauces containing nuts; Substances imparting flavour for addition to food [other than essential oils]; Substances imparting smell for addition to food [other than essential oils]; Sauces for ice cream; Fruit sauces; Sauces; Vanillin [vanilla substitute]; Vanilla.

Class 35: Retail services in relation to cocoa; Retail services in relation to coffee; Wholesale services in relation to desserts; Wholesale services in relation to baked goods; Wholesale services in relation to coffee; Wholesale services in relation to dairy products; Wholesale services in relation to sorbets; Wholesale services in relation to frozen yogurts; Retail services in relation to sorbets; Retail services in relation to frozen yogurts; Wholesale services in relation to chocolate; Wholesale services in relation to confectionery; Wholesale services in relation to ice creams; Wholesale services in relation to foodstuffs; Retail services in relation to chocolate; Retail services in relation to confectionery; Retail services in relation to desserts; Retail services in relation to ice creams; Retail services in relation to baked goods; Retail services in relation to dairy products; Wholesale services in relation to cocoa; Retail services relating to food.

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 35: Wholesale services in relation to fragrancing preparations; Procuring of contracts for the purchase and sale of goods; Arranging of trading transactions and commercial contracts; Import and export services; Advertising, marketing and promotional services; Distribution of advertising, marketing and promotional material; Product demonstrations and product display services; Exhibitions (Conducting -) for advertising purposes; Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Exhibitions for commercial or advertising purposes.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 331 707. The application is based on European Union trade mark registration No 7 362 338. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the fanciful word ‘FANTASTY’ is the most distinctive element of its earlier trade mark. Furthermore, the dominant part of the proprietors’ mark, which is at the beginning of the mark and, according to the applicant, is the only part that has distinctive character (since ‘and tasty’ ought to have no distinctiveness for food products), is made up of the completely identical word ‘FANTASTY’. The dominant and distinctive elements of the opposing marks are, therefore, visually and aurally identical. The consumers’ attention will, in both cases, focus on the word ‘FANTASTY’, since the additional word ‘tasty’ in the proprietors’ mark totally lacks distinctiveness in relation to the goods. Since the most distinctive and dominant component of both marks, namely ‘FANTASTY’, is identical, it is, according to the applicant, clear that the signs are indeed similar and give the same overall impression.

The EUTM proprietors explain that, regarding the comparison between the earlier mark and ‘FANTASTY AND TASTY’, the trade marks are quite different from the aural, visual and conceptual points of view, and the coincidence in the initial element ‘FANTASTY’ cannot per se be a reason to declare the trade marks as incompatible, as on the whole the marks are different. In support of their arguments, the EUTM proprietors cite several decisions of the Opposition Division.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH 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 and services

