OPPOSITION No B 2 477 670

Mohamed Mustapha, Ellernstraße 86, 45326 Essen, Germany (opponent), represented by Cbdl Patentanwälte, Königstr. 57, 47051 Duisburg, Germany (professional representative)

a g a i n s t

Kassatly Group Holding SAL, Accacia Building, 1st floor, facing Sioufi Garden, Achrafieh, Beirut, Lebanon (applicant), represented by Modiano Josif Pisanty & Staub Ltd, Thierschstr. 11, 80538 München, Germany (professional representative).

On 04/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 477 670 is upheld for all the contested goods.

2. Community trade mark application No 13 345 319 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 13 345 319. The opposition is based on Community trade mark registrations No 8 298 631 and No 1 350 040. 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:

Community trade mark registration No 1 350 040:

Class 29: Preserved, dried and cooked fruits and vegetables; fruit sauces, jams and jellies; edible oils and fats; meat, fish, poultry and games (fresh and preserved), fish meal for human consumption, broth concentrates, meat extracts; shellfish (not live); caviar; potato crisps and fritters; animal marrow and bone oil for food; eggs, milk and milk products.

Class 30: Spices and condiments; vinegar and sauces (condiments), ketchup, mayonnaise; salt; mustard; yeast; baking powder; honey; treacle; flour and preparations made from cereals, bread, pastry and confectionery; edible ices; ice; coffee, tea, cocoa; sugar; rice; tapioca; sago; coffee substitutes; vegetable flavourings, other than essential oils; meat tenderisers for household purposes; thickening agents for cooking foodstuffs; flaked corn; couscous; essences for foodstuffs (except etheric essences and essential oils); noodles; ferments for pastes; malt and malt extracts for food.

Class 32: Fruit drinks and fruit juices; vegetable juices; syrups and other preparations for making beverages; mineral and aerated waters and other non-alcoholic drinks; beers (alcoholic and non-alcoholic).

Community trade mark registration No 8 298 631:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

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; Animal food; malt.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers’ articles; matches.

The contested goods are the following:

Class 29: Fruit preserves; jams; tahini [sesame seed paste]; pickles; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; frosted fruits; crystallized fruits; fruit chips; dates; jellies; compotes; eggs, milk and milk products; edible oils and fats; vegetable juices for cooking.

Class 32: Syrups and other preparations for making beverages; rose-flavored waters; flower-flavored waters; fruit juices; vegetable juices [beverages]; water beverages; aerated fruit juices; aerated mineral waters; beer; flavored beers; fruit drinks; isotonic beverages; non-alcoholic beer; sparkling water; concentrates and powders for use in the preparation of fruit-flavored beverages.

Class 33: Wines; alcoholic beverages except beers.

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

Jams; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; eggs, milk and milk products; edible oils and fats are identically contained in the lists of goods (including synonyms).

The contested fruit preserves are included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested pickles are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.

The contested frozen fruits and vegetables are included in the broad category of the opponent’s preserved fruits and vegetables. Therefore, they are identical.

The contested frosted fruits; crystallized fruits; fruit chips; compotes are included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested dates, being classified in Class 29, cover only dates that have undergone a certain process of preservation (fresh dates are classified in Class 31). Therefore, the contested dates are included in the broad category of the opponent’s preserved fruits. Therefore, they are identical.

The contested vegetable juices for cooking are highly similar to the opponent’s preserved and cooked vegetables, as these goods, all of which are made from or are vegetables, have similar natures, may be used for the same purpose (i.e. to impart the flavour of a certain vegetable when cooking) using the same method, may be in competition with each other, may originate from the same producers and may be distributed through the same channels to the same consumers.

The contested tahini [sesame seed paste] is a paste made from ground, hulled, sesame seeds. This product falls under the general category of processed fruits and vegetables, as this category includes various products made of processed nuts and seeds. The Opposition Division considers that tahini is similar at least to a low degree to the opponent’s preserved fruits and vegetables. The opponent’s broad category of preserved fruits and vegetables also includes preserved nuts and seeds (e.g. those that are salted or dried) and, therefore, the goods under comparison (the contested tahini [sesame seed paste] and the opponent’s preserved fruits and vegetables) may have the same nature (i.e. can be made from seeds), may originate from the same producers and may be distributed through the same channels.

Contested goods in Class 32

Syrups and other preparations for making beverages; aerated mineral waters; beer; non-alcoholic beer; sparkling water; fruit juices; fruit drinks; vegetable juices [beverages] are identically contained in the lists of goods (including synonyms).

