OPPOSITION No B 2 719 899

Markant Handels- und Service GmbH, Hanns-Martin-Schleyer-Str. 2, 77656 Offenburg, Germany (opponent), represented by Weickmann & Weickmann Patentanwälte - Rechtsanwalt Partmbb, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Negocios Europa Limited, 2 Windsor Court, 9 Ashley Road, Epsom, Surrey KT18 5AQ, United Kingdom (applicant).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 719 899 is partially upheld, namely for the following contested goods and services:

Class 30: Coffee, teas and cocoa and substitutes therefor; salts, seasonings; processed grains, starches; yeasts;

Class 32: Beer and brewery products.

Class 43: Provision of food and drink.

2. European Union trade mark application No 14 570 808 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 570 808, namely against all the goods and services in Classes 30, 32 and 43 and some of the goods in Class 31. The opposition is based on the European Union trade mark registration No 6 685 614. 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 and services

The goods on which the opposition is based are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, except bread mixes and prepared baking mixes (not included in other classes), for making bread; pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beers; non-alcoholic drinks except for waters and lemonades; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 30: Coffee, teas and cocoa and substitutes therefor; salts, seasonings; processed grains, starches; yeasts; ice.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products.

Class 32: Beer and brewery products.

Class 43: Provision of food and drink.

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 30

The contested coffee, teas and cocoa; salts; yeasts are identically contained in both lists of goods (including plurals).

The contested substitutes therefor (i.e. for coffee) overlap with the opponent’s artificial coffee. Therefore, they are identical.

The contested substitutes therefor (i.e. for teas and cocoa) are similar to a high degree to the opponent’s tea and cocoa respectively, as they can have the same producers, consumers, distribution channels and methods of use. Furthermore, they are in competition.

The contested seasoning is similar to high degree to the opponent’s salt as they have the same purpose. Moreover, they can coincide in producer, relevant public and distribution channels.

The contested processed grains, starches are similar to the opponent’s flour and preparations made from cereals. They coincide in relevant public, producer and distribution channels.

The contested ice that is to be understood as ‘cooling ice’, is intended for cooling or freezing. The opponent’s ices are to be understood as ‘edible ices’. The contested ice is considered dissimilar to all the opponent’s goods in Classes 29, 30 and 32. Even though the contested ice and the opponent’s ices in Class 30 have the same composition to the extent that both consist (partly) of frozen water, their commercial natures are different: while one is a foodstuff, the other is an auxiliary product for preserving and/or cooling foodstuffs. When comparing the contested ice with the opponent’s remaining goods in Classes 29, 30 and 32 the same applies: they differ in nature and purpose, they are neither in competition nor complementary, they target different consumers and they are usually manufactured by different kinds of undertakings.

Contested goods in Class 31

The contested agricultural and aquacultural crops, horticulture and forestry products comprise goods, such as unprocessed pollen and trees. These goods are dissimilar to all of the opponent’s goods, which comprise essentially foodstuffs and beverages. These goods have different natures, purposes and methods of use. They do not have the same suppliers or producers and do not target the same relevant public. They are not complementary to or in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 32

The contested beer is identical to the opponent’s beers. The contested brewery products are those goods manufactured in breweries and, depending on their exact nature, they can be identical or similar to the opponent’s goods in Class 32. Just to set an example, shandy (a mixture of beer and a non-alcoholic drink, typically lemonade) will be highly similar to beer.

Contested services in Class 43

There is a link between the contested provision of food and drink in Class 43 and the opponent’s coffee, tea; pastries in Class 30. These goods are food products that are not necessarily sold only in grocery or bakery shops but may also be provided on the same premises as the opponent’s services, in particular services for providing food and drink in Class 43. Furthermore, they may be made ‘ad hoc’ and offered as home-made production. In such a case, it is obvious that the goods and services will be complementary to each other and that they will originate from the same undertakings. For example, nowadays pastries are often sold in bakeries that have been converted into small cafeterias or take-away shops. In line with this argument, the Opposition Division considers that these goods and services are similar to a low degree.

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 relevant goods and services are directed at the public at large. The degree of attention is average.

