OPPOSITION No B 2 509 449

Yettefti B.V., Bredaseweg 108A, 4902 NS Oosterhout, Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative)

a g a i n s t

Euroleifeng Trade S.L.U, Pol. Ind. Las Cerámicas 9, 03330 Crevillente (Alicante), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 22/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 509 449 is upheld for all the contested goods.

2. European Union trade mark application No 13 516 422 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 European Union trade mark application No 13 516 422. The opposition is based on, inter alia, European Union trade mark registration No 10 621 522. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 621 522.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based and which are subject to use requirement.

The European Union trade mark No 10 621 522 was registered on 02/09/2012. The contested trade mark application was published on 15/01/2015. Therefore, this earlier mark has not been registered for five years at the time of the publication of the contested application and this earlier mark is thus not under the obligation of use.

LIKELIHOOD OF CONFUSION – 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

The goods on which the opposition is based are, inter alia, the following:

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; fruit sauces; honey, treacles; yeast, baking-powder; salt, vinegar; ice.

The contested goods are the following:

Class 30: Tea.

The contested goods are included in the specification of goods of the earlier mark. These goods are 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 found to be identical are directed at the public at large. The degree of attention is lower than average because the goods are inexpensive goods purchased and consumed on a daily basis.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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). This applies by analogy to international registrations designating the European Union. 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 French-speaking part of the public.

The global appreciation of the visual, aural or conceptual similarity of the marks in question 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, § 23).

Both marks are rather complex figurative marks. The earlier mark shows a label in which several figurative and verbal elements are placed in a black square which appears to be nailed to a wooden background. The verbal and figurative elements are the following: the expression ‘THÉ VERT DE CHINE’ placed at the top, a realistic circular image of a lion (a ribbon including Arabic-looking text is displayed over the image), the words ‘KING LION’ placed underneath the image, followed by the number ‘4011’ and the words ‘EXTRA-CHUNMEE’ below each other.

The contested sign is composed of five hexagons placed against a rectangular background resembling wood and containing an incomplete square pattern of ornamental crosses. Two of the hexagons contain a large number ‘4011’ with a much smaller inscription below it. The inscription in one of the hexagons reads ‘Atlas King’, in the other it is Arabic-looking text. The remaining three hexagons contain a stylised image of a lying white lion, the number ‘4011’ and an inscription. This inscription reads ‘Atlas King’ in one of the hexagons and it is Arabic-looking text in the remaining two.

As regards the dominant (visually striking) elements, the following needs to be noted: the number ‘4011’ and the image of a white lion are the dominant elements of the contested sign since these two elements are those that will rule the visual impression of the mark on account of their size and colours. The earlier mark does not have any elements that could be considered significantly more visually striking than other elements, although the image of the lion together with the words ‘KING LION’ and the number ‘4011’ may have somewhat stronger impact on the consumers on account of their size and central position in the mark.

The expression ‘THÉ VERT DE CHINE’ in the earlier mark means ‘Green tea from China’ in French. Therefore, bearing in mind that the relevant product is tea, this expression is completely descriptive for the French-speaking public. The word ‘extra’ in the expression ‘EXTRA-CHUNMEE’ is non-distinctive as it is a mere laudatory statement indicating high quality or luxury character of the goods. The word ‘CHUNMEE’ indicates a type of green tea. While this is not a common knowledge among average consumers of teas and the word could not be recognised out of context by average consumers, it is possible that at least part of the public (in particular regular consumers of green tea), when encountering this word on a package of Chinese green tea (as indicated by the expression ‘thé vert de Chine’) will assume, even without a specific knowledge of the word, on account of its similarity to many other Chinese names for types of teas, that this word in fact indicates a type of tea. This is reinforced by the connection of this word to the laudatory term ‘extra’. For this part of the public this word would be descriptive.

The words ‘KING LION’ and ‘Atlas King’ will be understood in their English meaning, because the words ‘lion’ and ‘atlas’ are identical in French (the former indicates a specific species of large felines and the latter will be perceived as a compilation of maps) and the word ‘king’ belongs to a basic English vocabulary and is widely used also among the French-speaking public. The images of a lion in both marks and the words ‘KING LION’ and ‘Atlas King’ have a normal degree of distinctiveness because their concepts indicate nothing about any of the characteristics of the relevant products.

In its observations, the applicant argues that the element ‘LION’ is not distinctive in relation to the relevant products given that there are many trade marks that include this word. In support of its argument the applicant refers to some trade mark registrations (EUTMs and UK marks). The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used, in particular vis-à-vis French-speaking consumers. Moreover, the list submitted by the applicant refers to marks that are registered for classes 29 and 30 in general and just from looking at the marks it is clear that many of them are not used for tea (such as ‘lion noodles’, ‘lion malt’, ‘chocolion’ etc.) and many others do not include the term ‘lion’ as an independent element referring to the feline (such as ‘million gold’, ‘melion’, ‘Alionza’, ‘millions candy’ etc.). It follows that the evidence filed does not demonstrate that the relevant consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the term ‘Lion’ in relation to tea. Under these circumstances, the applicant’s claims must be set aside.

