OPPOSITION No B 2 487 679

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Giunti Editore S.p.a., Piazza Virgilio 4, 20123 Milano, Italy (applicant).

On 10/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 487 679 is partially upheld, namely for the following contested goods and services:

Class 29: Meats; Processed fruits, fungi and vegetables (including nuts and pulses); Fish, seafood and molluscs; Casseroles [food]; Onion rings; Stock; Soups; Stock [prepared]; Beef bouillon; Fish stock; Vegetable stock; Broth [soup]; Filled potato skins; Corned beef hash; Chili con carne; Chop suey; Chilled foods consisting predominately of fish; Broth concentrates; Croquettes; Stock cubes; Soup cubes; Dahls; Extracts for soups; Roast beef flavoured extract; Fritters; Potato fritters; Potato dumplings; Gumbo; Vegetable burgers; Potato salad; Chicken salad; Prepared salads; Stuffed cabbage rolls; Vegetable soup preparations; Soup mixes; Canned soups; Mixes for making soup; Soup pastes; Cooked meals consisting principally of fish; Chilled meals made from fish; Pre-packaged dinners consisting primarily of seafood; Prepared meals made from poultry [poultry predominating]; Prepared meals consisting substantially of seafood; Prepared meals consisting principally of game; Hash brown potatoes; Shepherd's pie; French fries; Frozen french fries; Fish in olive oil; Fish with chips; Cooked meat dishes; Ready cooked meals consisting wholly or substantially wholly of meat; Ready cooked meals consisting wholly or substantially wholly of poultry; Ready cooked meals consisting wholly or substantially wholly of game; Prepared meals made from meat [meat predominating]; Prepared meals containing [principally] bacon; Prepared meals containing [principally] chicken; Prepared meals containing [principally] eggs; Prepared meat dishes; Prepared dishes consisting principally of meat; Faggots [food]; Soup powders; Bouillon (Preparations for making -); Soup (Preparations for making -); Mashed potato; Quenelles; Rhubarb in syrup; Rosti [fried grated potato cakes]; Sausages in batter; Vegetarian sausages; Scotch eggs; Soya [prepared]; Stews; Tamale; Fish cakes; Chowder.

Class 30: Prepared savory foodstuffs made from potato flour; Prepared foodstuffs in the form of sauces; Filled baguettes; Burritos; Calzones; Cheeseburgers [sandwiches]; Chalupas; Chimichanga; Chow mein; Crumble; Enchiladas; Fajitas; Pies; Shrimp dumplings; Rice dumplings dressed with sweet bean jam (ankoro); Hamburgers being cooked and contained in a bread roll; Hot dog sandwiches; Hot dogs (prepared); Macaroni salad; Pasta salad; Rice salad; Wrap [sandwich]; Spring rolls; Fresh sausage rolls; Egg rolls; Lasagne; Nachos; Green onion pancake [pajeon]; Frankfurter sandwiches; Sandwiches containing salad; Sandwiches containing minced beef; Steamed buns stuffed with minced meat (niku-manjuh); Filled bread rolls; Toasted cheese sandwich; Sandwiches containing meat; Toasted cheese sandwich with ham; Sandwiches containing fish fillet; Hamburgers contained in bread rolls; Sandwiches containing fish; Sandwiches containing chicken; Toasted sandwiches; Macaroni with cheese; Flaky pastry containing ham; Pasta containing stuffings; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and fish; Noodle-based prepared meals; Savory pastries; Egg pies; Pies containing meat; Pies containing vegetables; Pies containing fish; Pies containing poultry; Pies containing game; Meat pies [prepared]; Pork pies; Pies [sweet or savoury]; Meat pies; Poultry and game meat pies; Pasta dishes; Rice based dishes; Prepared rice dishes; Meals consisting primarily of pasta; Meals consisting primarily of rice; Prepared pizza meals; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Ready-made dishes containing pasta; Prepared meals containing [principally] rice; Prepared meals in the form of pizzas; Prepared meals containing [principally] pasta; Dry and liquid ready-to-serve meals, mainly consisting of rice; Fresh pizza; Pizza; Pizzas [prepared]; Preserved pizzas; Chilled pizzas; Uncooked pizzas; Frozen pizzas; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Canned pasta foods; Quesadillas; Quiches; Ravioli; Chinese steamed dumplings (shumai, cooked); Chinese stuffed dumplings (gyoza, cooked); Ravioli [prepared]; Rice mixed with vegetables and beef [bibimbap]; Risotto; Dried seaweed rolls [gimbap]; Hot sausage and ketchup in cut open bread rolls; Samosas; Sandwiches; Sausage rolls; Spaghetti and meatballs; Canned spaghetti in tomato sauce; Sushi; Tabbouleh; Tacos; Mincemeat pies; Vegetable pies; Wontons; Sliced rice cake soup [tteokguk]; Korean-style pasta soup [sujebi]; Savory sauces, chutneys and pastes; Fruit sauces; Dashi-tsuyu; Mayonnaise with pickles; Sauce [edible]; Sauces; Sauces flavoured with nuts; Sauces containing nuts; Sauces [condiments].

