OPPOSITION No B 2 835 356

Deutsche Transnational Trustee Corporation, Inc., c/o Campbell Lea, Box 429, PE C1A7K7 Charlottetown, Canada (opponent), represented by Roland & Douglas, Avda Roma 101, Esc. Izda, E-3, 08029 Barcelona, Spain (professional representative)

a g a i n s t

Barilla G. e R. Fratelli - Societá per Azioni, Via Mantova 166, 43100 Parma, Italy (applicant), represented by Porta & Consulenti Associati S.p.A., Via Vittoria Colonna 4, 20149 Milano, Italy (professional representative).

On 19/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 835 356 is upheld for all the contested goods.

2. European Union trade mark application No 15 823 801 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 15 823 801 . The opposition is based on European Union trade mark registrations No 11 892 882 , No 892 018 ‘P.A.N.’ and No 10 652 113  . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 892 882.

a) The goods

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

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice; Meat tenderizers, for household purposes; Chicory [coffee substitute]; Gluten additives for culinary purposes; Marinades; Sea water for cooking; Peppers [seasonings]; Capers; Seaweed [condiment]; Farinaceous foods; Dressings for salad; Almond confectionery; Gruel, with a milk base, for food; Star aniseed; Aniseed; Aromatic preparations for food; Rice; Oat-based food; Crushed oats; Husked oats; Oatmeal; Saffron [seasoning]; Sugar; Candy; Palm sugar; Cereal bars; High-protein cereal bars; Stick liquorice [confectionery]; Cocoa-based beverages; Coffee-based beverages; Chocolate-based beverages; Tea-based beverages; Baking soda [bicarbonate of soda for cooking purposes]; Rusks; Buns; Puddings; Cocoa; Coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Unroasted coffee; Cinnamon [spice]; Sweetmeats [candy]; Caramels [candy]; Barley meal; Crushed barley; Husked barley; Cereal preparations; Beer vinegar; Chewing gum; Chocolate; Chow-chow [condiment]; Chutneys [condiments]; Cloves [spice]; Noodle-based prepared meals; Condiments; Oat flakes; Chips [cereal products]; Corn flakes; Fruit coulis [sauces]; Preparations for stiffening whipped cream; Custard; Cream of tartar for culinary purposes; Turmeric for food; Curry [spice]; Couscous [semolina]; Confectionery; Natural sweeteners; Pies; Pasties; Essences for foodstuffs, except etheric essences and essential oils; Spaghetti; Spices; Binding agents for ice cream; Sausage binding materials; Thickening agents for cooking foodstuffs; Malt extract for food; Starch for food; Leaven; Ferments for pastes; Noodles; Vermicelli [noodles]; Wheat flour; Cookies; Petit-beurre biscuits; Crackers; Wheat germ for human consumption; Glucose for culinary purposes; Gluten prepared as foodstuff; Waffles; Fruit jellies [confectionery]; Groats for human food; Bean meal; Halvah; Cheeseburgers [sandwiches]; Meal; Ices; Ice cream; Ice; Ice, natural or artificial; Garden herbs, preserved [seasonings]; Hominy; Infusions, not medicinal; Royal jelly; Golden syrup; Ginger [spice]; Meat gravies; Ketchup [sauce]; Cocoa beverages with milk; Coffee beverages with milk; Chocolate beverages with milk; Yeast; Linseed for human consumption; Macaroons [pastry]; Macaroni; Corn meal; Corn, milled; Corn, roasted; Malt biscuits; Malt for human consumption; Maltose; Peanut confectionery; Dough; Pastry; Mayonnaise; Marzipan; Molasses for food; Peppermint sweets; Mint for confectionery; Honey; Flour-milling products; Mustard; Mustard meal; Chocolate mousses; Dessert mousses [confectionery]; Muesli; Nutmegs; Bread; Unleavened bread; Gingerbread; Breadcrumbs; Bread rolls; Potato flour for food; Almond paste; Fondants [confectionery]; Soya bean paste [condiment]; Pasta; Cakes; Meat pies; Rice cakes; Petits fours [cakes]; Lozenges [confectionery]; Pesto [sauce]; Pepper; Allspice; Pizzas; Baking powder; Powders for ice cream; Cake powder; Pralines; Ham glaze; Cake frosting [icing]; Confectionery for decorating Christmas trees; Pastries; Bee glue; Quiches; Ravioli; Rice-based snack food; Cereal-based snack food; Liquorice [confectionery]; Relish [condiment]; Spring rolls; Popcorn; Flavorings, other than essential oils, for beverages; Flavorings, other than essential oils, for cakes; Flavorings, other than essential oils; Sago; Celery salt; Cooking salt; Salt for preserving foodstuffs; Soya sauce; Tomato sauce; Sauces [condiments]; Pasta sauce; Sandwiches; Seasonings; Semolina; Hominy grits; Soya flour; Sorbets [ices]; Artificial coffee; Sushi; Tabbouleh; Tacos; Tapioca; Tapioca flour for food; Tarts; Tea; Iced tea; Tortillas; Pancakes; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Vinegar; Frozen yogurt [confectionery ices].

