OPPOSITION No B 2 542 903

Sumol + Compal Marcas, S.A., Estrada da Portela, Nº 9, Portela de Carnaxide, 2790-124 Oeiras Carnaxide, Portugal (opponent), represented by J.E. Dias Costa, LDA., Rua do Salitre, 195, 1269-063 Lisbon, Portugal (professional representative)

a g a i n s t

Ludwig Manfred Jacob, Egstedterstr. 46, 55262 Heidesheim, Germany (applicant), represented by Krohn Rechtsanwälte, Alsterufer 3, 20354 Hamburg, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 542 903 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods (in Classes 5, 29, 30 and 32) of European Union trade mark application No 13 742 903 (figurative mark:
“ ”). The opposition is based on, inter alia, Portuguese trade mark registration No 530 005 (figurative mark:
“ ”). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE of earlier Portuguese trade marks No 530 005 and No 530 007

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Portuguese trade marks No 530 005 and
No 530 007.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 24/03/2015.

Earlier trade marks No 530 005 and No 530 007 were registered on 06/08/2014 and 10/11/2014, respectively. Therefore, the request for proof of use is inadmissible as far as these trade marks are concerned.

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.

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 Portuguese trade mark registration No 530 005.

1. The goods

The goods in Classes 5, 29 and 32 on which the opposition is based are the following:

Class 5: Food for babies, in particular soups, fruit jams, fruit pulp (liquid fruit pastes), fruit and/or vegetables purées, fruit and/or vegetables juices, gruel.

Class 29: Fruit pulp (liquid fruit pastes), preparations and purees of fruits and/or vegetables; jellies, jams, compotes; dairy beverages containing fruit or fruit juices; yogurts; milk and other milk based beverages, substitutes for milk products and other dairy products.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit and/or vegetable drinks and/or vegetable juices; syrups and other preparations for making beverages.

The contested goods in Classes 5, 29, 30 and 32 are the following:

Class 5: Pharmaceutical preparations; Sanitary preparations for medical purposes; Dietetic preparations adapted for medical use; Nutritional supplements; Food supplements for non-medical purposes.

Class 29: Weed extracts for food; Alginates for culinary purposes; Jellies, jams, compotes, fruit and vegetable spreads; Oils and fats; Processed fruits, fungi and vegetables (including nuts and pulses); Dairy products and dairy substitutes; Stews; Fruit-based snack food; Soy chips; Soya [prepared]; Extracts for soups; Canned soups; Yucca chips; Prepared salads.

Class 30: Baked goods, confectionery, chocolate and desserts; Ice, ice creams, frozen yogurts and sorbets; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Packaged tea [other than for medicinal use]; Aromatic preparations for making non-medicated infusions; Aromatic preparations for making non-medicated tisanes; Aromatic teas [other than for medicinal use]; Flowers or leaves for use as tea substitutes.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages, Except non-alcoholic beverages with a base of coffee or with coffee flavouring, and preparations for the aforesaid beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 5

The contested Dietetic preparations adapted for medical use have the same purpose, distribution channels and producer as the opponent´s goods in Class 5. Therefore, they are similar.

The contested Nutritional supplements; Food supplements for non-medical purposes have the same purpose, distribution channels, public and producer as the opponent´s goods in Class 5. Therefore, they are similar.

The contested Pharmaceutical preparations have the same purpose and distribution channels as the opponent´s goods in Class 5. Therefore, they are similar to a low degree.

The remaining contested Sanitary preparations for medical purposes have different natures and purposes. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to each other nor in competition with each other. Their distribution channels are also different. Consumers would not think that the goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 29

Jellies, jams, compotes are identically contained in both lists of goods.

The contested fruit and vegetable spreads are included in the broad category of the opponent’s preparations of fruits and/or vegetables. Therefore, they are identical.

The contested Processed fruits, fungi and vegetables (including nuts and pulses); Stews; Fruit-based snack food; Extracts for soups; Canned soups; Prepared salads overlap with the opponent’s preparations of fruits and/or vegetables. Therefore, they are identical.

The contested dairy substitutes include, as broader category the opponent’s substitutes for milk products. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Oils and fats; Soya [prepared] have the same purpose and public as the opponent´s milk based beverages, substitutes for milk products and other dairy products. Furthermore, they are in competition with each other. Therefore, they are similar.

The remaining contested Soy chips; Yucca chips have different natures and purposes. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to each other nor in competition with each other. . Their distribution channels are also different. Consumers would not think that the goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 30

The contested confectionery; Ice, ice creams; sorbets have the same nature, purpose, distribution channels, public and producer as the opponent´s dairy products in Class 29. Furthermore, they are in competition with each other. Therefore, they are highly similar.

The contested seasonings; condiments have the same purpose, distribution channels, public and producer as the opponent´s preparations of vegetables in Class 29. Furthermore, they are in competition with each other. Therefore, they are similar.

The contested Packaged tea [other than for medicinal use]; Aromatic teas [other than for medicinal use] have the same distribution channels, public and producer as the opponent´s non-alcoholic beverages in Class 32. Furthermore, they are in competition with each other. Therefore, they are similar.

The contested Aromatic preparations for making non-medicated infusions; Aromatic preparations for making non-medicated tisanes; Flowers or leaves for use as tea substitutes have the same distribution channels, public and producer as the opponent´s preparations for making beverages in Class 32. Furthermore, they are in competition with each other. Therefore, they are similar.