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 goods on which the application is based are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; bottled and tinned vegetables; soups; bouillons; instant mashed potatoes; cooking oil; albumen for food, alginates for food, anchovies, bacon, edible bone oil, blood sausages, black pudding, broth, broth concentrates, preparations for making bouillon, preserved beans, charcuterie, fruit chips, potato crisps, dates, coconut fat, fat-containing mixtures for bread slices, fatty substances for the manufacture of edible fats, fish fillets, fish (not live), preserved fish, foodstuffs made from fish, fish fillets, poultry, not live, pork, fruit preserved in alcohol, frozen fruits, frosted fruits, candied fruits, stewed fruit, preserved fruit, fruit chips, fruit jellies, fruit pulp, fruit salads, fruit peel, jellies for food, gelatine for food, isinglass for food, frosted fruits, cream, whipped cream, vegetables, preserved vegetables, cooked vegetables, dried vegetables, vegetable juices, vegetable juices for cooking, vegetable salads, vegetable soup preparations, gherkins, lobsters (not live), ginger jam, lard for food, peanut butter, processed peanuts, vegetable juices for cooking, cocoa nut butter, cocoa butter, candied fruits, casein for food, caviar, kefir, coconut fat, desiccated coconut, coconut oil, coconut butter, tripe, broth concentrates, bouillon concentrates, sausages, croquettes, crayfish (not live), kumys (milk beverage), preserved garden herbs, meat, fruit pulp, preserved meat, broth, bouillon concentrates, meat extracts, meat jellies, meat gravies, spiny lobsters (not live), salmon, liver, liver pate, liver pate spreads, preserved lentils, foods prepared from fish, salted foods, preserved onions, rennet, corn oil, ground almonds, margarine, marmalades, milk, milk beverages (milk predominating), milk products, mussels (not live), marrow for food, animal marrow for food, suet for food, prepared nuts, weed extracts for food, preserved olives, olive oil for food, cheese, oysters (not live), palm kernel oil for food, palm for food, liver pate, pectin for food, piccalilli, pickles, pollen prepared as foodstuff, French fries, potato crisps, protein for human consumption, powdered eggs, rape oil for food, raisins, prawns (not live), fruit salads, vegetable salads, salted sardines, sesame oil, herrings, fruit peel, crustaceans (not live), ham, meat stock, butter, peanut butter, cocoa butter, cocoa nut butter, coconut butter, buttercream, snail eggs (for consumption), soya beans, preserved, for food, sunflower oil, soup, preparations for making soup, soup preparations, vegetable soup preparations, sauerkraut, mushrooms, preserved, jams, tofu, tomato juice for cooking, tomato puree, tuna fish, truffles, preserved, shrimps (not live), whey, game (not live), whipped cream, yoghurt, eggs, edible snails eggs, yolk of eggs, powdered eggs, white of eggs, peas, preserved.

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; Aniseed, aromatic preparations for food, pastries, cakes; pastries; cakes, flavourings, other than essential oils, for cakes, pâté (pastries);pastries, ribbon spaghetti, royal jelly for human consumption, not for medical purposes, binding agents for ice-cream, sausage binding materials, bread, bread rolls, buns, bean meal, chocolate, chocolate-based beverages, chocolate beverages with milk, chow-chow, chicory (coffee substitute), corn flakes, couscous (semolina), curry (spice), pasta for food, edible decorations for cakes, salad dressings, chocolate-based beverages, coffee-based beverages, cocoa-based beverages, flavourings, other than essential oils, for beverages, essences for foodstuffs (except etheric essences and essential oils), tarts, oat flakes, corn flakes, chips (cereal products), fondants (confectionery), thickening agents for cooking foodstuffs, royal jelly for human consumption, not for medical purposes, ices, binding agents for ice-cream, ice for refreshment, gluten for food, glucose for food, sweets; candy, flour for food, groats for human food, chewing-gum, turmeric for food, crushed oats, husked oats, oat-based food, oat flakes, oatmeal, sea water (for cooking), honey, infusions, not medicinal, ginger, ice, natural or artificial, ice for refreshment, peanut confectionery, confectionery for decorating Christmas trees, yeast, ferments for pastes, coffee, unroasted coffee, coffee-based beverages, coffee beverages with milk and coffee substitutes, vegetable preparations for use as coffee substitutes, coffee substitutes, cake mixtures, cocoa, cocoa-based beverages, cocoa beverages with milk, cocoa products, cake mixes, cakes, gingerbread, soft cakes; pastries; candy for food, cinnamon (spice), capers, sweetmeats (candy), ketchup, tomato ketchup, biscuits, caramels (candy), confectionery, confectionery for decorating Christmas trees, salt for preserving foodstuffs, husked barley, crushed barley, condiments, relish (condiment), seasonings, cloves (spice), spices, allspice, bread rolls, flour-milling products, meat pies, liquorice (confectionery), stick liquorice (confectionery), farinaceous foods, essences for foodstuffs (except etheric essences and essential oils), mayonnaise, milled corn, roasted corn, corn flakes, corn flour, macaroni, milled corn, malt for food, malt extracts for food, malt biscuits, maltose, macaroons (pastry), almond confectionery, almond paste, semolina, marzipan, almond paste, molasses for food, flour for food, milk-based meals, pastry containing milk, nutmegs, mint for confectionery, meat tenderisers for household purposes, noodles, unleavened bread, pies, meat pies, pancakes, peppers (seasonings), pasta, pastries; pastries, lozenges (confectionery), pastilles (confectionery), pepper, gingerbread, peppermint sweets, peppermint confectionery, petits fours (cakes), piroshki, pizzas, popcorn, potato flour for food, pralines, cereal preparations, propolis (bee glue) for human consumption, puddings, powders for making ices, powders for ice-cream, cake powder, ravioli, rice, maize (roasted), saffron (seasoning), sago, salad dressings, salt for preserving foodstuffs, salt for cooking, cooking salt, celery salt, golden syrup, rusks, flavourings, other than essential oils, for cakes, flavourings, other than essential oils, for beverages, coffee flavourings, not essential oils, cake mixes, biscuits, pastry, sandwiches, petit-beurre biscuits, sugar, soya flour, sorbet (ice-cream), spaghetti, preparations for stiffening whipped cream, star aniseed, bee glue (propolis) for human consumption, starch for food, starch products for food, leaven, sushi, sauces, sweeteners, natural confectionery, tapioca, tapioca flour, tea, tomato ketchup, chewing-gum, cake decorations, edible, cakes, vanilla (flavouring), vanillin (vanilla substitute), sea water (for cooking), vegetable preparations for use as coffee substitutes, vermicelli (noodles), ribbon vermicelli, vermicelli (noodles), wheat flour, vinegar, whipping cream, stabilising preparations for waffles, gruel with a milk base, beer vinegar, mixed herbs for salad dressings; stocks and spices; Asian sauces and soy sauce.

