OPPOSITION No B 2 747 189

Kaufland Dienstleistung GmbH & Co. KG, Rötelstr. 35, 74172, Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209, Bremen, Germany (professional representative)

a g a i n s t

Migliora S.R.L., Viale del Lavoro 69/71, 36021 Barbarano Vicentino (VI), Italy (applicant), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio 56, 36100, Vicenza, Italy (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 747 189 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 of European Union trade mark application No 15 175 301 . The opposition is based on European Union trade mark registration No 12 813 481 . 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.

a) The goods

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

Class 30: Edible ices; sorbets (ices); chilled desserts; frozen yogurt; confectionery in frozen form; ice confectionery; mixtures for making ice cream and ice cream products.

The contested goods are the following:

Class 5: Powdered milk for babies; powdered milk foods for infants; lacteal flour for babies; milk powders [foodstuff for babies]; powdered milk foods for infants; infant formula; dietary supplements for infants; babies' diapers; dietetic foods adapted for infants; starch for dietetic use; starch for pharmaceutical purposes; starch for dietetic or pharmaceutical purposes; nutritional supplements made of starch adapted for medical use; syrups for pharmaceutical purposes; drug delivery agents in the form of edible wafers for wrapping powdered pharmaceuticals; powdered fruit-flavored dietary supplement drink mix; milk sugar; milk sugar for pharmaceutical purposes; milk sugar for pharmaceutical purposes; malted milk beverages for medical purposes; lactose free infant's formula; milk of almonds for pharmaceutical purposes; malted milk beverages for medical purposes; yeast extracts for medical, veterinary or pharmaceutical purposes; medicinal oils; meal replacement powders; powdered nutritional supplement drink mix; salts for medical purposes; glucose dietary supplements; glucose for use as an additive to foods for medical purposes, mildewcides.

Class 29: Dried milk; protein milk; foods and food preparations for infants and toddlers aged from 0 to 5 years, powdered cream; artificial cream (dairy product substitutes); whey; dry whey; yoghurt; drinking yogurts; preparations for making yoghurt; drinks made from dairy products; milk and milk products; milk-based beverages containing fruit juices, ice cream-based frappés; dairy puddings; butter; blended butter; clarified butter; buttercream; cocoa butter for food; butter preparations; butter substitutes; butter oil; concentrated butter; savory butters; cottage cheese preparations; fruit spread; custard style yoghurts; low fat dairy spreads; dairy spreads; prepared fruits; aromatised fruit; preserved fruits; frozen fruits; crystallized fruits; fruit jellies; fruit pulp; fruit juices for cooking; jellies, jams, compotes, fruit and vegetable spreads; milk; milk products; milk products; whey; fermented milk; cream [dairy products]; milk beverages, milk predominating; dairy puddings; coconut milk powder; whiteners [dairy] for beverages; dairy-based dips; powdered milk for food purposes; artificial milk based desserts; flavoured milk powder for making drinks; drinks made from dairy products; dairy-based whipped topping; milk-based beverages containing fruit juice; oils and fats; vegetable powders; fruit powders; coffee cream in the form of powder; seeds, prepared; birds eggs and egg products; rice milk [milk substitute].

