OPPOSITION No B 2 612 326

Distribuidora Latinoandina S.L., Av. Manoteras 38, Bloque B, Of. 408, 28050 Madrid, Spain (opponent), represented by Marks & US, Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Manfred Görg, Wiesenstraße 22, 56412 Niederelbert, Germany (applicant), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333 München, Germany (professional representative).

On 15/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 612 326 is partially upheld, namely for the following contested goods:

Class 29: Edible oils and fats; Extra-virgin olive oil; Coconut butter; Coconut oil and fat [for food]; Coconut flakes; Coconut puree; Coconut milk; Coconut, desiccated; Coconut oil; Coconut powder; Coconut flakes; Nut oils; Olive oil; Palm kernel oil for food; Palm oil for food; Prepared coconut.

Class 30: Honey, treacle; Salt; Mustard; Vinegar; Spices; Flour (Coconut‑); Coconut sugar; Coconut palm sugar; Candy for food.

Class 31: Agricultural, horticultural and forestry products not included in other classes.

2. European Union trade mark application No 14 419 808 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 all the goods of European Union trade mark application No 14 419 808. The opposition is based on Spanish trade mark registration No 3 100 172. 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 29: Fruits and vegetables; vegetables preserved, frozen, dried and cooked; Jellies; Jams; compotes; milk coconut; edible oils and fats.

The contested goods are the following:

Class 29: Edible oils and fats; Extra-virgin olive oil; Coconut butter; Coconut oil and fat [for food]; Coconut flakes; Coconut puree; Coconut milk; Coconut, desiccated; Coconut oil; Coconut powder; Coconut flakes; Nut oils; Olive oil; Palm kernel oil for food; Palm oil for food; Prepared coconut.

Class 30: Coffee, cocoa and artificial coffee; Tapioca and sago; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar; Spices; Flour (Coconut-); Coconut sugar; Coconut palm sugar; Ice; Herbal (not for medical purposes) and fruit teas, also in packs and infusion bags, and with added flavourings and/or vitamins and/or minerals; Non-alcoholic prepared drinks of tea and/or tea-type products or extracts thereof; Non-alcoholic prepared drinks of tea, tea-type products or extracts thereof, and all the aforesaid products; Tea and flavoured tea, including in packs and in infusion bags; sugar cubes, Candy for food; Preparations mainly consisting of tea extracts and extracts from tea-type products in powder or granulated form, including with added flavourings and/or vitamins and/or minerals.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Foodstuffs and fodder for animals; Foodstuffs for animals made from coconuts; Foodstuffs for animals based on coconut products; Foodstuffs for animals based on coconut oil.

Preliminary remarks:

• Although, according to Article 28(7) EUTMR, the International Nice Classification of Goods and Services serves purely administrative purposes and does not provide in itself a basis for drawing conclusions as to the similarity of goods and services, in cases where the wording of the list is either broad or not sufficiently clear, reference to the Nice Classification, including its explanatory notes, may be useful to clarify the kind of goods and services at issue, or for revealing additional features that may be pertinent to the comparison.

In the present case, the earlier mark is registered for ‘Fruits and vegetables’ and for ‘milk coconut’ in Class 29. The explanatory notes of the Nice International Classification clarify that Class 29 includes ‘vegetables and other horticultural comestible products prepared for consumption of conservation’ namely it does not include fresh fruits and vegetables which are classified in Class 31.

In relation to the above, it is also clarified that the expression ‘milk coconut’ in the earlier mark’s specification is an obviously incorrect translation of the Spanish ‘leche de coco’ which means ‘coconut milk’.

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

Edible oils and fats; coconut milk are identically contained in both lists of goods.

The contested extra-virgin olive oil; coconut butter; coconut oil and fat [for food]; coconut oil; nut oils; olive oil; palm kernel oil for food; palm oil for food are included in the opponent’s edible oils and fats and are also identical.

The contested prepared coconut may refer to coconut which has just been peeled and sliced. These goods are included in the opponent’s fruits which in Class 29 refer to processed fruits, and are, therefore, identical.

The contested coconut flakes; coconut puree; coconut, desiccated; coconut powder; coconut flakes are preparations of which coconut is the main or only ingredient as is the case of the opponent’s coconut milk. The goods at issue are similar in nature and may be produced by the same companies in the food sector which specialise in the transformation of coconut. They are used for giving a coconut flavour to other foodstuffs and can be found in the same sections in supermarkets. They also target the same public. Therefore, they are highly similar.