Class 35: Retail services in relation to meats; retail services in relation to foodstuffs; wholesale services in relation to meats; wholesale services in relation to foodstuffs

2. Community trade mark application No 13 407 804 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 407 804, namely against all the goods in Classes 29 and 30 and some of the services in Class 35. The opposition is based on Community trade mark registration No 4 935 425 and on international trade mark registration No 1 197 300 designating Bulgaria, Estonia, Croatia, Latvia, Lithuania, Hungary, Poland, Romania, Slovenia and Slovakia. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s Community trade mark registration No 4 935 425.

1. The goods and services

The goods on which the opposition is based are the following:

Class 29: Meat, poultry, game, meat and sausage products, meat and sausage preserves, food products derived from meat, meat jellies, prepared meals, semi-prepared meals, salads, the aforesaid goods mainly consisting of meat, meat products, sausage and/or poultry, including the aforesaid goods with added bread and/or potatoes and/or pasta and/or cheese and/or rice and/or vegetables.

The contested goods and services are the following:

Class 29: Meats; Processed fruits, fungi and vegetables (including nuts and pulses); Fish, seafood and molluscs; Dairy products and dairy substitutes; Casseroles [food]; Onion rings; Blancmanges; Bombay mix; Stock; Soups; Stock [prepared]; Beef bouillon; Fish stock; Vegetable stock; Broth [soup]; Filled potato skins; Dairy puddings; Roast chestnuts; Corned beef hash; Chili con carne; Chop suey; Chilled foods consisting predominately of fish; Condensed tomatoes; Broth concentrates; Puffed pork rind; Croquettes; Fish crackers; Stock cubes; Soup cubes; Dahls; Fruit desserts; Desserts made from milk products; Yoghurt desserts; Artificial milk based desserts; Extracts for soups; Roast beef flavoured extract; Potato flakes; Fritters; Potato fritters; Potato dumplings; Gumbo; Vegetable burgers; Potato salad; Chicken salad; Prepared salads; Stuffed cabbage rolls; Vegetable soup preparations; Stewed apples; Soup mixes; Canned soups; Mixes for making soup; Edible birds' nests; Soup pastes; Cooked meals consisting principally of fish; Chilled meals made from fish; Pre-packaged dinners consisting primarily of seafood; Prepared meals made from poultry [poultry predominating]; Prepared meals consisting substantially of seafood; Prepared meals consisting principally of game; Hash brown potatoes; Shepherd's pie; Potato chips; French fries; Kale chips; Soy chips; Yucca chips; Frozen french fries; Fish in olive oil; Fish with chips; Cooked meat dishes; Ready cooked meals consisting wholly or substantially wholly of meat; Ready cooked meals consisting wholly or substantially wholly of poultry; Ready cooked meals consisting wholly or substantially wholly of game; Prepared meals made from meat [meat predominating]; Prepared meals containing [principally] bacon; Prepared meals containing [principally] chicken; Prepared meals containing [principally] eggs; Prepared meat dishes; Prepared dishes consisting principally of meat; Pollen prepared as foodstuff; Faggots [food]; Soup powders; Bouillon (Preparations for making -); Soup (Preparations for making -); Mashed potato; Quenelles; Rhubarb in syrup; Rosti [fried grated potato cakes]; Banana chips; Dips; Dairy-based dips; Sausages in batter; Vegetarian sausages; Scotch eggs; Fruit-based snack food; Soy-based snack foods; Soya [prepared]; Potato-based snack foods; Stews; Potato snacks; Tamale; Fish cakes; Custard style yoghurts; Chowder; Savory butters; Clarified butter; Concentrated butter; Butter for use in cooking; Coconut butter; Seed butters; Edible fats; Corn fats; Cooking fats; Vegetable fats for cooking; Beef fat; Fatty substances for the manufacture of edible fats; Fat-containing mixtures for bread slices; Edible oils; Edible oils for use in cooking foodstuffs; Edible oils for glazing foodstuffs; Linseed oils [edible]; Coconut oil and fat [for food]; Cooking oils; Chilli oil; Olive oil for food; Groundnut oil; Butter oil; Canola oil; Coconut oil; Colza oil for food; Sunflower oil for food; Corn oil; Nut oils; Palm kernel oil for food; Olive oil; Palm oil for food; Bone oil, edible; Edible oils derived from fish [other than cod liver oil]; Flaxseed oil for culinary purposes; Sesame oil; Soybean oil; Soya bean oil for food; Soybean oil for cooking; Extra-virgin olive oil; Blended oil [for food]; Butter preparations; Suet for food; Beef tallow [for food]; Lard for food.

