OPPOSITION No B 2 546 789

Netto Marken-Discount AG & Co. KG, Industriepark Ponholz 1, 93142 Maxhütte-Haidhof, Germany (opponent), represented by Dr. Rauscher & Partner, Ludwig-Eckert-Str. 10, 93049 Regensburg, Germany (professional representative)

a g a i n s t

Feyce S.L., Crta. Vecinos (CL-512) Km. 8.2, 37187 Aldeatejada, Spain (applicant), represented by García Domínguez & Asociados, Plaza del Corrillo 19, 3° – 2, 37002 Salamanca, Spain (professional representative).

On 27/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 546 789 is upheld for all the contested goods, namely:

Class 30: Honey; Natural honey; Honey substitutes; Natural ripe honey; Herbal honey.

2. European Union trade mark application No 13 806 121 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 806 121, namely against all the goods in Class 30. The opposition is based on German trade mark registration No 30 348 247. The opponent invoked Article 8(1)(a) and (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 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, substitutes for coffee; Flour and cereals, bread, pastry and confectionery, ice cream, honey, syrups and treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments); spices; Ice.

The contested goods are the following:

Class 30: Honey; Natural honey; Honey substitutes; Natural ripe honey; Herbal honey.

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.

Honey is identically contained in both lists of goods and services. The contested natural honey is included in the broad category of and therefore identical to the opponent’s honey.

The contested natural ripe honey; herbal honey are included in the broad category of the opponent’s honey. Therefore, they are identical.

The contested honey substitutes are highly similar to the opponent’s honey. This is because they have the same method of use, distribution channels, relevant public and producers. Furthermore, they are in competition.

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 a high degree are directed at the public at large.

The degree of attention will vary between average and lower than average, since the relevant goods are cheap and are intended for everyday consumption.

3. The signs

SWEET DELIGHT	BEEBONAPI SWEET DELIGHT
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word marks. The earlier mark is composed of two words, ‘SWEET DELIGHT’, and the contested sign is composed of three words, ‘BEEBONAPI SWEET DELIGHT’.

The element ‘SWEET’, present in both marks, will be understood by the German public to mean ‘having the pleasant taste characteristic of sugar or honey’, since it is a basic English word. Bearing in mind that the relevant goods are honey and honey-related products, this element is non-distinctive for these goods, namely for honey; natural honey; honey substitutes; natural ripe honey; herbal honey.

The marks, being word marks, have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the non-distinctive word ‘SWEET’ and the distinctive word ‘DELIGHT’. However, they differ in the distinctive word ‘BEEBONAPI’, present in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‛SWEET DELIGHT’, present identically in both signs. However, as seen above, the first element, ‛SWEET’, is a non-distinctive element of the marks, while the second element, ‛DELIGHT’, is distinctive. The pronunciation differs in the sound of the letters ‛BEEBONAPI’ of the contested mark, which have no counterparts in the earlier sign and constitute a distinctive element.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‛SWEET’, included in both signs, will be associated with ‘having the pleasant taste characteristic of sugar or honey’, as in English, since it is a very basic English word that will be understood in Germany. As explained above, this element is non-distinctive for the relevant goods. The signs also coincide in the distinctive word ‛DELIGHT’. The signs do not coincide in the distinctive element ‛BEEBONAPI’, present in the contested mark. Since neither the word ‛DELIGHT’ nor the word ‛BEEBONAPI’ has any meaning for the relevant public, no conceptual comparison is possible.

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 a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and highly similar. The earlier mark is considered to have a normal degree of distinctive character for the relevant public, the presence of the non-distinctive element ‘SWEET’ notwithstanding, and the degree of attention is average.

The signs are visually and aurally similar to an average degree, to the extent that they have in common the word ‛DELIGHT’. They differ in the additional word ‛BEEBONAPI’.

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).

Although more attention is usually paid to the beginning of a word, it generally does not matter much whether the coinciding element constitutes the first or second element of the composite mark. In particular, where the contested trade mark is a composite mark, it should not matter too much whether the contested trade mark incorporates the earlier mark as its first or second element. The protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods, but also against its mark being taken as referring to the applicant’s goods.

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 difference in one word between the signs is not sufficient to rule out a likelihood of confusion on the part of the relevant public, particularly given the identity or high degree of similarity between the goods.

The applicant refers to previous decisions of the General Court 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.

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.

The applicant compares the present case with another case, namely ‘CALDEA’/‘BALEA’. These cases cannot be considered analogous because the conflicting signs in the earlier case each consisted of one word, while in the present the case the conflicting signs consist of two words versus three words; furthermore, the conclusions regarding the conceptual comparison and the distinctiveness of the signs reached in the two cases are different.

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

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Konstantinos MITROU

Anna POLITI

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.