Contested goods in Class 30

The contested honey, treacle are similar to the opponent’s jams because these goods are used as spreads on toasts hence they have the same purpose and method of use. They are also in competition with each other. Furthermore they are sold in the same sections in supermarket and the public is the same.

The contested flour (coconut-); coconut sugar; coconut palm sugar contain coconut as their main ingredients and are likely to be manufactured by the same undertakings as the opponent’s coconut milk. The goods mentioned are intended for the general public. Despite the differences in natures and purposes and the fact that they are usually not in the same sections in stores, they are similar to a low degree.

The contested vinegar and the opponent’s edible oils can be used in combination with each other as a seasoning in salad dressing and they can be used by manufacturers for preserving purposes. They are sold in the same section of stores and target the same public. Despite their different natures and producers, there is a similarity of a low degree between them.

The contested salt, mustard, spices are used for seasoning foodstuffs, like the opponent’s edible oils. They are sold in the same or neighbouring sections in stores and the public is the same. There is also a similarity of a low degree.

The contested candy for food refers to confections made with sugar, often combined with chocolate, fruit, nuts, etc. They include, for instance, Turkish delights, which consist largely of dried fruit such as chopped dates, pistachios and hazelnuts or walnuts, bound by a gel of starch. The opponent’s fruits in Class 29 are processed fruits including dried fruits or preserved fruits. The goods at issue share the same distribution channels and producers and they target the same public. They are similar to a low degree.

The fact that the remaining contested coffee, cocoa and artificial coffee; tapioca and sago; sugar, yeast, baking-powder; ice; herbal (not for medical purposes) and fruit teas, also in packs and infusion bags, and with added flavourings and/or vitamins and/or minerals; non-alcoholic prepared drinks of tea and/or tea-type products or extracts thereof; non-alcoholic prepared drinks of tea, tea-type products or extracts thereof, and all the aforesaid products; tea and flavoured tea, including in packs and in infusion bags; sugar cubes, preparations mainly consisting of tea extracts and extracts from tea-type products in powder or granulated form, including with added flavourings and/or vitamins and/or minerals are products for human consumption, in the form of foodstuffs of drinks, is not enough for a finding of similarity with the opponent’s fruits and vegetables; vegetables preserved, frozen, dried and cooked; jellies; jams; compotes; milk coconut; edible oils and fats. The category of foodstuffs is too broad for inferring that all goods belonging to such category have the same nature or purpose. Bearing in mind that the goods at issue do not share the same or neighbouring section in stores, that their producers are usually different, that their specific purposes differ as do their methods of use, and that they are neither in competition nor complementary, they are deemed to be dissimilar.

Contested goods in Class 31

The contested agricultural, horticultural and forestry products not included in other classes cover fresh fruits and are similar to a low degree to the opponent’s fruits and vegetables in Class 29 which refer to processed fruits and vegetables, such as dried fruits. These goods share the same distribution channels and fulfil the same purpose. The targeted public is the same and there is link of competition between them.

The contested foodstuffs and fodder for animals; foodstuffs for animals made from coconuts; foodstuffs for animals based on coconut products; foodstuffs for animals based on coconut oil are dissimilar to the opponent’s fruits and vegetables; vegetables preserved, frozen, dried and cooked; jellies; jams; compotes; milk coconut; edible oils and fats. These goods differ in nature and purpose (food for animal v food for human consumption) and are not found in the same sections of stores. Their producers are not the same and they are neither complementary nor in competition.

The contested grains not included in other classes differ in nature, method of use and specific purpose from the opponent’s fruits and vegetables; vegetables preserved, frozen, dried and cooked; jellies; jams; compotes; milk coconut; edible oils and fats. Their distribution channels and producers do not coincide, neither are they complementary or in competition. They are also dissimilar.

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 to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

	COCO KING
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 figurative trade mark: it includes a depiction of an open coconut’ (including a small palm tree leaf behind it), and underneath, on two lines, the verbal elements ‘Coco’, in stylised green font, and ‘King’, in stylised, smaller, black font.

The contested sign is a word mark consisting of the juxtaposed verbal elements ‘COCO’ and ‘KING’.