Class 30: Cocoa beverages with milk; ice milk [ice cream]; flavourings for beverages; gruel, with a milk base, for food; glucose powder for food; glucose preparations for food; yoghurt (frozen -) [confectionery ices]; yoghurt (frozen -) [confectionery ices]; starch for food; rice starch flour; maize flour; wheat starch flour; starch-based candies (ame); glutinous starch syrup (mizu-ame); potato flour; starch syrup [for food]; sago palm starch [for food]; starch derivatives for food human consumption; corn starch derivatives in powder form for making into drinks; flavourings for foods; flavourings for beverages; flavourings for cakes; food flavorings, other than essential oils; flavourings in the form of dehydrated sauces; natural flavourings for use in ice cream [other than etheric essences or essential oils]; syrup for food; syrups and treacles; topping syrup; flavouring syrups; ice confectionery; ice cream gateaux; ice cream stick bars; iced cakes; ice confectionery; ice cream substitute; ice cream drinks; soy-based ice cream substitute; coffee-based beverages containing ice cream (affogato); puddings; puddings in powder form; puddings in powder form; mixes for making puddings; instant dessert puddings; instant pudding mixes; flavourings for butter; chocolate; chocolate powder; drinking chocolate; chocolate for toppings; imitation chocolate; chocolate flavourings; chocolate topping; chocolate topping; chocolate cakes; chocolate extracts; ice creams containing chocolate; milk chocolates; chocolate flavoured confectionery; drinks flavoured with chocolate; ice creams flavoured with chocolate; chocolate drink preparations; chocolate based fillings; chocolate based products; baked goods, confectionery, chocolate and desserts; chocolate extracts for the preparation of beverages; cocoa; cocoa beverages with milk; cocoa products; cocoa powder; instant cocoa powder; cocoa-based beverages; cocoa mixes; coffee, teas and cocoa and substitutes therefor; extracts of cocoa for use as flavours in foodstuffs; cocoa-based ingredients for confectionery products; cocoa preparations for use in making beverages; mixtures for making ice cream products; sponge cake; pastry dough; aromatic preparations for pastries; preparations for making bakery products; sugar for making conserves of fruit; pralines; bonbons made of sugar; frostings; confectioners' glaze; frosting mixes; sweet glazes and fillings; icing sugar; malt dextrin glazings for confectionary; malt dextrin glazings for foodstuffs; sugars, natural sweeteners, sweet coatings and fillings, bee products; shortbread with a chocolate flavoured coating; biscuits having a chocolate flavoured coating; custard; frozen custards; custard powder; imitation custard; custard-based fillings for cakes and pies; crème caramel; creme brule; custard; chocolate creams; cream cakes; custard; invert sugar cream [artificial honey]; cocoa based creams in the form of spreads; cake decorations made of candy; cake decorations made of candy; cake decorations made of candy; chocolate decorations for confectionery items; chocolate decorations for cakes; chocolate decorations for cakes; flour; farinaceous foods; flour concentrate for food; mixed flour for food; soya flour for food; farinaceous food pastes for human consumption; oilseed flour for food; ice cream with fruit; fruit sauces; fruit flavourings, except essences; sweetmeats [candy] being flavoured with fruit; fruit flavoured tea [other than medicinal]; sweeteners consisting of fruit concentrates; flavourings made from fruits [other than essential oils]; dairy ice cream; non-dairy ice cream; dairy confectionery; yeast; baking powder; yeast and leavening agents; yeast extracts for human consumption; honey; honey substitutes; baking powder; powders for ice cream; cereal powders; spices in the form of powders; drinks in powder form containing cocoa; powder for making ice cream; glucose powder for food; cocoa [roasted, powdered, granulated, or in drinks]; coffee [roasted, powdered, granulated, or in drinks]; savory sauces, chutneys and pastes; mixes for preparing sauces; sponge cake; sugar, other than for medical use; rice; foodstuffs made of rice; shortcrust pastry; alimentary paste [dough]; sponge cake; glucose for culinary purposes; glucose syrups for food; glucose syrup for use as a fermenting aid for food; vanillin [vanilla substitute].

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 assumed to be identical are directed at the public at large and, some of them, such as the contested syrups for pharmaceutical purposes; mildewcides; yeast extracts for medical, veterinary or pharmaceutical purposes in Class 5 also target business customers with specific professional knowledge or expertise in the field of pharmaceutical.

The public’s degree of attentiveness may vary from average, to high (only in relation to some of the contested goods in Class 5 such as, for instance, syrups for pharmaceutical purposes; mildewcides; yeast extracts for medical, veterinary or pharmaceutical purposes) considering the price, specialised nature, or terms and conditions of the goods purchased.

In particular, it is apparent from the case-law that, insofar as pharmaceutical preparations whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). Moreover, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

c) The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The meaning of the elements ‘IL MEGLIO’ of the earlier mark and ‘MIGLIORA’ of the contested sign will be perceived by part of the public, such as the Italian-speaking consumers, as meaningful. In specific, the words ‘IL MEGLIO’ will be understood as ‘the best’ while ‘MIGLIORA’ is the indicative form, third person singular or the imperative form of the verb ‘migliorare’ (‘to improve’). Therefore – and as also asserted by the opponent in its submissions – since the meaning conveyed by these elements directly refer to the qualities and properties of all the relevant goods, they are non-distinctive for this part of the public.

However, for another part of the public, such as, for instance, the Bulgarian and Polish-speaking consumers they have no meaning and are, therefore, distinctive.

Consequently, the Opposition Division will first examine the opposition in relation to the part of the public for which the elements ‘IL MEGLIO’ of the earlier mark and ‘MIGLIORA’ of the contested sign have no meaning being, therefore, distinctive. Indeed, for the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the above elements are distinctive for all the relevant goods.

In any case, the earlier sign element ‘CLASSIC’ will be perceived by all the relevant public with the meaning of ‘something that is simple and traditional and it is not affected by changes’, given the similarity of this English word with its correspondent in the different languages of the European Union such as for example ‘klasicheski’ (Bulgarian), ‘klasyczny’ (Polish), ‘classique’ (French), ‘klassisch’ (German), ‘clásico’ (Spanish). It follows that the relevant public would perceive this element as non-distinctive in relation to all the relevant goods since it merely refers, inter alia, to the traditional method / style on how these goods are produced.

In addition, the contested sign element ‘PERFORMINGFOOD’ will be perceived by the part of the public with certain knowledge of English either as a made-up way of alluding to one of the food functions i.e. ‘food that provide nutrients’ or rather ‘food for performers’ (e.g. high-energy foods for performing athletes). If follows that this element is weak for this part of the public since it fancifully describe one of the good’s function / destination. Conversely, it is unlikely that the part of the public with no knowledge of English would dissect the above element in the words ‘performing’ and ‘food’ and derive from it a meaning. It follows that for this part of the public the word ‘PERFORMINGFOOD’ is meaningless and thus distinctive.