Finally, as regards the number ‘4011’, the applicant argues that this is an indication of the grade of the CHUNMEE tea and submits a Wikipedia extract stating that Chun Mee is a popular green tea divided into several grades with numbers such as 41022, 4011, 9371, 8147, 9367, 9366, 3008 or 3009. While this may be true, it cannot be assumed that average consumers who are not experts in teas have this knowledge. In fact, from the perspective of an average consumer, this number will be a very unusual number to be used in a name of tea. This is even more so since in both marks this number occupies a visually prominent position, whilst the normal market practice tends to be to represent numbers that indicate a characteristic of the good in a somewhat visually less striking manner. Consequently, when average consumers encounter an unusual four-digit number in a prominent position on a package of tea, they will perceive this number as an important and distinctive part of the brand of the tea because they are not accustomed to encountering such numbers in tea names. This number cannot be interpreted as a year, weight or any other such indication of any characteristics of the products. Consequently, this number is a distinctive element from the perspective of the average consumers, in both marks.

The applicant argues, similarly as with the element ‘lion’ as explained above, that the number ‘4011’ appears frequently in trade marks registered for goods in Class 30 and submits a list of EUTMs and UK trade marks that include this number. The abovementioned reasoning applies. It cannot be concluded from several trade mark registrations, of which no actual presence on the market has been proven, that French-speaking consumers have become accustomed to encountering the number ‘4011’ in relation to tea.

As far as the figurative elements (other than the representations of lions) are concerned, they are mainly of decorative nature and consist of simple geometrical shapes. They are considered less distinctive than the abovementioned distinctive verbal elements.

Visually, the signs’ coincidences include the word ‘king’, the number ‘4011’, the fact that both marks include Arabic-looking inscriptions and the ‘wooden’ impression of the background. These coincidences are not negligible despite the fact that the marks visually differ in many other elements as well as in their overall composition. The number ‘4011’ is distinctive in both marks and it is one of the dominant elements in the contested sign. The word ‘king’ is also distinctive in both marks and belongs to the most impacting elements in the earlier mark. The wooden looking background and the Arabic inscriptions are indeed not features of a great importance in either mark but the fact that they are included in both marks adds to the visual links between them. On the other hand, as already mentioned above, the marks differ in all the other elements, in particular in the word ‘LION’ versus the word ‘Atlas’, in the representations of the lions that are visually rather different in both marks and also in the overall composition of both signs. Weighing the visual differences with the coincidences, it is concluded that the marks are visually similar to a low degree.

Aurally, it has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. This is especially the case when the purely descriptive words can be easily separated from the dominant term (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). Bearing this in mind, it can be assumed that consumers will pronounce the earlier mark as ‘King Lion 4011’ since these are the distinctive and visually significant verbal elements of the mark. The contested mark will be pronounced as ‘4011 Atlas King’ (since these are the only verbal elements of the mark) or only as ‘4011’ because this is the only verbal dominant element in the contested sign. In either case, the marks are aurally similar to an average degree on account of their complete coincidence in one or two distinctive independent elements, notably ‘4011’ and ‘King’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The most relevant conceptual coincidences between the marks are the concept of a lion and that of a king. These concepts are the most relevant in the earlier mark as they are transmitted by the distinctive and visually significant elements. They are also very relevant in the contested mark as the image of the lion is one of the two dominant elements within the mark and the word ‘King’ is one of the three distinctive verbal elements. It is considered that the French-speaking public, not being native English speakers, will not recognize any subtle conceptual differences caused by the connection between the words ‘lion and king’ and ‘atlas and king’ but rather will perceive the concepts as separate words. Moreover, the marks also coincide in the concept of the number ‘4011’. The marks are also linked through the wooden-looking background and through the Arabic inscriptions that may evoke the environment of the Orient. The only relevant conceptual difference between the marks is the additional concept of atlas included in the contested sign. The marks do not convey any other relevant concepts as the remaining words, if understood, are descriptive, and if not (such as the word ‘chunmee’), they are meaningless. The remaining figurative elements are secondary and decorative. Therefore, all of the earlier mark’s distinctive concepts are included in the contested sign which only contains one additional relevant meaning that does not change the concept of the other elements. Consequently, it is considered that the marks are conceptually similar to a high degree.

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, despite the presence of some non‑distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

The contested goods are identical to the goods of the earlier mark, which has an average degree of distinctiveness. The public will not be particularly attentive when purchasing the products.

The signs were compared in detail above and a certain degree of similarity was found from all the three aspects. The signs are strongly linked conceptually through the concepts of ‘lion’ and ‘king’ and aurally and visually (albeit to a lower degree from the visual perspective) through the number ‘4011’ and the word ‘king’. Those elements are, as explained in detail above, distinctive and some of them also dominant. Although there is a number of differing elements in both marks, the vast majority of those elements is descriptive and decorative. Bearing in mind that the goods are identical and that consumers are likely to be less attentive when purchasing them, as well as the fact that consumers only rarely have the chance to directly compare the marks, the Opposition Division concludes that the similarity between the signs outweighs the differences between them.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 621 522. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 10 621 522 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Ferenc GAZDA

Michaela SIMANDLOVA

Marianna KONDÁS

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.