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; weeds for human consumption, oranges, beet, berries, fresh beans, fresh chicory salad, chicory roots, lemon, citrus fruits, grapes, fresh juniper berries, fish, fresh fruit, by-products of fruit-processing, fresh vegetables, cucumbers, hazelnuts, oats, hops, beans, peanuts (unshelled), cocoa beans, raw, coconuts, coconut shell, kola nuts, barley, mussels (live), nuts (fruits), olives, fresh oil cakes, oysters (live), squashes, leeks, rhubarb, lettuce, sesame, coconut shell, crustaceans (live), sugar cane, grains (cereals), seed corn, fresh truffles, wheat, vine plants, fresh garden herbs, plants, peas, fresh.

The contested goods and services are the following:

Class 29: Edible oils; Butter preparations; Edible fats; Broth [soup]; Stewed apples; Dips; Fruit desserts; Artificial milk based desserts; Pollen prepared as foodstuff; Custard style yoghurts; Dairy puddings; Yoghurt desserts; Desserts made from milk products; Meats; Jellies, jams, compotes, fruit and vegetable spreads; Candied fruit snacks; Maraschino cherries; Cooked fruits; Fruit peel; Apple flakes; Coconut flakes; Fruit conserves; Coconut powder; Coconut, desiccated; Fruit jellies; Processed nuts; Dried fruit products; Fruit paste; Dried truffles [edible fungi]; Truffles, preserved; Processed fruits, fungi and vegetables (including nuts and pulses); Birds eggs and egg products; Fish, seafood and molluscs; Drinks made from dairy products; Cream [dairy products]; Buttercream; Dulce de leche [condensed milk]; Yoghurt; Cream cheese; Dairy products and dairy substitutes; Potato-based snack foods; Soy-based snack foods.

