OPPOSITION No B 2 852 880

Víctor Guedes - Indústria e Comércio, S.A., Largo Monterroio Mascarenhas, nº 1, 1070-184, Lisboa, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103, Lisboa, Portugal (professional representative)

a g a i n s t

La Bolognese S.r.l., Zona Industriale, 1, 84024 Contursi Terme (SA), Italy (applicant), represented by G.D. Di Grazia D’alto & C.S.N.C., Isola E1- Centro Direzionale, 80143 Napoli, Italy (professional representative).

On 11/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 852 880 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 026 619 for the word mark ‘OROGIALLO’, namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, Portuguese trade mark registration No 450 460 for the word mark ‘GALLO’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 Portuguese trade mark registration No 450 460.

a) The goods

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

Class 29: Olive oil, edible oils and fats, preserves.

Class 30: Vinegar and condiments.

The contested goods are the following:

Class 29: Pre-prepared, fresh or frozen meals consisting predominantly of meat, fish or vegetables; condiments consisting primarily of meat and/or fish and/or vegetables and/or cheese; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats; anchovy; stock; soups; canned fruits; canned vegetables; cheese products; milk shakes; mushrooms, preserved; jellies; vegetable soup preparations; vegetable preserves; vegetables, cooked; dried pulses; fruit salads; vegetable salads; margarine; soup (preparations for making -); vegetable juices for cooking; tomato juice for cooking; yoghurt; meat; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products; poultry; meat; cheese products; drinks made from dairy products; whipping cream; processed fruits, fungi and vegetables (including nuts and pulses); milk.

Class 30: Farinaceous food pastes; dried pasta; pasta containing stuffings; deep frozen pasta; sour dough; wholemeal pasta; fresh pasta; puff pastry; shortcrust pastry; filo doughs; alimentary paste [dough]; pastry shells; pasta in the form of sheets; instant noodles; bread doughs; pasta salad; sauces for use with pasta; sauces for use with pasta; pasta containing stuffings; pizza dough; pasta preserves; pasta containing eggs; cookie dough; frozen pastry sheets; ready-made dishes containing pasta; ready-made dishes containing pasta; pasta dishes; dried pasta; filled yeast dough with fillings consisting of fruits; filled yeast dough with fillings consisting of vegetables; snack foods consisting principally of pasta; filled yeast dough with fillings consisting of meat; meals consisting primarily of pasta; vegetable-based seasonings for pasta; pasta-based prepared meals; prepared meals principally containing pasta or rice; canned pasta foods; dried and fresh pastas, noodles and dumplings; lasagne; ravioli; rice; dough for cakes and pizzas; flour and preparations made from cereals; pizza; bread; yeast, baking-powder; dressings for salad; tomato sauce; pesto; spices; salt; mustard; vinegar; condiments; sauces for use with pasta; pastry and confectionery; semolina; flour mixes; farinaceous food pastes for human consumption; macaroni; prepared pasta; dried pasta; spaghetti; tortellini; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; doughs, batters, and mixes therefor; yeast and leavening agents; potato flour; brioches; pizza bases; pies; vinegar.

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. The degree of attention is average.

c) The signs

GALLO	OROGIALLO
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark consists of the Spanish and Italian word ‘GALLO’ meaning ‘rooster, the male of the domestic fowl’. Part of the public could grasp this meaning due to the proximity of this word to the Portuguese equivalent, ‘galo’, and the fact that they will be pronounced almost identically. For another part of the public, it will be perceived as meaningless. In any case, as this word is not descriptive, allusive or otherwise weak for the relevant goods, it is of average distinctiveness.

Contrary to the opponent’s assertions, the Opposition Division considers that there is no reason to believe that the relevant public will mentally dissect the contested sign into ‘ORO’ and ‘GIALLO’. Mental dissection of a sign is likely to occur only when, perceiving a word sign, consumers break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). However, the rule is that marks are perceived as a whole, and the exception to the rule has to be applied restrictively. In the present case, although the (Spanish and Italian) word ‘ORO’ is similar to its equivalent in Portuguese ‘ouro’, it is unlikely to be identified by the relevant public, especially considering that it is embedded in a unique word, and that the word ‘giallo’ (which in Italian means yellow) does not suggest any meaning. Therefore, the contested sign, ‘OROGIALLO’, will be mentally registered as a whole. Since this word is perceived as meaningless, its distinctiveness is average.

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 and aurally, the signs coincide in the sequence of letters ‘G(*)ALLO’, constituting the whole earlier mark and located at the end of the contested sign. However, the signs differ in the additional letter ‘I’ (within this sequence) of the contested sign and, most importantly, in its initial string of letters ‘ORO’. Moreover, they clearly differ in length (the contested sign is almost twice as long as the earlier mark) and structure, which lead to different rhythms and numbers of syllables: the earlier mark is pronounced in two syllables (i.e. ‘GA-LLO’) and the contested sign in four (i.e. ‘O-RO-GIA-LLO’).

Bearing in mind the above factors and the fact that the main differences are at the beginning of the contested sign, where consumers tend to focus, the Opposition Division considers that the signs are visually and aurally similar to, at most, a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs.

Although part of the public in the relevant territory will perceive the meaning of the earlier mark, ‘GALLO’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For another part of the public, neither of the signs has meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The contested goods in Classes 29 and 30 are assumed to be identical to the goods for which the earlier mark is registered. They target the public at large and the degree of attention is average. The degree of distinctiveness of the earlier mark is average.

The signs are visually and aurally similar to, at most, a below average degree and conceptually not similar, or the conceptual aspect does not influence the assessment of the similarity between the signs. Although the signs have the string of letters ‘G(*)ALLO’ in common, this commonality is clearly outweighed by the additional letters ‘ORO’ (at the beginning, on which consumers tend to focus) and the ‘I’ of the contested sign as well as the striking differences in length and pronunciation, which create different overall impressions and are sufficient to exclude any likelihood of confusion between the signs. This absence of a likelihood of confusion applies, a fortiori, to the part of the public for which the earlier mark ‘GALLO’ creates a conceptual difference between the signs, since it renders them even less similar.

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.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on Portuguese earlier trade mark registrations No 417 574 and No 386 727, also for the word mark ‘GALLO’. Since these marks are identical to the one that has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Riccardo RAPONI

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.