OPPOSITION No B 2 556 168

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Weickmann & Weickmann Patentanwälte - Rechtsanwalt Part mbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Zaklady Przetwórstwa Owocowo-Warzywnego "Ziębice" spółka z o.o., ul. Nadrzeczna 1a, 57220 Ziębice, Poland (applicant), represented by Patent and Trade Mark Bureau Andrzej Masłowski, Al. W. Korfantego 83, P.O.Box 3644, 40-160 Katowice, Poland (professional representative).

On 31/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 168 is partially upheld, namely for the following contested goods:

Class 29: Broth, broth concentrates; Broth concentrates; Concentrated broths; Preserved onions; Preserved garlic; Dates; Jams; Beans, preserved; Peas, preserved; Mushrooms, preserved; Vegetable soup preparations; Vegetable preserves; Frosted fruits; Sauerkraut; Compotes; Piccalilli; Frosted fruits; Marmalade; Fruit pulp; Ground almonds; Processed seeds; Prepared nuts; Peanuts, prepared; Canned fruits; Fruit preserved in alcohol; Fruit jellies; Fruit salads; Processed sunflower seeds; Pickles; Fruit pulp; Raisins; Vegetable salads; Fruit peel; Lentils, preserved; Vegetable juices for cooking; Delicatessen goods; Preserved fruits; Preserved vegetables; Dried fruits; Vegetables, dried; Fruit, stewed; Vegetables, cooked; Mousses (Vegetable -); Fruit paste; Frozen vegetables; Potato chips; Fruit jellies.

Class 30: Chutney; Ketchup [sauce]; Marinades; fruit purees; Pesto [sauce]; Tomato sauce; Pasta sauce; Meat gravies; Tomato sauce.

2. European Union trade mark application No 13 700 315 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 700 315, namely against all the goods in Class 29 and some of the goods in Classes 30 and 31. The opposition is based on Spanish trade mark registration No 1 511 035. The opponent invoked Article 8(1)(b) EUTMR.

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 the following:

Class 29: All kinds of meat, prepared and canned food, sausage products, edible oils and fats, animal gravies and extracts

The contested goods are the following:

Class 29: Broth, broth concentrates; Broth concentrates; Concentrated broths; Preserved onions; Preserved garlic; Dates; Jams; Beans, preserved; Peas, preserved; Mushrooms, preserved; Vegetable soup preparations; Vegetable preserves; Frosted fruits; Sauerkraut; Compotes; Piccalilli; Frosted fruits; Marmalade; Fruit pulp; Ground almonds; Processed seeds; Prepared nuts; Peanuts, prepared; Canned fruits; Fruit preserved in alcohol; Fruit jellies; Fruit salads; Processed sunflower seeds; Pickles; Fruit pulp; Raisins; Vegetable salads; Fruit peel; Lentils, preserved; Vegetable juices for cooking; Delicatessen goods; Preserved fruits; Preserved vegetables; Dried fruits; Vegetables, dried; Fruit, stewed; Vegetables, cooked; Mousses (Vegetable -); Fruit paste; Frozen vegetables; Potato chips; Fruit jellies.

Class 30: Chutney; Ketchup [sauce]; Marinades; fruit purees; Pesto [sauce]; Tomato sauce; Pasta sauce; Meat gravies; Tomato sauce.

Class 31: Mushrooms, fresh; Roots for food; Maize; Fresh fruits; Beans, fresh; fresh vegetables; Fresh fruits; Potatoes, fresh.