Class 30: Chocolate-based ready-to-eat food bars; Crumble; Rice biscuits; Crackers made of prepared cereals; Savory pastries; Mincemeat pies; Cereal-based snack food; Snack food products consisting of cereal products; Snack food products made from cereal flour; Sweet glazes and fillings; Syrups and treacles; Foodstuffs made of a sweetener for making a dessert; Foodstuffs made of a sweetener for sweetening desserts; Foodstuffs made of sugar for sweetening desserts; Sugar; Sugar, other than for medical use; White sugar; Sugar candy [for food]; Caramelised sugar; Crystal sugar [not confectionery]; Palm sugar; Grape sugar; Powdered sugar for preparing isotonic beverages; Granulated sugar; Boiled sugar; Invert sugar; Sugar for making jellies; Liquid sugar; Sugar for making jams; Sugar for making conserves of fruit; Invert sugar cream [artificial honey]; Sweet spreads [honey]; Sweeteners (Natural -); Natural sweeteners in the form of fruit concentrates; Sweeteners (Natural -) in granular form; Fruit sugar; Glucose powder for food; Buckwheat jelly (Memilmuk); Royal jelly; Agave syrup for use as a natural sweetener; Maltose; Spray crystallized maltose for food; Honey; Herbal honey; Biological honey for human consumption; Natural honey; Natural ripe honey; Tablets (Non-medicated -) made of glucose with a caffeine base; Polysaccharides for use as food for human consumption; Glucose preparations for food; Foodstuffs made of sugar for making a dessert; Propolis for food purposes; Bee glue; Honey substitutes; Sugar substitutes; Cube sugar; Cocoa-based beverages; Cocoa; Cocoa products; Coffee; Chocolate extracts; Preparations based on cocoa; Coffee, teas and cocoa and substitutes therefor; Cereals; Doughs, batters, and mixes therefor; Yeast and leavening agents; Dried and fresh pastas, noodles and dumplings; Farinaceous foods; Foodstuffs made from dough; Foodstuffs made from soybean; Processed cereals for food for human consumption; Carbohydrate preparations for food; Preparations for making bakery products; Food preparations based on grains; Farinaceous food pastes; Grist; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice confectionery; Ice cream stick bars; Ice cream drinks; Ice cream confectionery; Frozen yogurt confections; Confectionery ices; Ice cream desserts; Ice cream gateaux; Frozen custards; Mixtures for making frozen confections; Mixtures for making ice cream confections; Frozen yoghurts; Ice-cream cakes; Cereal bars and energy bars; Sweets (candy), candy bars and chewing gum; Bread; Pastries, cakes, tarts and biscuits (cookies); Cotton candy; Foods with a cocoa base; Foodstuffs containing chocolate [as the main constituent]; Foodstuffs containing cocoa [as the main constituent]; Almonds covered in chocolate; Snack foods consisting principally of confectionery; Chocolate flavourings; Confectionery items coated with chocolate; Wafered pralines; Chocolate waffles; Chocolate coated nougat bars; Viennoiserie; Fruited scones; Jam buns; Chocolates; Liqueur chocolates; Chocolate; Chocolate with alcohol; Imitation chocolate; Non-medicated chocolate; Chocolate for toppings; Chocolate for confectionery and bread; Aerated chocolate; Orange based confectionery; Flavoured sugar confectionery; Nut confectionery; Non-medicated flour confectionery containing chocolate; Non-medicated flour confectionery containing imitation chocolate; Non-medicated flour confectionery coated with imitation chocolate; Non-medicated flour confectionery coated with chocolate; Confectionery containing jelly; Confectionery having wine fillings; Confectionery having liquid fruit fillings; Confectionery having liquid spirit fillings; Chocolate flavoured confectionery; Mint flavoured confectionery (Non-medicated -); Liquorice flavoured confectionery; Confectionery in frozen form; Frozen confectionery containing ice cream; Confectionery made of sugar; Chocolate confectionery having a praline favour; Non-medicated chocolate confectionery; Chocolate confectionery containing pralines; Non-medicated flour confectionery; Non-medicated mint confectionery; Non-medicated confectionery in jelly form; Confectionery in liquid form; Dairy confectionery; Non-medicated confectionery in the shape of eggs; Non-medicated confectionery having toffee fillings; Non-medicated confectionery having a milk flavour; Non-medicated confectionery for use as part of a calorie controlled diet; Non-medicated confectionery containing chocolate; Non-medicated confectionery containing milk; Confectionery containing jam; Chocolate bark containing ground coffee beans; Creamed rice; Puddings; Cocoa based creams in the form of spreads; Chocolate creams; Chocolate spreads; Croissants; Decorations [edible] for christmas trees; Chocolate decorations for confectionery items; Chocolate decorations for cakes; Turkish delight; Turkish delight coated in chocolate; Boiled confectionery; Frozen dairy confections; Panned sweets (Non-medicated -); Frozen confections on a stick; Korean traditional sweets and cookies [hankwa]; Chocolate vermicelli; Chocolate fondue; Chocolate coated fruits; Crackers; Crackers flavoured with fruit; Salted wafer biscuits; Fruit jellies [confectionery]; Waffles; Waffles with a chocolate coating; Sugar-coated coffee beans; Halvah; Potato flour confectionery; Marzipan; Chocolate marzipan; Sweet bean jam coated with sugared-bean based soft shell [nerikiri]; Kheer mix (rice pudding); Mousses (Chocolate -); Mousse confections; Mousses (Dessert -) [confectionery]; Chocolate coated nuts; Chocolate coated macadamia nuts; Coated nuts [confectionery]; Cinnamon rolls; Panettone; Pancakes; Sandwich spread made from chocolate and nuts; Spreads made from chocolate and nuts; Dried sugared cakes of rice flour (rakugan); Sweet pounded rice cakes (mochi-gashi); Soft pin-rolled cakes of pounded rice (gyuhi); Pastry crust; Pavlovas made with hazelnuts; Butterscotch chips; Poppadums; Rice-based pudding dessert; Prepared desserts [chocolate based]; Prepared desserts [confectionery]; Chilled desserts; Chocolate based products; Candy; Almond confectionery; Peanut confectionery; Peanut butter confectionery chips; Non-medicated confectionery products; Confectionery for decorating Christmas trees; Bakery goods; Rice puddings containing sultanas and nutmeg; Semolina pudding; Chocolate spreads for use on bread; Nougat; Truffles [confectionery]; Truffles (rum -) [confectionery]; Tiramisu; Tablet (confectionary); Marzipan substitutes; Imitation custard; Dessert souffles; Sopapillas [fried bread]; Chocolate topping; Instant dessert puddings; Ready-to-eat puddings; Yorkshire puddings; Savory sauces, chutneys and pastes; Popcorn seasoning; Flavourings for foods; Flavourings made from fruits; Vanilla flavorings; Cinnamon powder [spice]; Bases for making milk shakes [flavourings]; Flavorings and seasonings; Edible essences for foodstuffs [other than etheric substances and essential oils]; Sweeteners consisting of fruit concentrates; Cinnamon [spice]; Flavour enhancers for food [other than essential oils]; Synthetic thickeners for foodstuffs; Vegetable thickeners; Seasoning mixes; Peppermint for confectionery; Flavourings for cakes; Aromatic preparations for food; Sauces containing nuts; Substances imparting flavour for addition to food [other than essential oils]; Substances imparting smell for addition to food [other than essential oils]; Sauces for ice cream; Fruit sauces; Sauces; Vanillin [vanilla substitute]; Vanilla.