The contested goods are the following:

Class 30: Coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, bread substitutes and other bread products; Cereal-based snack food; Biscuits, pastry and confectionery; Chocolate and chocolate-based products or products containing chocolate; Bakery goods; Snacks and sweet snacks; Cake mixes; Pizzas and preparations for pizzas; Edible ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

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.

The contested coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread; Cereal-based snack food; pastry and confectionery; Chocolate; Pizzas; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice; Edible ices are identically contained in both lists of goods (including synonyms).

The contested bread substitutes and other bread products are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested biscuits are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested chocolate-based products or products containing chocolate include as broader categories the opponent’s chocolate mousses or chocolate-based beverages. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested bakery goods include as a broader category the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cake mixes are highly similar to the opponent’s cakes as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested preparations for pizzas are similar to the opponent’s pizzas as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested snacks and sweet snacks is not a clear nor precise expression. It includes a wide range of goods such as convenience food, baked goods, confectionery, chocolate, desserts, goods made of processed grains or starches and goods made from cereals. These goods are at least similar to a low degree to the opponent’s confectionery, preparations made from cereals, sandwich, pies, pasta, pizzas, chocolate, dessert mousses [confectionery] because they have the same nature, they can coincide in producer, distribution channels and are in competition.

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 found to be identical or similar to varying degrees are directed at the public at large whose degree of attention is average.

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).

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.

The verbal element ‘PAN’ in the contested sign and the letters ‘P.A.N.’ in the earlier mark have no particular meaning in those countries where German or Polish are spoken, for instance. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, to whom the respective elements ‘PAN’ and ‘P.A.N.’ are distinctive.

As opposed to the drawing of the little boy in the contested sign that is in fact distinctive, the graphic representing a plate of pancakes in the earlier mark is non-distinctive in relation to the goods at hand that are foodstuffs.

As regards the remaining figurative elements of the signs, they are less distinctive because they are geometrical shapes or backgrounds of a purely decorative nature.

The signs have no element that could be considered clearly more dominant than other elements.

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).

Visually and aurally, the signs coincide in the letters/sounds ‘P*A*N’ that are separated by dots in the earlier mark. Visually and aurally, the signs differ in the fact that that letters are mentioned twice in the contested sign. Visually, the signs also differ in the figurative elements and colours of the signs. Moreover, even if in the earlier mark the letters ‘P.A.N.’ are separated by a dot, these letters are most likely to be pronounced as a word at least by part of the public since it is constituted by a vowel in between two consonants rendering facilitating its lecture as a word.

Therefore, taking the above into consideration, the signs are visually similar to a degree below average and, at least for a part of the public, aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the figurative elements in the signs. As the signs will be associated with a dissimilar meaning, the signs are conceptually not similar, although the conceptual difference resulting from the drawing of the pancakes in the earlier mark will have limited importance.

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 a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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). Moreover, 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.

In the present case, the goods are partly identical and partly similar to varying degrees. The signs are visually similar to a below average degree and aurally similar to a high degree for a part of the public on account of the fact that the letters ‘P*A*N’ of the earlier mark are entirely reproduced in the contested sign and even repeated. The fact that in the earlier mark these letters are separated by dots is certainly not sufficient to exclude a likelihood of confusion because, as already explained above, at least a part of the public will read it as in the contested sign, namely, as the word ‘PAN’. Moreover, even if conceptually the signs are not similar, this difference is not particularly relevant, as explained above. As far as the drawing of the boy in the contested sign is concerned, even if it is distinctive, this is still not sufficient to counteract the overwhelming similarities between the signs.

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).

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. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including a likelihood of association) on the Polish- and German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 892 882. 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.

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). It follows that the contested trade mark must be rejected for all the contested goods, even for those goods found similar to at least a low degree. Indeed, the level of similarity between the signs is sufficient to offset the low degree of similarity between some of the goods.

As the earlier European Union trade mark registrations No 11 892 882 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Victoria DAFAUCE MENENDEZ

Sandra IBAÑEZ

Marta GARCÍA COLLADO

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.