Class 30: Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice cream drinks; Ice beverages with a cocoa base; Ice beverages with a coffee base; Ice beverages with a chocolate base; Frozen yogurt confections; Ice confectionery; Iced confectionery (Non-medicated -); Ice cream confectionery; Confectionery ices; Frozen custards; Ice cubes; Ice cream desserts; Ice-cream cakes; Edible fruit ices; Dairy ice cream; Soya based ice cream products; Ice creams containing chocolate; Ice cream with fruit; Ice creams flavoured with chocolate; Ice cream mixes; Non-dairy ice cream; Yoghurt based ice cream [ice cream predominating]; Fruit ices; Ices and ice; Ice cream stick bars; Ices and ice creams; Edible ice powder for use in icing machines; Cooling ice; Ice, natural or artificial; Ice lollies; Flavored ices; Ice lollies being milk flavoured; Ice lollies containing milk; Water ice; Ice milk [ice cream]; Frozen lollipops; Organic binding agents for ice cream; Ice cream (Binding agents for -); Frosting mixes; Mixtures for making water ices; Sherbet mixes; Mixtures for making frozen confections; Mixtures for making ice cream confections; Mixtures for making ice cream products; Ice cream sandwiches; Parfaits; Powders for ice cream; Instant ice cream mixes; Sherbets [ices]; Fruit flavoured water ices in the form of lollipops; Sorbets [water ices]; Ice cream substitute; Soy-based ice cream substitute; Ice cream gateaux; Yoghurt (Frozen -) [confectionery ices]; Frozen yoghurts; Prepared savory foodstuffs made from potato flour; Prepared foodstuffs in the form of sauces; Filled baguettes; Chocolate-based ready-to-eat food bars; Pizza crusts; Pre-baked pizzas crusts; Rice biscuits; Burritos; Calzones; Cheeseburgers [sandwiches]; Chalupas; Corn kernels being toasted; Chimichanga; Tortilla chips; Chow mein; Pretzels; Prawn crackers; Rice crackers; Crackers flavoured with cheese; Rice crackers [senbei]; Pellet-shaped rice crackers (arare); Crackers filled with cheese; Crackers made of prepared cereals; Crackers flavoured with herbs; Crackers flavoured with spices; Crackers flavoured with meat; Crackers flavoured with vegetables; Crumble; Sticky rice cakes (Chapsalttock); Enchiladas; Fajitas; Chips [cereal products]; Pies; Flapjacks; Shrimp dumplings; Rice dumplings dressed with sweet bean jam (ankoro); Maize, roasted; Hamburgers being cooked and contained in a bread roll; Hot dog sandwiches; Hot dogs (prepared); Macaroni salad; Pasta salad; Rice salad; Wrap [sandwich]; Spring rolls; Fresh sausage rolls; Egg rolls; Lasagne; Fried corn; Nachos; Green onion pancake [pajeon]; Frankfurter sandwiches; Sandwiches containing salad; Sandwiches containing minced beef; Steamed buns stuffed with minced meat (niku-manjuh); Bean jam buns; Filled bread rolls; Toasted cheese sandwich; Sandwiches containing meat; Toasted cheese sandwich with ham; Sandwiches containing fish fillet; Hamburgers contained in bread rolls; Sandwiches containing fish; Sandwiches containing chicken; Toasted sandwiches; Macaroni with cheese; Flaky pastry containing ham; Pasta containing stuffings; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and fish; Noodle-based prepared meals; Savory pastries; Egg pies; Pies containing meat; Pies containing vegetables; Pies containing fish; Pies containing poultry; Pies containing game; Meat pies [prepared]; Pork pies; Pies [sweet or savoury]; Meat pies; Grain-based chips; Seaweed flavoured corn chips; Vegetable flavoured corn chips; Rice crisps; Wholewheat crisps; Taco chips; Poultry and game meat pies; Pasta dishes; Rice based dishes; Prepared rice dishes; Meals consisting primarily of pasta; Meals consisting primarily of rice; Prepared pizza meals; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Ready-made dishes containing pasta; Prepared meals containing [principally] rice; Prepared meals in the form of pizzas; Prepared meals containing [principally] pasta; Dry and liquid ready-to-serve meals, mainly consisting of rice; Fresh pizza; Pizza; Pizzas [prepared]; Preserved pizzas; Chilled pizzas; Uncooked pizzas; Frozen pizzas; Flavoured popcorn; Microwave popcorn; Caramel coated popcorn; Caramel coated popcorn with candied nuts; Candy coated popcorn; Red bean porridge (patjuk); Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Snack food products made from rusk flour; Snack food products made from cereal starch; Snack food products made from maize flour; Canned pasta foods; Quesadillas; Quiches; Ravioli; Chinese steamed dumplings (shumai, cooked); Chinese stuffed dumplings (gyoza, cooked); Ravioli [prepared]; Cheese curls [snacks]; Rice mixed with vegetables and beef [bibimbap]; Risotto; Dried seaweed rolls [gimbap]; Hot sausage and ketchup in cut open bread rolls; Samosas; Sandwiches; Processed unpopped popcorn; Crisps made of cereals; Sausage rolls; Cereal-based snack food; Cereal snack foods flavoured with cheese; Snack food products made from cereal flour; Snack food products made from potato flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods made from wheat; Snack foods made of whole wheat; Snack foods made from corn; Snack foods made from corn and in the form of rings; Puffed corn snacks; Snacks manufactured