3. The signs

OMEGA	Omega Chia Oil
Earlier trade mark	Contested sign

The relevant territory is European Union.

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 and contested sign are word marks. The earlier is composed of one word ‘OMEGA’. The contested sign is composed of three words ‘Omega Chia Oil’. Taking into account that the signs are word marks, differences in the use of lower or uppercase letters are immaterial.

The term ‘OMEGA’ included in both marks has different meanings. The Opposition Division is aware of the decisions cited by the opponent according to which ‘OMEGA’ can refer to the last letter of the Greek alphabet. It is, however, certain that a relevant part of the public, when confronted with the term “OMEGA”, will perceive one of the different meanings of the word, for instance, as Collins Dictionary online suggests as an example: ‘Their oily flesh is full of healthy omega oils. Times, Sunday Times (2008)’.

Nevertheless, irrespective of whether ‘OMEGA’ is understood as a Greek letter or as a reference to ‘Omega-3’ and ‘Omega-6’ fatty acids, this word is considered to be a distinctive element since it is neither descriptive of nor allusive to the relevant goods and services to an extent that would materially affect its degree of distinctiveness.

The word element ‘Chia’ of the contested sign will be understood by a part of the public as ‘a plant of the genus Salvia, indigenous to Mexico, with purple or blue flowers and edible seeds’ (information extracted from Collins Dictionaries on 18/04/2017 at https://www.collinsdictionary.com/dictionary/english/chia). The remaining public will perceive the word ‘Chia’ as meaningless. A relevant part of the public will understand the meaning of the English word ‘oil’ of the contested sign since it is a basic English word that is also similar to the equivalent words in other languages, such as Italian (‘olio’), Dutch (‘olie’) and Estonian (õli).

For that part of the public for which the words ‘Chia oil’ are meaningful, the contested mark ‘Omega chia Oil’ is likely to be understood as a whole as an expression meaning ‘oil made from the seeds of the Chia plant containing omega fatty acids’.

Bearing in mind that the relevant goods are not ‘edible oils’ and do not commonly contain oil as an ingredient or as a main ingredient and that the relevant services relate to the provision of food and drink, the words ‘Omega Chia oil’ are distinctive with reference to the relevant goods and services, as they are neither descriptive nor allusive of them.

Since the earlier and the contested signs are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the word ‘OMEGA’ which is the first verbal element of the contested mark and composes the earlier mark in its entirety. On the other hand, they differ in the second verbal elements ‘Chia Oil’ of the contested sign.

As consumers tend to focus on the initial parts of signs, they will pay more attention on the first element of the contested sign ‘OMEGA’ and less attention to the different elements ‘Chia Oil’, which appear towards the end of the contested. The relevance of the first part of the signs to consumers is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will understand the words ‘Chia’ and/or ‘Oil’ of the contested sign, either separately or in conjunction, taking into account that both marks refer to the concept related to the distinctive word ‘OMEGA,’ there is a high degree of conceptual similarity (being that one of the meanings of “OMEGA” is that of a specific “oil”). For that part of the public that will not understand the words ‘Chia’ and/or ‘Oil’ of the contested sign, the signs are still conceptually highly similar to the extent their share the element ‘OMEGA’.

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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention of the public is average. The signs are visually and aurally similar to an average degree and, conceptually highly similar.

The earlier sign ‘OMEGA’ is entirely contained within the contested sign. In addition, the coinciding word ‘OMEGA’ is placed at the beginning of that mark, where consumers usually pay more attention. Consequently, the identical word at the beginning of the contested mark has to be taken into account when assessing the likelihood of confusion between the marks.

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.

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).

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between the signs arising from the coincidence in the word ‘OMEGA’ which forms the entire earlier mark. Therefore, the relevant public, when encountering the signs in relation to identical or similar goods and services, including the services found to be similar to a low degree, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

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

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various to the goods 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 will decide a different apportionment of costs.

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

The Opposition Division

María Belén IBARRA DE DIEGO

Angela DI BLASIO

María Clara IBÁÑEZ FIORILLO

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.