The remaining contested Baked goods; chocolate; desserts; frozen yogurts; Salts; flavourings; Processed grains; starches, and goods made thereof; baking preparations; yeasts; Sugars; natural sweeteners; natural sweeteners, sweet coatings and fillings; bee products have different natures and purposes. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to each other nor in competition with each other. Their distribution channels are also different. Consumers would not think that the goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 32

Beers; Mineral and aerated waters; Fruit beverages and fruit juices; Syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested other non-alcoholic beverages, except non-alcoholic beverages with a base of coffee or with coffee flavouring, and preparations for the aforesaid beverages are included in the broad category of the opponent’s other non-alcoholic beverages. Therefore, they 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 and similar to various degrees are directed at the public at large. The degree of attention will vary between average and low, because these are cheap goods for daily consumption.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 signs are figurative marks. The earlier trade mark is a (small) jar with a lid. At the top, it has the word ‘COMPAL’ written on a slight curve, underneath which is the element ‘1952’ (almost illegible); around these elements are some decorative depictions of leaves. The word ‘essential’ appears below these elements. The contested sign consists of the expression ‘Dr. Jacob’s’ and, below this, written in much larger letters, the word ‘essentials’ in orange, yellow and various shades of green.

The element ‘1952’ of the earlier sign will be associated with the date of foundation of the company. Therefore, it is non-distinctive for all the goods.

The elements ‘essential(s)’ of the signs will be associated by Portuguese consumers with the word ‘essencial’ meaning ‘absolutely necessary; extremely important’. Bearing in mind that the relevant goods are (basic) foods, these elements are non-distinctive for all the goods.

With the exception of the very small numbers 1952 of the earlier mark, which is less eye-catching than the other elements, the mark has no element that could be considered more or less dominant (visually eye-catching) than other elements. The element ‘essentials’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs differ from each other in their graphical depictions, including in the various colours of the contested sign. The elements ‘COMPAL’ of the earlier trade mark and ‘Dr. Jacob’s’ of the contested sign have no counterpart in the other sign. Even the comparable words ‘essential(s)’ are depicted differently. Furthermore, these words are non-distinctive and, therefore, will not have a significant impact on the consumer’s perception of the mark. The first parts of the conflicting marks, ‘COMPAL’ and ‘Dr. Jacobs’, are different. Therefore, there is only a low degree of visual similarity between the signs.

Aurally, figurative elements will not be taken into account. The words ‘COMPAL’ and ‘Dr. Jacob’s’ sound completely different. The element ‘1952’ of the earlier trade mark and the word ‘essential(s)’ will not have a significant aural impact because they are non-distinctive. There are relevant differences between the signs as regards their pronunciation and rhythm. Therefore, there is only a lower than average degree of aural similarity between the signs.

Conceptually, the distinctive element of the contested sign, ‘Dr. Jacob’s’, will be associated with a title and a surname. In this respect, the signs are conceptually not similar. The words ‘essential’ and ‘essentials’ in the earlier mark and the contested sign, respectively, and the element ‘1952’ in the earlier trade mark are non-distinctive and cannot, therefore, lead to relevant coincidences or differences.

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 and services 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 marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical, partly similar to various degrees and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The signs are visually similar to a low degree, aurally similar to a lower than average degree and conceptually not similar as regards the surname in the contested sign. Not one element of the signs is the same. The only comparable words, ‘essential’/‘essentials’, are non-distinctive.

Taking into account the low degree of visual similarity, the lower than average degree of aural similarity, the fact that the signs are conceptually not similar as regards the surname in the contested sign, the different overall impressions that they create, their different beginnings, the fact that they coincide only in non-distinctive elements and the no more than normal degree of distinctiveness of the earlier trade mark, there is, even for identical goods and for consumers with a low degree of attention, no likelihood of confusion. This is even more the case when the degree of attention of the public is average.

The opponent refers to previous decisions of the Office to support its arguments. 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 EUTMR, 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. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the territory, signs and/or goods are not comparable.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to avoid a likelihood of confusion. The public would not consider that the signs came from the same undertaking or economically linked undertakings.

The opponent has also based its opposition on the following earlier trade marks:

• international trade mark registration designating the European Union No 860 539 for the word mark ‘COMPAL ESSENCIAL’ for goods in Classes 29 and 32;

• Portuguese trade mark registration No 426 382 for the figurative mark
  for goods in Classes 29 and 32;

• Portuguese trade mark registration No 426 383 for the figurative mark
  for goods in Classes 29 and 32;

• Portuguese trade mark registration No 530 007 for the figurative mark
  for goods in Classes 5, 29 and 32;

• international trade mark registration designating the United Kingdom No 969 360 for the figurative mark
  for goods in Classes 29 and 32;

• international trade mark registration designating the United Kingdom No 969 360 for the figurative mark
  for goods in Classes 29 and 32.

Since these marks cover the same or a narrower scope of goods and the signs are no more similar to the contested sign, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

This result also applies to earlier international trade mark registration designating the European Union No 860 539, because the element ‘Essential’ will be understood in the whole territory because there are similar equivalent words in many of the relevant languages, for example ‘essentiell’ (German), ‘essentiel’ (French), ‘essenziale’ (Italian), ‘essentieel’ (Dutch), ‘essenzjali’ (Maltese) and ‘essential’ (Romanian). If the word should be different on some territories, it will be understood as an English word, which belongs at least to the extended vocabulary of the English language.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Konstantinos MITROU

Peter QUAY

Karin KUHL

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.