OPPOSITION No B 2 841 883

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Indagrop-Industria Agro Portuguesa Lda., R. Domingos da Silva Tiago – Z. Industrial da Maia-Sector VIII, lote 15, 4475-132 Maia, Portugal (applicant).

On 25/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 841 883 is partially upheld, namely for the following contested goods:

Class 29: Vegetable-based snack foods; Canned pulses; Processed fruits, fungi and vegetables (including nuts and pulses); Processed Pulses.

2. European Union trade mark application No 15 997 307 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 997 307 for the word mark ‘TREMOJI’ for goods in Classes 5 and 29. The opposition is based on European Union trade mark registration No 10 422 971 for the word mark ‘Tremondi’. 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: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats.

The contested goods are the following:

Class 5: Dietary and nutritional supplements; Protein dietary supplements; Nutritional supplements.

Class 29: Vegetable-based snack foods; Canned pulses; Processed fruits, fungi and vegetables (including nuts and pulses); Processed Pulses.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 5

The contested dietary and nutritional supplements; protein dietary supplements; nutritional supplements are nutritional substances intended for people with special dietary needs and who suffer from a medical condition. The opponent’s goods in Class 29 are foodstuffs or ingredients for preparing food. The fact that all of these goods have a nutritional purpose is not sufficient to render them similar. The goods in question have different purposes (i.e. therapeutic versus purely nutritive) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the contested goods are mainly sold in pharmacies and specialist healthcare shops, whereas the opponent’s goods are sold in supermarkets and other food outlets. Consequently, these goods are dissimilar.

The opponent argues that in the decision of 30/07/2015, R 2550/2014-1, SOS (FIG.MARK / SOS (FIG.MARK) et al., it was indicated that ‘food supplements’ and ‘conventional food’ have very close connections and thus those goods have at least an average degree of similarity.

However, the Opposition Division’s practice, as stated in the Guidelines for the comparison of goods and services, is that the Similarity Tool must be used by examiners and, in this specific instance, the goods are clearly marked as dissimilar. Moreover, in the decision referred to by the opponent, the goods under comparison are in Classes 5 and 30, while in the present case the goods are in Classes 5 and 29. Therefore, this argument must be set aside.

Contested goods in Class 29

The contested vegetable-based snack foods; canned pulses; processed fruits, fungi and vegetables (including nuts and pulses); processed pulses are all processed fruits, fungi and vegetables that are included in the broad category of, or overlap with, the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

The applicant argues that there is no similarity between the goods because the earlier mark is used for only some of the goods for which it is registered, namely meats. However, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison, since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s argument in this regard must be set aside.

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 are directed at the public at large. The public’s degree of attention may vary from low to average, as the relevant goods are cheap and purchased on a regular basis.

3. The signs

Tremondi	TREMOJI
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 applicant argues that the earlier mark will be dissected by the Italian public into the words ‘Tre’ and ‘mondi’, which refer to the number three and the concept ‘world’ respectively. The applicant also argues that the contested sign will be perceived by the Portuguese public as meaning ‘lupin’ because of its similarity to the equivalent Portuguese word, ‘tremoço’.

In the opinion of the Opposition Division, the majority of the Italian public will not dissect the earlier mark. However, it cannot be excluded that part of the Italian public will perceive the abovementioned meanings.

Considering the above, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public for which ‘Tremondi’ and ‘TREMOJI’ are meaningless; this is the case, for example, for the English-, German- and Polish-speaking parts of the public.

Therefore, both marks are word marks with an average degree of distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters ‘TREMO**I’. They differ in the sixth and seventh letters of the earlier mark, ‘ND’, versus the sixth letter of the contested sign, ‘J’. Importantly, the signs coincide in their first five letters, ‘TREMO’. 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. Furthermore, the visual and aural impact of the letters ‘ND’ versus ‘J’ is limited in the overall impressions created by the signs, as they are placed near the ends of the marks.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning in the relevant territory. 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.

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

Some of the contested goods are identical and some are dissimilar to the opponent’s goods. The relevant public’s degree of attention may vary from low to average. The distinctiveness of the earlier mark is normal. The signs are visually and aurally similar to a high degree, as they coincide in their first six letters, ‘TREMO**I’. Furthermore, no conceptual difference that could offset these similarities will be perceived.

The differences, which arise from the sixth and seventh letters of the earlier mark, ‘ND’, and the sixth letter of the contested sign, ‘J’, have a marginal impact on the global impression created by the signs, for the reasons explained above in section c) of this decision.

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 differences between the signs are not sufficient to counteract the high degree of visual and aural similarity between them. Consequently, the relevant public, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctiveness given that many trade marks include word elements that are similar to ‘TREMONDI’. In support of its argument, the applicant refers to a few trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘TREMONDI’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous national decisions to support its arguments. However, 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.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, as the beginnings of the signs are different, while they are identical in the present case.

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 No 15 997 307. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those 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 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Jorge ZARAGOZA GOMEZ

Martin EBERL

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.