The contested rose-flavored waters; flower-flavored waters; water beverages; aerated fruit juices; isotonic beverages are included in the broad category of the opponent’s non-alcoholic drinks [other than mineral and aerated waters]. Therefore, they are identical.

The contested flavored beers are included in the broad category of the opponent’s beers (alcoholic and non-alcoholic). Therefore, they are identical.

The contested concentrates and powders for use in the preparation of fruit-flavored beverages are included in the broad category of the opponent’s preparations for making beverages [other than syrups]. Therefore, they are identical.

Contested goods in Class 33

Alcoholic beverages except beers are identically contained in the lists of goods.

The contested wines are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

2. The signs

CHTOURA
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Both earlier marks are identical.

Visually, the signs are similar to the extent that the word elements ‘CHTOURA’, which is the only element of the earlier marks, and ‘CHTAURA’, which is the second word element of the contested sign, coincide in the majority of their letters, namely ‘CHT*URA’, and differ only in their fourth letters, namely ‘O’ and ‘A’. The signs also differ in the additional verbal element ‘KASSATLY’ and in the stylisation and the frame device of the contested sign, which have no counterparts in the earlier marks.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‘CHT*URA’ present identically in all signs, and to that extent the signs are aurally similar. Furthermore, the fourth letters of these verbal elements, namely ‘O’ and ‘A’, respectively, are likely to be pronounced in a similar way in some of the European Union languages. The pronunciation differs in the sound of the word ‘KASSATLY’ of the contested sign, which has no counterpart in the earlier marks.

Conceptually, although the only word element of the earlier marks, ‘CHTOURA’, and the element ‘CHTAURA’ of the contested sign refer to a city in Lebanon (08/05/2010, R‑1213/2008-4, Chef Chtaura, § 8), the Opposition Division considers that the vast majority of the public in the European Union would not be aware of it, as it is neither big nor famous in the European Union for the relevant goods. The word ‘KASSATLY’ of the contested sign has no meaning. It follows that neither the signs nor their elements have a meaning for the relevant public. Therefore, 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, 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 than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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 or similar to various degrees are directed at the public at large. The degree of attention is considered average.

6. Global assessment, other arguments and conclusion

The goods are identical or similar to various degrees and the degree of attention paid during the purchase of those goods is considered average.

The signs are visually and aurally similar due to the similarity between the earlier marks ‘CHTOURA’ and the element ‘CHTAURA’ of the contested sign, as these two elements coincide in the majority of their letters, namely ‘CHT*URA’, which results in visual and aural similarity between the signs. They differ only in their fourth letters, namely ‘O’ and ‘A’, which, being placed between the identical letters, would not create a significant visual or aural difference.

The signs also differ in the additional verbal element ‘KASSATLY’ of the contested sign as well as in the stylisation and the frame device of the contested sign.

The word ‘KASSATLY’ of the contested sign appears first and is distinctive. However, the word ‘CHTAURA’, despite being the second verbal element of the sign, is also considered distinctive. It follows that both words of the contested sign are distinctive and, therefore, each of them maintains an independent distinctive role.

It is also acknowledged that the word ‘CHTAURA’ of the contested sign is depicted in smaller letters than the word ‘KASSATLY’; however, the difference in size is not so great that the word ‘CHTAURA’ would be overshadowed by the word ‘KASSATLY’, and, therefore, both words are immediately visually perceived.

As regards the figurative aspects of the contested sign (i.e. the stylisation and the frame), first, they are not considered particularly striking (the stylisation of letters is fairly standard and the frame is a common decorative device found on many trade marks and products), and, second, where a trade mark is composed of verbal and figurative elements, in principle, the average consumer will more easily refer to the goods in question by quoting the name than by describing the trade mark’s figurative element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the figurative aspects of the contested sign would not have a significant impact on the consumer.

It must be noted that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones.

As indicated above, although the element ‘CHTAURA’ of the contested sign, which is similar to the sole verbal element of each earlier mark, is placed second, it has an independent distinctive role within the sign, and, therefore, the Opposition Division considers that the abovementioned similarities between the signs are likely to lead consumers to attribute to the goods the same or an economically related commercial source. The contested sign might be perceived as a variation of the earlier marks, for example to designate a new line of products.

The Opposition Division considers that the degree of similarity between the signs is such that the likelihood of confusion cannot be excluded for all goods, including those that are similar to a low degree.

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

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registrations No 8 298 631 and No 1 350 040. It follows that the contested trade mark must be rejected in its entirety.

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

Ric WASLEY

Vita VORONECKAITE

Michaela SIMANDLOVA

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.