Both signs include the verbal expression ‘COCO KING’ which will be perceived by the Spanish public as meaning ‘King of coconuts’. The word ‘coco’ is the actual Spanish word for the coconut fruit and the word ‘King’ is a basic English word which is commonly used in Spanish, especially in trade mark parlance. It is also the well-known nickname of the legendary singer Elvis Presley.

Since the signs share the entire expression, whether or not one of their two verbal elements is more distinctive than the other one is not an issue in this case.

What must be taken into account is that the expression as a whole is laudatory for some of the goods at issue, namely those which are or may be coconuts or those which contain or may contain coconut. As far as the earlier mark is concerned, this applies to fruits, coconut milk and edibles oils and fat (since these categories may contain coconut oil or butter). As far as the contested sign is concerned, the expression is weak in relation to the coconut-based goods in Class 29, such as coconut butter; coconut oil, etc. but also in relation to others, for instance coconut flour in Class 30 and agricultural and horticultural goods in Class 31 which designate broad categories including coconuts.

On the other hand, the verbal expression is of average distinctiveness in relation to other relevant goods such as jams (earlier mark) or honey, treacle (contested sign).

The additional element of the earlier mark is a coconut’s depiction which is clearly non-distinctive for the relevant coconut or coconut-based goods whereas it is of average distinctiveness for others.

As regards the issue of dominance, the element ‘king’ of the earlier mark has less visual impact than the other verbal element and the coconut’s depiction, albeit not to the extent of being overshadowed by them. The contested sign is a word mark hence it does not include elements with more visual impact than others.

Visually, the signs coincide in the verbal expression ‘COCO KING’ which forms the entire contested sign.

The differences lie in the figurative elements of the earlier mark, namely the font stylisation, the layout of the words, on two lines in the earlier mark and juxtaposed in the contested sign, and the coconut’s depiction.

As regards the earlier mark’s figurative elements, it is noted that 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).

In the present case, the verbal expression is laudatory, namely of reduced distinctiveness, for the coconut-related goods but for such goods, the figurative coconut’s depiction has even less distinctive power.

The visual difference is therefore limited to elements of secondary importance as indicators of commercial origin.

In view of the foregoing, it is considered that the signs are visually similar to a high degree.

Aurally, since the verbal elements of the signs are the same and in the same order, and bearing in mind that the earlier mark’s figurative element is not subject to a phonetic assessment, the signs are identical.

Conceptually, the verbal elements of the signs have the same meaning namely ‘king of coconuts’ and the figurative element of the earlier mark also brings up the concept of a coconut and does not serve to differentiate the signs semantically.

Therefore, the signs are conceptually identical.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the relevant coconut-related goods, and average for the remaining goods.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

The earlier mark is weak for some goods, which affords it a reduced scope of protection. However, evaluating likelihood of confusion implies some interdependence between the relevant factors.

Although the distinctive character of the earlier mark must be taken into account in the assessment of the likelihood of confusion, it is only one factor among others. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, §70).

In the present case, the signs are aurally and conceptually identical and visually similar to a high degree. The goods are partly identical and similar, to various degrees, and partly dissimilar, and the degree of attention on the part of the public is average.

The differences are confined to elements which the relevant public will consider as secondary as indicators of trade mark origin, in comparison with the coinciding verbal expression, notwithstanding the latter’s laudatory character for some goods. The contested sign is entirely included in the earlier mark.

In view of the above, it is highly conceivable that the relevant consumer will perceive the signs as variations of each other, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood ofassociation, on the part of the public, which in view of the reduced differences between the signs, exists also for the goods which are similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark. 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.

It is noted that, should a part of the relevant public not understand the English word ‘KING’, which the Opposition Division finds rather unlikely, a likelihood of confusion would still exist because the coincidence between the signs would lie not only in the non-distinctive element ‘COCO’ (for some goods) but also in the meaningless hence fully distinctive element ‘KING’. On the one hand, it is true that the signs would not be conceptually identical but only conceptually similar to a low or average degree depending on the goods, but they would still be visually similar to a high degree and aurally identical. Furthermore, the distinctiveness of the earlier mark as a whole would be average, increasing its scope of protection. In any case, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused. Having established a likelihood of confusion for the significant part of the public which understands the expression ‘coco king’ as a whole is sufficient.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because Article 8(1)(a) EUTMR requires identity of the goods and of the signs and neither requirement is satisfied.

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

Frédérique SULPICE

Catherine MEDINA

Pedro JURADO MONTEJANO

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.