from muesli; Rice-based snack food; Tortilla snacks; Snack food products consisting of cereal products; Sesame snacks; Snack foods consisting principally of extruded cereals; Snack foods consisting principally of bread; Ready to eat savory snack foods made from maize meal formed by extrusion; Spaghetti and meatballs; Canned spaghetti in tomato sauce; Snack foods prepared from maize; Snack foods made from corn and in the form of puffs; Cheese flavored puffed corn snacks; Sushi; Tabbouleh; Tacos; Canapes; Korean traditional rice cake [injeolmi]; Stir fried rice cake [topokki]; Rice cakes; Mincemeat pies; Vegetable pies; Wontons; Sliced rice cake soup [tteokguk]; Korean-style pasta soup [sujebi]; Cereal bars and energy bars; Sweets (candy), candy bars and chewing gum; Bread; Pastries, cakes, tarts and biscuits (cookies); Foods with a cocoa base; Foodstuffs containing cocoa [as the main constituent]; Foodstuffs containing chocolate [as the main constituent]; Chocolate flavourings; Chocolate coated nougat bars; Salted wafer biscuits; Jam buns; Rice puddings containing sultanas and nutmeg; Ready-to-eat puddings; Rice-based pudding dessert; Semolina pudding; Candy; Confectionery made of sugar; Liquorice flavoured confectionery; Panned sweets (Non-medicated -); Sugar-coated coffee beans; Butterscotch chips; Waffles; Chocolate waffles; Waffles with a chocolate coating; Chocolates; Liqueur chocolates; Chocolate; Chocolate with alcohol; Non-medicated chocolate; Chocolate for confectionery and bread; Chocolate for toppings; Aerated chocolate; Peanut confectionery; Orange based confectionery; Peanut butter confectionery chips; Potato flour confectionery; Almond confectionery; Nut confectionery; Dairy confectionery; Chocolate confectionery having a praline favour; Chocolate confectionery containing pralines; Chocolate flavoured confectionery; Boiled confectionery; Confectionery having liquid fruit fillings; Confectionery having liquid spirit fillings; Confectionery having wine fillings; Confectionery containing jelly; Confectionery containing jam; Confectionery in liquid form; Confectionery in frozen form; Non-medicated flour confectionery; Mint flavoured confectionery (Non-medicated -); Non-medicated confectionery having toffee fillings; Non-medicated confectionery containing chocolate; Non-medicated chocolate confectionery; Non-medicated flour confectionery containing chocolate; Non-medicated flour confectionery containing imitation chocolate; Non-medicated flour confectionery coated with chocolate; Non-medicated flour confectionery coated with imitation chocolate; Non-medicated confectionery products; Non-medicated mint confectionery; Non-medicated confectionery having a milk flavour; Non-medicated confectionery containing milk; Non-medicated confectionery in the shape of eggs; Non-medicated confectionery for use as part of a calorie controlled diet; Non-medicated confectionery in jelly form; Frozen dairy confections; Frozen confectionery containing ice cream; Frozen confections on a stick; Crackers; Crackers flavoured with fruit; Puddings; Cocoa based creams in the form of spreads; Chocolate creams; Chocolate spreads; Spreads made from chocolate and nuts; Chocolate spreads for use on bread; Sandwich spread made from chocolate and nuts; Croissants; Pancakes; Chocolate decorations for christmas trees; Chocolate decorations for cakes; Chocolate decorations for confectionery items; Decorations [edible] for christmas trees; Turkish delight; Turkish delight coated in chocolate; Chilled desserts; Sweet pounded rice cakes (mochi-gashi); Korean traditional sweets and cookies [hankwa]; Prepared desserts [chocolate based]; Prepared desserts [confectionery]; Soft pin-rolled cakes of pounded rice (gyuhi); Dried sugared cakes of rice flour (rakugan); Confectionery for decorating Christmas trees; Fruited scones; Chocolate fondue; Chocolate coated fruits; Fruit jellies [confectionery]; Halvah; Almonds covered in chocolate; Sweet bean jam coated with sugared-bean based soft shell [nerikiri]; Marzipan; Chocolate marzipan; Kheer mix (rice pudding); Mousse confections; Mousses (Dessert -) [confectionery]; Mousses (Chocolate -); Chocolate coated macadamia nuts; Coated nuts [confectionery]; Chocolate coated nuts; Panettone; Cinnamon rolls; Pastry crust; Pavlovas made with hazelnuts; Poppadums; Wafered pralines; Instant dessert puddings; Chocolate based products; Bakery goods; Confectionery items coated with chocolate; Creamed rice; Chocolate topping; Chocolate bark containing ground coffee beans; Snack foods consisting principally of confectionery; Sopapillas [fried bread]; Dessert souffles; Imitation chocolate; Marzipan substitutes; Imitation custard; Truffles [confectionery]; Truffles (rum -) [confectionery]; Tablet (confectionary); Nougat; Chocolate vermicelli; Viennoiserie; Yorkshire puddings; Cotton candy; Flavoured sugar confectionery; Savory sauces, chutneys and pastes; Vinegar; Pepper vinegar; Flavoured vinegar; Beer vinegar; Fruit vinegar; Mustard vinegar; Wine vinegar; Achar pachranga (fruit pickle); Sea water for cooking; Synthetic thickeners for foodstuffs; Vegetable thickeners; Powdered garlic; Minced garlic; Angelica; Aniseed; Star