Class 35: Retail services in relation to cocoa; Retail services in relation to coffee; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to desserts; Wholesale services in relation to baked goods; Wholesale services in relation to coffee; Wholesale services in relation to dairy products; Wholesale services in relation to sorbets; Wholesale services in relation to frozen yogurts; Retail services in relation to sorbets; Retail services in relation to frozen yogurts; Wholesale services in relation to chocolate; Wholesale services in relation to confectionery; Wholesale services in relation to ice creams; Wholesale services in relation to foodstuffs; Retail services in relation to chocolate; Retail services in relation to confectionery; Retail services in relation to desserts; Retail services in relation to ice creams; Retail services in relation to baked goods; Retail services in relation to dairy products; Wholesale services in relation to cocoa; Retail services relating to food; Procuring of contracts for the purchase and sale of goods; Arranging of trading transactions and commercial contracts; Import and export services; Advertising, marketing and promotional services; Distribution of advertising, marketing and promotional material; Product demonstrations and product display services; Exhibitions (Conducting -) for advertising purposes; Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Exhibitions for commercial or advertising purposes.

Contested goods in Class 29

The earlier trade mark was classified in accordance with the ninth edition of the Nice Classification and the specification includes all the general categories of Class 29 (meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats) plus a number of items that can be included in one of these categories and six of the seven items contained in the alphabetical list that do not fit in the natural and usual meaning of the general indications.

The contested mark was classified in accordance with the 10th edition of the Nice Classification and the specification includes some of the general categories of Class 29, some items that can be included in these categories and one of the seven items contained in the alphabetical list that do not fit in the natural and usual meaning of the general indications.

All of the contested goods are identical to those protected by the earlier mark either because they appear verbatim (e.g. edible oils and edible fats) or because the general category of the earlier mark includes the specific goods of the contested sign (e.g. bird eggs are included in eggs). Furthermore, the only item that does not fit in the natural and usual meaning of the general indications in the contested mark is pollen prepared as foodstuff and it appears verbatim in the specification of the earlier mark.

Contested goods in Class 30

The earlier trade mark was classified in accordance with the ninth edition of the Nice Classification and the specification includes all the general categories of 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) plus a number of items that can be included in one of these categories and all of the items contained in the alphabetical list that do not fit in the natural and usual meaning of the general indications.

The contested mark was classified in accordance with the 10th edition of the Nice Classification and the specification includes some of the general categories of Class 30, some items that can be included in these categories and several items contained in the alphabetical list that do not fit in the natural and usual meaning of the general indications.

All the contested goods are identical to those protected by the earlier mark either because they appear verbatim (e.g. sugar) or because the general category of the earlier mark includes the specific goods of the contested sign (e.g. confectionery items coated with chocolate are included in confectionery). Furthermore, the items that do not fit in the natural and usual meaning of the general indications in the contested mark are included verbatim in the specification of the earlier mark or the contested item is included in the specification of the earlier mark, for example vanilla flavorings is included in flavourings, other than essential oils, for cakes.

Contested services in Class 35

The contested services either are retail or wholesale services or are advertising, business administration or import and export services.

Regarding the contested retail and wholesale services, the following must be stated: retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The specification of the contested trade mark includes retail and wholesale of goods in Classes 29 and 30 that appear in the list of the earlier mark either verbatim (e.g. coffee, cocoa) or are included in the goods in relation to which the retail and wholesale are carried out. For example, the contested baked goods in relation to which the wholesale is carried out do not appear, as such, in the list of goods covered by the earlier mark. However, a number of goods that are included in baked goods do appear in the list of the earlier mark, such as petits fours (cakes). Consequently, all of the contested services that are related to retail and wholesale are similar to a low degree to the goods protected by the earlier mark in Classes 29 and 30.

One exception to the above are the contested wholesale services in relation to fragrancing preparations, as the goods fragrancing preparations are not included in the list of the earlier mark and the services are, therefore, dissimilar to the applicant’s goods.

The rest of the contested services, namely procuring of contracts for the purchase and sale of goods; arranging of trading transactions and commercial contracts; import and export services; advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; product demonstrations and product display services; exhibitions (conducting -) for advertising purposes; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; exhibitions for commercial or advertising purposes, are all dissimilar to all the goods protected by the earlier mark.

Procuring of contracts for the purchase and sale of goods; arranging of trading transactions and commercial contracts fall into the general category of business administration. Advertising services and all the services related to them consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. These services are dissimilar to the goods protected by the earlier mark.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and they have absolutely nothing in common with the applicant’s goods. Therefore, they are dissimilar.

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 and the services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary, as it will be lower for the goods, which in principle are consumed on a daily basis, than for the services.

3. The signs

	FANTASTY AND TASTY
Earlier trade mark	Contested trade mark

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation 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 sign with a verbal element (‘FANTASTY’) written in white against a green background that resembles a speech bubble, namely a rounded shape in which the words or thoughts of characters in a comic strip or cartoon are written. The contested mark is a word mark and at its beginning contains the same word as that in the earlier trade mark, followed by two other words, ‘AND’ – which is a a conjunction that expresses a relationship of connection or addition and is used to join a word with a wordwith a word, a clause with a clause or a sentence with a sentence – and ‘TASTY’.