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 broth, broth concentrates; broth concentrates; concentrated broths; vegetable juices for cooking; preserved onions; preserved garlic; beans, preserved; peas, preserved; mushrooms, preserved; vegetable preserves; preserved vegetables; lentils, preserved; vegetables, cooked; fruit preserved in alcohol; canned fruits; sauerkraut; piccalilli; pickles; vegetable soup preparations; preserved fruits; jams; fruit jellies (listed twice); marmalade; compotes; fruit, stewed; fruit paste; fruit salads; fruit pulp (listed twice); ground almonds; fruit peel; vegetable salads; delicatessen goods; mousses (vegetable -); prepared nuts; peanuts, prepared; dates; raisins; dried fruits; potato chips; vegetables, dried; frozen vegetables; frosted fruits (listed twice); processed seeds; processed sunflower seeds are included in or overlap with the broad category of the opponent’s prepared and canned food. They are identical.

Contested goods in Class 30

The contested meat gravies are similar to the opponent’s animal gravies since they are in general made from the juices that run naturally during the meat cooking process. The goods may have the same relevant publics and distribution channels, as well as the same origin. They are in competition with each other.

The contested chutney; ketchup [sauce]; marinades; fruit purees; pesto [sauce]; tomato sauce (mentioned twice); pasta sauce are various types of sauces and purees made from processed fruits and vegetables. They are similar to the opponent’s prepared and canned food of Class 29 since they may coincide in their methods of use, as well as in their distribution channels and relevant publics, as well as in their origins. The goods may be further in competition with each other.

Contested goods in Class 31

The contested mushrooms, fresh; roots for food; maize; fresh fruits; beans, fresh; fresh vegetables; fresh fruits; potatoes, fresh are fresh fruits or vegetables that despite being in competition with some of the opponent’s goods in Class 29, for instance with prepared and canned foods, are considered dissimilar to them. The contested goods are usually found in a special fruit and vegetable section in groceries or supermarkets while the opponent’s goods, for instance, the prepared and canned food, are offered on shelves as preserved, cooked and/or canned foodstuffs. Furthermore, the relevant public will be aware of the fact that the fresh fruits and vegetables do not usually derive from the same manufacturers as the opponent‘s meats, oils and prepared and canned foods for which further processing is needed.

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 or similar are directed at the public at large. The degree of attention is average.

3. The signs

DELAVE.
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

The earlier mark is a word mark consisting of the verbal element ‘DELAVE’ written in upper case letters and followed by a dot with a negligible character. However, in the case of word marks the word as such is protected and not its written form; therefore, it is immaterial whether the earlier mark is represented in upper or lower case letters.

The contested sign is a figurative mark consisting of the verbal element ‘delivē’ written in lower case white letters and placed against a background with two overlapping green and yellow geometrical shapes.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

As regards the contested sign, it is composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature, namely the overlapping shapes in green and yellow that are a common figurative element. Therefore, the verbal element is more distinctive than the figurative elements.

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

Visually, apart from the small difference in the representation of last letter ‘ē’ in the contested sign, the signs coincide in the letters ‘DEL*VE’. However, they differ in their fourth letters ‘A/I’, as well as in the additional colours and figurative elements of the contested sign, including the small line above the letter ‘E’. Therefore, the signs are considered similar to an average degree.

Aurally, since the small line above the letter ‘E’ in the contested sign will not be recognised as another letter and uttered differently by the Spanish public, the pronunciation of the signs coincides in the syllables ‛DE‑VE’, present identically in them. The pronunciation differs in their middle syllables ‛LA/LI’. However, taking into account that the signs differ in only one of their six letters that is furthermore placed in the middle of the signs and therefore less noticeable, they are considered highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in visual and aural point of view, 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

The goods are partly identical, partly similar and partly dissimilar. The degree of attention is considered average.

The signs have been found visually similar to an average degree and aurally highly similar to the extent that their verbal elements only differ in one single letter, namely ‘A’/‘I’, placed in a non-prominent position. As illustrated above, the different stylisation of the contested sign, as well as the additional purely figurative elements, including the small line above the letter ‘E’ are not sufficient to counterbalance the similarities between the marks arising from their five out of a total of six coinciding letters. Furthermore, 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).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

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

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

COSTS

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

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

The Opposition Division

Steve HAUSER

Benoit VLEMINCQ

Lucinda CARNEY

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.