aniseed; Vanilla flavorings; Flavourings made from lobsters; Flavourings made from meat; Flavourings made from fruits; Flavourings made from fruits [other than essential oils]; Flavourings made from shrimps; Flavourings made from snails; Flavourings made from vegetables [other than essential oils]; Flavourings made from fish; Flavourings made from poultry; Flavourings made from pickles; Flavourings of tea; Coffee flavorings [flavourings]; Food flavourings [other than essential oils]; Fruit flavourings, except essences; Herbal flavourings for making beverages; Flavourings of lemons; Flavourings of almond; Flavourings, other than essential oils; Flavorings and seasonings; Natural flavourings for use in ice cream [other than etheric essences or essential oils]; Flavourings for foods; Flavourings for beverages; Flavourings, other than essential oils, for beverages; Flavourings for butter; Flavourings for cakes; Flavourings, other than essential oils, for cakes; Flavourings for cheeses; Flavourings for soups; Flavourings for soups [other than essential oils]; Popcorn seasoning; Flavourings for snack foods [other than essential oils]; Savory food flavourings for animal foods [other than essential oils]; Flavourings in the form of concentrated sauces; Flavourings in the form of dehydrated sauces; Bases for making milk shakes [flavourings]; Crab boil [seasoning]; Cinnamon [spice]; Cinnamon powder [spice]; Capers; Cloves [spice]; Clove powder [spice]; Sodium chloride for preserving foodstuffs; Fruit sauces; Aromatic preparations for food; Vegetable concentrates used for seasoning; Condiments; Chemical seasonings [cooking]; Vegetable-based seasonings for pasta; Alimentary seasonings; Dry seasonings; Spices in the form of powders; Taco seasoning; Preservatives for animal feeds [salt]; Seasoned coating for meat, fish, poultry; Cream of tartar for culinary purposes; Horseradish [relishes]; Turmeric; Turmeric for use as a condiment; Curry [spice]; Dashi-tsuyu; Smoke distillates from wood for flavouring foodstuffs; Sweeteners consisting of fruit concentrates; Dried chives; Garden herbs, preserved [seasonings]; Culinary herbs; Processed herbs; Flavour enhancers for food [other than essential oils]; Edible essences for foodstuffs [other than etheric substances and essential oils]; Cooking essences; Essences for food [other than essential oils]; Essences for foodstuffs, except etheric essences and essential oils; Essences for use in cooking [other than essential oils]; Essences for use in food preparation [other than essential oils]; Extracts of cocoa for use as flavours in foodstuffs; Malt extracts used as flavoring; Spice extracts; Extracts used as flavoring [not essential oils]; Ham glaze; Processed ginseng used as a herb, spice or flavoring; Glucose for culinary purposes; Glutamate for food; Salt pellets for preserving fish; Salt pellets for preserving foodstuffs; Marshmallow topping; Savory food flavourings for food [other than essential oils]; Mayonnaise with pickles; Marinades; Marinades containing seasonings; Marinades containing herbs; Peppermint for confectionery; Mint for confectionery; Peppermints [other than for medicinal use]; Seasoning mixes; Sloppy joe seasoning mix; Custard mixes; Curry mixes; Stuffing mixes [foodstuffs]; Stuffing mixes containing bread; Allspice; Nutmeg; Coffee oils; Chili oil for use as a seasoning or condiment; Pepper spice; Japanese pepper powder spice (sansho powder); Peppercorns; Pepper powder [spice]; Ground pepper; Dried chili peppers seasoning; Chili powders; Hot pepper powder [spice]; Pimento used as a condiment; Japanese arrowroot powder (kudzu-ko, for food); Custard powder; Mustard preparations for food; Spice preparations; Aromatic preparations for pastries; Aromatic preparations for candies; Aromatic preparations for cakes; Aromatic preparations for ice-creams; Meat tenderizers, for household purposes; Prepared horseradish [condiment]; Brine for use in cocktails; Brine for cooking; Brine for pickling; Salt; Seasoned salt for cooking; Table salt mixed with sesame seeds; Cooking salt; Celery salt; Sea salt for cooking; Sea salt for preserving foodstuffs; Salt for preserving foodstuffs; Salt for preserving fish; Salt for popcorn; Pickling salt for pickling foodstuffs; Spiced salt; Mineral salts for preserving foodstuffs; Sauce [edible]; Sauces; Sauces flavoured with nuts; Sauces containing nuts; Sauces for ice cream; Sauces [condiments]; Peppers [seasonings]; Processed shallots for use as seasoning; Sesame seeds; Vanilla beans; Mustard powder [spice]; Mustard powder for food; Substances imparting smell for addition to food [other than essential oils]; Substances imparting smell for addition to drink [other than essential oils]; Substances imparting flavour for addition to food [other than essential oils]; Substances imparting flavour for addition to drink [other than essential oils]; Sweet pickle [condiment]; Japanese horseradish powder spice (wasabi powder); Spices; Pizza spices; Vanilla; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Saffron [seasoning]; Saffron for use as a seasoning; Ginger [spice]; Preserved ginger; Crystallized ginger; Pickled ginger [condiment].