Moreover, it must be noted that squares such as those in the earlier mark are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27). However, the highly stylized letter ‘K’ contained in the dark square has no meaning in relation to all the goods being, therefore, distinctive. Conversely, the contested application stylized heart detains a below average degree of distinctiveness since it might remotely allude to the positive effect of the relevant goods to the heart functions.

The earlier mark’s element ‘IL MEGLIO’ and the graphical depiction of a stylized ‘K’ surrounded by a square together with the contested sign’s element ‘MIGLIORA’ and the stylized depiction of a heart are the signs’ dominant elements as they are the most eye-catching.

On a final basis, it must be recalled that in the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the letters M*GLIO** of the earlier trademark’s second word ‘MEGLIO’ and of the contested sign’s element ‘MIGLIORA’. However, the signs differ in the initial letters ‘IL’, the second letter ‘E’ of the word ‘MEGLIO’ and the word ‘CLASSIC’ on the top, as far as the earlier trademark is concerned and, as regards the contested sign, in the second letter ‘I’; the last two letters ‘RA’ and the verbal element ‘PERFORMINGFOOD’. The signs also differ in their graphical elements and in their respective stylizations.

Therefore, also taking into account the above mentioned principles and assertions on the distinctiveness of the signs elements, these are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters M*GLIO** of the earlier trademark’s second word ‘MEGLIO’ and of the contested sign’s element ‘MIGLIORA’. However, the signs differ in the initial letters ‘IL’, the second letter ‘E’ of the word ‘MEGLIO’ and the word ‘CLASSIC’ of the earlier trademark and in the contested sign’s second letter ‘I’, last two letters ‘RA’ and the verbal element ‘PERFORMINGFOOD’. However, taking into account its high degree of stylization, it is not likely that the letter ‘K’ of the earlier trademark will be pronounced by the relevant consumers (in this regard, see T-172/12 of 30/05/2013 ECLI: EU: T: 2013: 286).

Therefore, also taking into account the above mentioned principles and assertions on the distinctiveness of the signs’ elements, the signs are aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for the relevant part of the public. In specific, the earlier trade mark will be associated only with the meaning of ‘classic’ while the contested application with the meaning conveyed by the heart depiction and, for the part of the public with a certain knowledge of English, also with the meaning of the word ‘PERFORMINGFOOD’.

Therefore, as the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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, 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 (see, to that effect, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been assumed identical. They target both the general and professional public that will pay a degree of attention ranging from average to high.

The trademarks in conflict have been found visually and aurally similar only to a low degree while conceptually they are not similar. In specific, the contested sign’s dominant verbal element is composed of two different words namely ‘IL’ and ‘MEGLIO’ which, contrary to the opponent submissions, are equally distinctive and portrayed in the same dimension. In addition, the assessed variances between the signs’ dominant verbal elements contribute to substantially differentiate the marks from the visual and aural perspectives. In particular, the relevant public would perceive the earlier sign element ‘IL MEGLIO’ as a combination of two distinct and meaningless words while the contested application ‘MIGLIORA’ as a sole meaningless verbal component that shares only limited similarities with the earlier mark. Additionally, the signs’ respective co-dominant graphical elements, being distinctive in the earlier sign and with a below average degree of distinctiveness in the contested application, still contribute to enhance the visual and conceptual difference in the sign’s overall impression. On a final basis, the contested sign secondary element ‘PERFORMINGFOOD’ (distinctive for the non-English speaking part of the public and allusive for the English-speaking consumers) also contributes to differentiate the signs from the visual, aural and (in some cases) conceptual aspects.

Taking all the above into account, it must be concluded that the assessed differences between the marks are capable of maintaining a sufficient distance between the overall impressions given by the signs.

In its observations, the opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The opponent refers to a first and second instance proceedings of the Bulgarian trade mark Office concerning the figurative trade marks ‘MEGLIO’ and ‘MIGLIORE MEGLIO d’ITALIA’. These signs present substantial differences from those of the present proceedings. More specifically, the elements ‘MEGLIO’ and ‘MIGLIORE’ of the marks mentioned by the opponent are portrayed in an almost identical stylization. Furthermore, the trademark ‘MEGLIO’ is entirely included in the other sign’s element ‘MEGLIO d’ITALIA’. On a final basis, in the submitted cases the signs do not have any additional graphical element which can contribute to differentiate them, like in this case. It follows, that the previous cases referred to by the opponent are not relevant to the present proceedings given the substantial differences with the signs at stake.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘IL MEGLIO’ of the earlier mark and ‘MIGLIORA’ of the contested application are non-distinctive. This is because, as a result of the non-distinctive character of those elements and of the conceptual differences conveyed by these meanings, that part of the public will perceive the signs as being even less similar.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Riccardo RAPONI

Aldo BLASI

Michele M. BENEDETTI-ALOISI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.