OPPOSITION No B 2 762 535

Hikari Miso Co., Ltd., 4848-1 Shimosuwa-machi, Suwa-gun, Nagano-ken, Japan (opponent), represented by Urquhart-Dykes & Lord LLP, One Euston Square, 40 Melton Street, London NW1 2FD, United Kingdom (professional representative)

a g a i n s t

Evaristo Trevino Berlanga, 13A Trust Tower, 68 Johnston Road, Wanchai, Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Pedro Manzano, Avda. Villanueva de Córdoba 28, 4-3 Pozoblanco, 14400 Córdoba, Spain (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 762 535 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 15 481 501 . The opposition is based on European Union trade mark registration No 12 599 759 ‘KANTEN’. 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: Agar; instant soup containing agar; soybean paste soup; deep-fried bean curd, bean curd, seaweed and fermented soybeans used as an ingredient of soybean paste soup.

Class 30: Soybean paste.

The contested goods are the following:

Class 29: Cooking oils; Honey butter; Vegetable oils for food; Fruit marmalade; Processed avocados.

Class 30: Agave syrup for use as a natural sweetener; Flavouring syrups; Table syrup; Honey; Natural honey; Natural ripe honey; Natural sweeteners; Sugar, honey, treacle; Sweet spreads [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.

Contested goods in Class 29 and in Class 30

The contested cooking oils; honey butter; vegetable oils for food; fruit marmalade; processed avocados in Class 29 and agave syrup for use as a natural sweetener; flavouring syrups; table syrup; honey; natural honey; natural ripe honey; natural sweeteners; sugar, honey, treacle; sweet spreads [honey] in Class 30 are dissimilar to the opponent’s goods in Class 29, namely agar; instant soup containing agar; soybean paste soup; deep-fried bean curd, bean curd, seaweed and fermented soybeans used as an ingredient of soybean paste soup, and in Class 30, namely soybean paste. The mere fact that these goods are, broadly speaking, foodstuffs is not sufficient to render them similar, as their natures are quite distinct. In addition, the fact that an ingredient such as the contested cooking oils and vegetable oils for food can be used in preparing and cooking a variety of dishes in the same way that the opponent’s soybean paste can is generally not sufficient in itself to show that the goods are similar either (26/10/2011, T‑72/10, Naty’s, EU:T:2011:635, § 35-36). Soybean paste is used by only a small minority of European consumers. On the other hand, oils are very basic ingredients in everyday European cuisine and could be used by almost anybody in the European Union. In addition, the goods under comparison usually have different commercial origins, since not all processed vegetables or all food products derived from vegetables follow the same process to produce the end product. Furthermore, these goods are not normally displayed on the same shelves, even if they are sold in the same establishments. They are not complementary or in competition. For example, the opponent’s agar can be replaced with other gelatinous substances that are also thickeners in foods. Therefore, the opponent’s claim that the goods in conflict are identical should be set aside.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Denitza STOYANOVA-VALCHANOVA

Anna POLITI

Vít MAHELKA

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.