Class 35: Retail services in relation to meats; Retail services in relation to foodstuffs; Retail services in relation to cocoa; Retail services in relation to coffee, Retail services in relation to teas; Retail services in relation to chocolate; Retail services in relation to desserts; Retail services in relation to confectionery; Retail services in relation to ice creams; Retail services in relation to baked goods; retail services in relation to dairy products; Retail services in relation to sorbets; Retail services in relation to frozen yogurts; Retail services in relation to seafood; Wholesale services in relation to meats; Wholesale services in relation to desserts; Wholesale services in relation to seafood; Wholesale services in relation to baked goods; Wholesale services in relation to dairy products; Wholesale services in relation to sorbets; Wholesale services in relation to frozen yogurts; Wholesale services in relation to coffee; 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.

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 fact that the goods or services to be compared fall under the same general broad category does not automatically mean that they have the same nature. An example of such a broad category is foodstuff for human consumption.

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 goods in this class can all be classified in the following categories: meats; processed fruits, fungi and vegetables (including nuts and pulses); fish, seafood and molluscs; dairy products and dairy substitutes; prepared meals, soups and stocks; desserts; snacks; roast beef flavoured extract; edible oils and fats.

Meats are identically contained in both lists of goods and services, despite a slight difference in their wording.

The contested processed fruits, fungi and vegetables (including nuts and pulses) overlap with the opponent’s salads, mainly consisting of meat, meat products, sausage and/or poultry, including the aforesaid goods with added bread and/or potatoes and/or pasta and/or cheese and/or rice and/or vegetables. Therefore, they are identical. However, some other contested goods in this category, namely roast chestnuts, condensed tomatoes are dissimilar to all the opponent’s goods, since they do not have a sufficient number of relevant aspects in common.

The contested goods falling into the category of prepared meals, soups and stocks are either identical to the opponent’s prepared meals because the contested goods are included in or overlap with the opponent’s goods (e.g. gumbo, prepared meals containing [principally] bacon) or are at least similar to an average degree (e.g. stock cubes), since they coincide in their usual origin, target the same public and are in competition. Some of the contested goods falling into this category, namely edible birds’ nests, pollen prepared as foodstuff, are dissimilar to all the opponent’s goods, since they do not have a sufficient number of relevant aspects in common.

The contested fish, seafood and molluscs are similar to the opponent’s meat, since they are in competition, target the same public and have the same method of use.

The contested roast beef flavoured extract and the opponent’s food products derived from meat are similar, since they might have the same usual origins and purposes and might be in competition.

The contested goods falling into the categories of dairy products, dairy substitutes; desserts; snacks; edible oils and fats are dissimilar to all the opponent’s goods, since they do not have a sufficient number of relevant factors in common.

In conclusion, except for the goods explicitly found dissimilar, the contested goods in Class 29 which have been found to be identical or similar to the opponent’s goods are all those falling into the categories of meats; preserved, frozen, dried and cooked fruits and vegetables; fish, seafood and molluscs; roast beef flavoured extract; prepared meals, soups and stocks, namely the following:

Meats; Processed fruits, fungi and vegetables (including nuts and pulses); Fish, seafood and molluscs; Casseroles [food]; Onion rings; Stock; Soups; Stock [prepared]; Beef bouillon; Fish stock; Vegetable stock; Broth [soup]; Filled potato skins; Corned beef hash; Chili con carne; Chop suey; Chilled foods consisting predominately of fish; Broth concentrates; Croquettes; Stock cubes; Soup cubes; Dahls; Extracts for soups; Roast beef flavoured extract; Fritters; Potato fritters; Potato dumplings; Gumbo; Vegetable burgers; Potato salad; Chicken salad; Prepared salads; Stuffed cabbage rolls; Vegetable soup preparations; Soup mixes; Canned soups; Mixes for making soup; Soup pastes; Cooked meals consisting principally of fish; Chilled meals made from fish; Pre-packaged dinners consisting primarily of seafood; Prepared meals made from poultry [poultry predominating]; Prepared meals consisting substantially of seafood; Prepared meals consisting principally of game; Hash brown potatoes; Shepherd's pie; French fries; Frozen french fries; Fish in olive oil; Fish with chips; Cooked meat dishes; Ready cooked meals consisting wholly or substantially wholly of meat; Ready cooked meals consisting wholly or substantially wholly of poultry; Ready cooked meals consisting wholly or substantially wholly of game; Prepared meals made from meat [meat predominating]; Prepared meals containing [principally] bacon; Prepared meals containing [principally] chicken; Prepared meals containing [principally] eggs; Prepared meat dishes; Prepared dishes consisting principally of meat; Faggots [food]; Soup powders; Bouillon (Preparations for making -); Soup (Preparations for making -); Mashed potato; Quenelles; Rhubarb in syrup; Rosti [fried grated potato cakes]; Sausages in batter; Vegetarian sausages; Scotch eggs; Soya [prepared]; Stews; Tamale; Fish cakes; Chowder.

