OPPOSITION No B 2 712 506

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, 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

Refrescame de Forma Natural S.L., Avda. Bastarreche, nº 6, 30840 Alhama de Murcia, Spain (applicant), represented by Almudena Abellán Pérez, Plaza de la Fuensanta, nº2-8ºC, Edificio Hispania, 30008 Murcia, Spain (professional representative).

On 15/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 712 506 is upheld for all the contested goods.

2. European Union trade mark application No 15 066 822 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 066 822. The opposition is based on European Union trade mark registration No 6 137 996. 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: Preserved, cooked and dried fruits and vegetables; fruit and vegetable preserves; pickles.

The contested goods are the following:

Class 29: Vegetable soup preparations; Vegetables, preserved; Vegetables, cooked; Frozen vegetables; Frozen fruits; Jellies, jams, compotes, fruit and vegetable spreads; Jams; Vegetable-based snack foods; Vegetables, dried; Vegetable salads; Vegetable-based entrees; Soups; Bouillon; Extracts of vegetables [juices] for cooking.

Class 32: Juices; Vegetable juices [beverages].

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

In spite of a slight difference in wording, vegetables, preserved; vegetables, cooked; vegetables, dried are identically covered by both marks.

In addition, taking into account that the term ‘preserved’ designates food that has been treated in a particular way to be kept for a long time without going bad, this is a broad category that includes food in a frozen, dried or cooked state. Therefore, the broad category of the opponent’s preserved fruits includes the contested frozen fruits; jellies, jams (listed twice), compotes, fruit spreads. Therefore, they are identical.

Similarly, the contested frozen vegetables; vegetable spreads are included in the broader category of the opponent’s preserved vegetables. Therefore, they are identical.

Moreover, the contested vegetable soup preparations; vegetable-based snack foods; vegetable salads; vegetable-based entrees; extracts of vegetables [juices] for cooking are similar to the opponent’s preserved, cooked vegetables, since they all consist of vegetables in different forms or vegetable-based products. In addition, these contested goods have the same purpose. They are usually produced by the same manufacturers and sold in the same outlets as the opponent’s preserved, cooked vegetables. Moreover, they target the same consumers of vegetables.

Finally, the contested soups are a liquid food made by boiling meat, fish or vegetables in water; the contested bouillon is a liquid made by boiling meat and bones or vegetables in water and using this to make soups and sauces. These goods have the same purpose and usual producers as the opponent’s preserved, cooked vegetables and they have the same distribution channels and sales outlets as the opponent’s preserved, cooked vegetables. Therefore, they are similar to these goods.

Contested goods in Class 32

Taking into account that juices are defined in common parlance as the watery or liquid part of vegetables or fruits, which can be expressed or extracted, it has to be considered that the contested juices; vegetable juices [beverages] are similar to the opponent’s preserved, cooked fruits and vegetables.

The contested goods in Class 32 are beverages that consist mainly of fruits and vegetables. Although these two sets of goods may have a different purpose, they have the same nature, since they are made with fruits and/or vegetables. They can be in competition with each other and they are sold on the same premises. Moreover, the preserving of fruits and vegetables and the production of fruit and vegetable juices are very similar manufacturing processes. Therefore, it can also be safely assumed that these goods may be manufactured by the same undertakings.

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 are directed at the public at large. They consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may therefore vary from low to average (26/04/2016, T‑21/15, Dino, EU:T:2016:241, § 20).

3. The signs

FRESHTON
Earlier trade mark	Contested sign

The relevant territory is the 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the initial element that the signs have in common, namely ‘FRESH’, is meaningful in certain territories, for example in those countries where English is understood. However, since that part of the relevant public would consider this element non-distinctive, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public for which that element is not meaningful, such as the Lithuanian‑speaking part of the public.

The earlier mark is a word mark consisting of the single element ‘FRESHTON’, which has no meaning and no identifiable components for the Lithuanian-speaking public. Therefore, it is distinctive.