The coinciding word, ‘FANTASTY’, is a portmanteau word made up of ‘fantastic’ (‘extraordinarily good or attractive’) and ‘tasty’ (‘-of food- having a pleasant, distinct flavor’). From the definition given of ‘fantastic’, it is clear that this is a laudatory word with very little distinctive character, and the same can be said of the adjective ‘tasty’ in as much as it denotes characteristics of the goods in Classes 29 and 30 and, indirectly, of the services carried out in relation to them in Class 35. However, in as much as ‘FANTASTY’ is an invented word, it is distinctive.

Neither of the marks has elements that could be deemed more dominant than other elements.

Visually the presence of the green background in the shape of a speech bubble does not detract from the fact that the most distinctive word of both marks is identical, as account must be taken of the fact that, when signs consist of both verbal and figurative components, in principle the verbal 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 more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the marks are visually highly similar.

Aurally, although it is true, as the EUTM proprietors argue, that the contested mark will be pronounced in a different way from the earlier mark, as it is longer, it is no less true that, as pointed out above, the two extra words in the contested mark are less distinctive than the coinciding word. Therefore, the marks are aurally highly similar.

The EUTM proprietors argue that, conceptually, ‘the mental image that both trademarks will create in the consumer’s mind will be very different (…) whereas the opponent trademark (sic) will be considered a fancy word with any particular meaning, or in any case, relative to the “fantasy”, the challenged trademark will be considered as a very appealing trademark containing an original fancy word that the consumers will associate with a real good taste’. The Cancellation Division agrees that the word ‘FANTASTY’ is indeed a fanciful word that, as a whole, means nothing. As for ‘tasty’, it does not appear, as such, in the earlier mark and adds a point of conceptual dissimilarity with the earlier mark, which must be seen, however, in the context of its lack of distinctive character.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 and services 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

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

In the present case, the contested goods are identical and the contested services are similar to a low degree and dissimilar to the applicant’s goods. The relevant public is made up of average consumers and professionals and the degree of attention varies from average to high. The most distinctive element of both marks is identical, and the signs differ only in the addition, in the contested mark, of two words following the coinciding element. Therefore, it is feasible to assume that the public, faced with identical goods, will attribute the same commercial origin to them or will think that they originate from undertakings with commercial ties. Therefore, the cancellation action filed under Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be upheld for the identical goods.

Some of the contested services have been deemed to be similar to only a low degree to the applicant’s goods and, in general, the attention given to these services is higher than average, as the relevant public is made up of professionals in most cases. The marks, however, have in common their most distinctive word, namely the verbal element of the earlier mark which is fully reproduced at the beginning of the contested mark; the cancellation action must therefore also be upheld in relation to the services that are similar to a low degree.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these services cannot be successful.

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

In their observations, the EUTM proprietors refer to some decisions of the Opposition Division to support their views. The Cancellation Division cannot apply the findings of these decisions to the present case, as the facts in these cases differ from or are not applicable at all to the present case. For example, in case B 2 218 694, ‘FUNTASTICS v FANTASTIKO CHRISTMAS’, the Opposition Division considered that both ‘FUNTASTICS’ and ‘FANTASTIKO’ would be understood by the public as referring to ‘fantastic’, which is a laudatory word and, therefore, the consumers would not confuse the signs. As expressed above, however, ‘FANTASTY’ is composed of two words and, therefore, is at least more distinctive than the rest of the words of the contested mark (‘AND TASTY’). In addition, ‘FANTASTY’ is identically contained in both marks.

As for the other case mentioned by the EUTM proprietors, namely B 2 099 417, it states that the ‘…part of the public, having a basic knowledge of the English language, is likely to understand the meaning of “FOR YOU” and probably will associate the combination “4U” with the same meaning’. The Cancellation Division does not dispute this fact at all, but, in the present case, the likelihood of confusion has been evaluated in relation to the English-speaking public. Consequently, none of the arguments to which the EUTM proprietors refer can be applied to the present case.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Pedro JURADO MONTEJANO

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. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.