The opponent refers to previous decisions of the Office to support its arguments of similarity in relation to edible oils and fats and dairy products and dairy substitutes. 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 (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). 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.

The previous decision of 28/04/2011, B 1 706 236, cited in relation to dairy products and dairy substitutes, is not relevant to the present proceedings because, in the present case, the opponent’s list of goods does not cover milk, yogurt or soft white cheese.

Decision of 27/01/2011, R 391/2010-1, ‘BallyM’ referred to in relation to edible oils and fats is relevant to some extent. However, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same. Furthermore, account must be taken of the fact that the decision referred to was given in 2011, and that the comparison carried out in the previous paragraphs complies with the Office’s current practice.

Contested goods in Class 30

The contested goods in this class can all be classified in the following categories: convenience food; savoury snacks; salts, seasoning and flavourings; sauces (condiments); confectionery, chocolate and desserts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts.

The contested goods falling into the category of convenience food are similar to a high or an average degree to the opponent’s prepared meals in Class 29 (e.g. prepared meals containing [principally] rice), because they might coincide in their usual origin, target the same public and are in competition.

The contested goods falling into the category of sauces (condiments) are similar to a low degree to the opponent’s meat jellies in Class 29, since they might coincide in purpose, distribution channels and relevant public. Some of the contested goods falling into this category, namely sauces for ice cream, are dissimilar to all the opponent’s goods, since they do not have a sufficient number of relevant aspects in common.

The contested goods falling into the categories of savoury snacks; salts, seasoning and flavourings; confectionery, chocolate and desserts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts are dissimilar to all the opponent’s goods, since they do not have a sufficient number of relevant factors in common.

In conclusion, except for the goods explicitly found to be dissimilar, the contested goods in Class 30 which have been found to be similar to varying degrees to the opponent’s goods are all those falling into the categories of convenience food; sauces (condiments), namely the following:

Prepared savory foodstuffs made from potato flour; Prepared foodstuffs in the form of sauces; Filled baguettes; Burritos; Calzones; Cheeseburgers [sandwiches]; Chalupas; Chimichanga; Chow mein; Crumble; Enchiladas; Fajitas; Pies; Shrimp dumplings; Rice dumplings dressed with sweet bean jam (ankoro); Hamburgers being cooked and contained in a bread roll; Hot dog sandwiches; Hot dogs (prepared); Macaroni salad; Pasta salad; Rice salad; Wrap [sandwich]; Spring rolls; Fresh sausage rolls; Egg rolls; Lasagne; Nachos; Green onion pancake [pajeon]; Frankfurter sandwiches; Sandwiches containing salad; Sandwiches containing minced beef; Steamed buns stuffed with minced meat (niku-manjuh); Filled bread rolls; Toasted cheese sandwich; Sandwiches containing meat; Toasted cheese sandwich with ham; Sandwiches containing fish fillet; Hamburgers contained in bread rolls; Sandwiches containing fish; Sandwiches containing chicken; Toasted sandwiches; Macaroni with cheese; Flaky pastry containing ham; Pasta containing stuffings; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and fish; Noodle-based prepared meals; Savory pastries; Egg pies; Pies containing meat; Pies containing vegetables; Pies containing fish; Pies containing poultry; Pies containing game; Meat pies [prepared]; Pork pies; Pies [sweet or savoury]; Meat pies; Poultry and game meat pies; Pasta dishes; Rice based dishes; Prepared rice dishes; Meals consisting primarily of pasta; Meals consisting primarily of rice; Prepared pizza meals; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Ready-made dishes containing pasta; Prepared meals containing [principally] rice; Prepared meals in the form of pizzas; Prepared meals containing [principally] pasta; Dry and liquid ready-to-serve meals, mainly consisting of rice; Fresh pizza; Pizza; Pizzas [prepared]; Preserved pizzas; Chilled pizzas; Uncooked pizzas; Frozen pizzas; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Canned pasta foods; Quesadillas; Quiches; Ravioli; Chinese steamed dumplings (shumai, cooked); Chinese stuffed dumplings (gyoza, cooked); Ravioli [prepared]; Rice mixed with vegetables and beef [bibimbap]; Risotto; Dried seaweed rolls [gimbap]; Hot sausage and ketchup in cut open bread rolls; Samosas; Sandwiches; Sausage rolls; Spaghetti and meatballs; Canned spaghetti in tomato sauce; Sushi; Tabbouleh; Tacos; Mincemeat pies; Vegetable pies; Wontons; Sliced rice cake soup [tteokguk]; Korean-style pasta soup [sujebi]; Savory sauces, chutneys and pastes; Fruit sauces; Dashi-tsuyu; Mayonnaise with pickles; Sauce [edible]; Sauces; Sauces flavoured with nuts; Sauces containing nuts; Sauces [condiments].

In relation to the decision of 13/05/2015, R 729/2014-4, ‘LISAN’, referred to by the opponent in relation to pastries, and in view of the considerations previously made, although the decision referred to is to some extent factually similar to the present case, the outcome may not be the same.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some commonalities, 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 same principles apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as wholesale services in Class 35.