The contested sign is a figurative mark consisting of the word element ‘FRESHCON’ in slightly slanted green lower case letters, of which the ‘H’ is slightly stylised. The word element ‘FRESHCON’ has no meaning for the Lithuanian-speaking part of the public and is, therefore, distinctive.

The marks have no element that could be considered clearly more distinctive or dominant (visually eye-catching) than others.

Visually, the signs coincide in the letters ‘FRESH*ON’. However, they differ in the letter ‘T’ of the earlier mark versus ‘C’ of the contested sign. They also differ in the graphical depiction of the contested sign, which has no counterpart in the earlier mark. However, since it is not particularly stylised, original or striking, it is of limited significance for the perception of the public.

Therefore, taking into account that the signs have the same number of letters, that the coinciding letters are placed in the same order and that the differing letters are in the same position, that is, in the middle of the signs, the signs are visually similar to a high degree.

Aurally, the Lithuanian pronunciation of the signs coincides in their first syllable, ‘FRESH’, as well as in the sound of the final letters, ‘*ON’, of their second syllable. The pronunciation differs in the sound of the letter ‛T’ of the earlier mark versus the sound of the letter ‘C’ of the contested sign.

As the signs have the same length, the coinciding letters are in the same order and the differing letters are in the middle of the signs, the signs have the same rhythm and intonation and are aurally similar to a high degree.

Conceptually, as explained above, neither of the signs has a meaning for the Lithuanian-speaking part of the public. 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 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.

According to the opponent, the earlier trade mark has a high degree of distinctiveness as a result of its long-standing and intensive use in the European Union in connection with the goods for which it is registered, namely preserved, cooked and dried fruits and vegetables; fruit and vegetable preserves; pickles. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion.

Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the results of a Google search for the word ‘FRESHTON’ performed on 13/10/2016; these included references to foodstuffs labelled ‘FRESHTON’, as well as a link to a trade mark search website, from which it is apparent that the opponent is the owner of the mark ‘FRESHTON’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Taking into account of the facts, in particular that such evidence does not reveal any information about the use and recognition of the mark by the relevant public, and the fact that the contested mark was filed on 08/03/2016, the Opposition Division concludes that the evidence submitted by the opponent cannot demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use prior to the filing of the contested sign.

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 Lithuanian-speaking part 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

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 goods in question are fairly ordinary consumer products and the relevant public will not pay a high degree of attention when purchasing them. Moreover, these goods are partly identical and partly similar.

Furthermore, as the signs coincide in the sequence of letters ‘FRESH*ON’, in the same order, they are visually and aurally similar to a high degree.

Finally, the earlier mark enjoys a normal degree of inherent distinctiveness.

Therefore, since 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), it is considered that they might overlook the fact that between the letters ‘FRESH’ and ‘ON’, which the signs have in common, the earlier mark includes the letter ‘T’, whereas the contested sign includes the letter ‘C’.

This conclusion is, moreover, not called into question by the decision of 09/01/2012, R 843/2010-4, TATA (fig.) / TANA, to which the applicant refers.

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 decision referred to by the applicant is not relevant. The Opposition Division observes that the contested sign, ‘TANA’, was a word mark and that the typeface in which the earlier mark, ‘TATA’, was depicted was much more fanciful than the typeface in which the contested sign’s word element, ‘FRESHCON’, is depicted in the present case. Moreover, in the previous decision, the earlier mark contained a figurative element, which is not the case here. To sum up, those signs were found to be visually dissimilar based on considerations that are not applicable to the present case. The same holds true for the conclusion that there could be no likelihood of confusion between those marks, which was based on the fact that identity between the conflicting goods would have been required to compensate for the distance between the signs.

For the reasons explained above and in accordance with the EUTMR and the case‑law, it cannot be reasonably stated that the signs under comparison in the present case are dissimilar.

Considering all the above, there is a likelihood of confusion on the part of the Lithuanian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 137 996. It follows that the contested trade mark must be rejected for all the contested goods.

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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.