Meat and meats are synonyms. Meat is included in the broad category of foodstuffs and, consequently, they are identical.

Therefore, the contested retail services in relation to meats; retail services in relation to foodstuffs; wholesale services in relation to meats; wholesale services in relation to foodstuffs are similar to a low degree to the opponent’s meat in Class 29.

The remaining contested retail and wholesale services are dissimilar to all the opponent’s goods in Class 29. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail or wholesale services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed/wholesaled goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the rest of the goods at issue are not identical.

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 and services found to be identical or similar to varying degrees target the public at large and business customers with specific professional knowledge or expertise. The degree of attention will vary from lower than average to average depending on the exact nature, purpose and price of the goods and services. For example, the degree of attention will be low in relation to foodstuffs, such as sauces in Class 30, because these are cheap goods for daily consumption.

3. The signs

Toppo
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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public.

The 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 earlier mark is a word mark composed of the letters ‘Toppo’. Consequently, the use of upper or lower-case letters is irrelevant, since only the word as such is protected.

The contested sign is a figurative mark. It contains the letters ‘TOPO’, in a first line, and ‘TIP’, in a second line. The letters are written in upper case in red, blue and yellow and are slightly slanted. In the second line and next to the letter ‘P’, a brown and white mouse is placed, which is wearing a T-shirt and holding a brown teddy bear.

The signs have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘To*po’, identically present in both of them. Account must be taken of the fact that ‘Toppo’ in the earlier mark and ‘TOPO’ in the contested sign are visually highly similar and that the latter is the first part of the contested 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 top to bottom and 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.

However, they differ in the additional letter ‘p’ present in the earlier mark and in the letters ‘TIP’, the figurative element and the graphic features of the contested sign.

Regarding the figurative element, 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 signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛To*po’, present identically in both signs. Moreover, ‘Toppo’ in the earlier mark and ‘TOPO’ in the contested sign are aurally highly similar and the latter is the first element of the contested sign that will be pronounced. The pronunciation differs in the sound of the letter ‛p’ of the earlier sign and in the second word ‘TIP’ in the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, the word ‘TOPO’ in the contested sign means ‘mouse’ in Italian. Therefore, the figurative element of a mouse will be perceived by the relevant public as a depiction of this word and as a reiteration of its concept. ‘TIP’ has no meaning for the relevant public.

The earlier mark ‘Toppo’ will be perceived by a part of the public as a misspelling of the word ‘topo’ and, therefore, it will be associated with the same meaning, ‘mouse’. Consequently, as the signs will be associated with a similar meaning, the signs are conceptually highly similar for this part of the public.

For the rest of the relevant public ‘Toppo’ conveys no meaning, while the figurative element will always be perceived as a mouse. Therefore, since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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 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 for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the goods and services at issue are partly identical, partly similar to varying degrees and partly dissimilar.

As stated in section c) of the present decision, the signs are visually and aurally similar due to the sequence of letters ‘To*po’ identically present in both signs and ‘TOPO’ being the first part of the contested sign. Furthermore, for the part of the public which associates the earlier mark ‘Toppo’ with a misspelling of the word ‘topo’, the signs are conceptually highly similar, as the figurative element present in the contested sign merely reinforces this concept. The earlier mark has an average degree of distinctiveness and is almost entirely reproduced in the first part of the contested sign.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods or services covered are from the same or economically linked undertakings. For example, in the present case, the consumer may easily conclude that the contested sign designates a special line of goods or services from the opponent especially designed for children.

The applicant argues that its CTM has a reputation for cartoons and books in Italy. However, the right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM. The applicant’s claims must be dismissed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public, and therefore the opposition is partly well-founded on the basis of the opponent’s Community trade mark registration No 4 935 425. 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 reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

In relation to the goods and services that are similar to a low degree, the high degree of similarity between the signs’ components ‘Toppo’/‘TOPO’ (reinforced by the figurative element of the mouse) outweighs the low degree of similarity between some of the goods and services, and, therefore, a likelihood of confusion exists also in relation to them.

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

The opponent has also based its opposition on earlier international trade mark registration No 1 197 300 for the figurative mark , designating Bulgaria, Estonia, Croatia, Latvia, Lithuania, Hungary, Poland, Romania, Slovenia and Slovakia.

This earlier right invoked by the opponent is less similar to the contested mark. This is because it contains graphic features such as a green, blue and black, stylised label on which ‘Toppo’ is written in black, title case, stylised letters. The graphic features in this earlier right are very different from the graphic features in the contested trade mark, as described in section c) of this decision. Furthermore, due to the stylisation of this earlier right, it is feasible that the relevant public will not associate the verbal element ‘Toppo’ with a misspelling of the word ‘Topo’ present in the contested sign. Consequently, as the differences between the signs outweigh the similarities between them, the slightly different scope of protection cannot lead to a different outcome with respect to goods and services for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods and services.

COSTS

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

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

The Opposition Division

María Belén IBARRA DE DIEGO

Alexandra APOSTOLAKISIrena LYUDMILOVA LECHEVA

Carmen SÁNCHEZ PALOMARES

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.