OPPOSITION No B 2 856 568

Terra Bio Consorzio Agricoltori Biologici Soc. Coop, Via dell'Apsa, SN, 61029 Schieti di Urbino (PU), Italy (opponent), represented by Ufficio Brevetti Pedrini & Benedetti, Via Cardinale Gugliemo Massaia 12, 61122 Pesaro, Italy (professional representative)

a g a i n s t

Productores De Frutos Secos Españoles S.L., C/ Vasco Núñez de Balboa 21, 06196 Corte de Peleas / Badajoz, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69-4° Of. 412, 28013, Madrid, Spain (professional representative).

On 16/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 856 568 is upheld for all the contested goods.

2. European Union trade mark application No 16 073 603 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 shall 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 16 073 603 for the figurative mark . The opposition is based on European Union trade mark registration No 9 160 581 for the figurative mark . The opponent invoked Article 8(1)(a) and (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, inter alia, the following:

Class 29: Meat, fish, poultry and game; meat extracts; jellies, jams, compotes; eggs, milk and milk products; edible fats and oils; in oil; hazelnuts and almonds cream; dried fruit; soya and rice milk; soups; extravirgin olive oil; seed oil; peeled tomatoes; soya cream; tahin; all aforementioned goods with the exception of vegetable soups and frozen soups, mixes of frozen vegetables for making soups, fruit chips, snack bars containing dried fruits (confectionery) and snack foods, including snack chips.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sea water for cooking; aromatic preparations for food; flavorings, other than essential oils; flavourings, other than essential oils, for cakes; flavourings, other than essential oils, for beverages; puddings; capers; chocolate; sweeteners (natural -); essences for foodstuffs, except etheric essences and essential oils; malt extract for food; gluten prepared as foodstuff; spring rolls; ice cream (binding agents for -); ice cream (binding agents for -); sausage binding materials; sausage binding materials, maltose; whipped cream (preparations for stiffening -); royal jelly for human consumption, not for medical purposes; pizza; propolis (bee glue) for human consumption; sausage binding materials; sandwiches, sushi; aromatic preparations for food; propolis (bee glue) for human consumption; flavourings, other than essential oils, for cakes; capers; essences for foodstuffs, except etheric essences and essential oils; flavorings, other than essential oils; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes; glucose preparations for food; gluten prepared as foodstuff; ice cream (binding agents for -); malt extract for food; maltose; meat tenderizers, for household purposes; mint for confectionery; powders for ice cream; propolis (bee glue) for human consumption; puddings; royal jelly; sandwiches; sausage binding materials; sea water for cooking; rice-based snack food; spring rolls; starch for food; sushi; sweeteners (natural -); thickening agents for cooking foodstuffs; whipped cream (preparations for stiffening -).

After a limitation filed by the applicant on 09/03/2017, the contested goods are the following:

Class 29: Prepared nuts; salted nuts; spiced nuts.

Class 30: Pastries and confectionery containing nuts (chocolate-coated nuts).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, must be read in conjunction with ‘all aforementioned goods with the exception of’ which precedes it and accordingly it indicates that the specific goods snack chips are only examples of items for which protection is excluded. In other words, the term ‘including’ introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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 29

The contested prepared nuts; salted nuts; spiced nuts are highly similar to the opponent’s dried fruit. All of these goods may be consumed as snacks or used as ingredients for preparing cakes, meals etc. Hence they coincide in their purpose, producers, end consumers, method of use and distribution channels. Furthermore, they may be in competition.

Contested goods in Class 30

The contested pastries and confectionery containing nuts (chocolate-coated nuts) are included in the broad category of, or overlap with, the opponent’s pastry and confectionery. Therefore, they are identical.

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 or highly similar are directed at the public at large, whose degree of attention is low or, at most, average given the fact that the goods concerned are relatively cheap goods for everyday consumption.

3. 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 common element ‘TERRA’ exists as such as a meaningful word in part of the relevant territories (e.g. Portugal and Italy). As its meaning may have an impact on the distinctive character of this element, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian and Polish-speaking parts of the public, for whom TERRA has no meaning.

The contested sign is a figurative mark consisting of the word ‘BIOTERRA’ written in black lower case letters against a white background with a green stylised leaf placed above the word ‘TERRA’. This device is weak in relation to the relevant goods as it will be associated with nature, and therefore merely be perceived as indicating that the foods in question contain natural ingredients.

The earlier mark is a figurative mark consisting of the verbal element ‘TERRABIO’ inside an open circle of yellow dots with tails pointing outwards. The word ‘TERRA’ is written in green standard bold lower case letters and the word ‘BIO’ in dark stylised italic lower case letters. The dot on the letter ‘I’ is green and resembles an accent. The yellow dots with tails may be perceived as representing ears of corn or seen as a decoration. At first sight they look like an embellishment and they do not convey any clear, unambiguous and immediately graspable concept.

Due to differences in the sizes (in the contested sign) and in the colours of the letters (in the earlier mark) the public is likely to perceive in both signs the elements ‘BIO’ and ‘TERRA’.

It can be reasonably assumed that the public in the relevant territory will readily discern the element ‘BIO’, included in both signs, as referring to ‘biological’ or ‘life’, and also to ‘environmental sustainability’. This is justified by the fact that nowadays this prefix or suffix is widely used in commerce to refer to organic and/or environmentally friendly products. This has also been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T-610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 45, 46).

Bearing in mind the nature of the goods in question, this element is weak for all of these goods, as it only indicates that they are of organic origin and/or were produced using natural methods. Therefore, the impact of this element on the perception of the relevant public is limited.

On the other hand, the element ‘TERRA’ included in both marks has no meaning for the part of the relevant public mentioned above and is, therefore, distinctive.

Neither mark has any element that could be considered more dominant (visually eye-catching) than other elements. However, when a sign consists 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, the signs coincide in the letters that make up the words ‘BIO’ and ‘TERRA’. However, they differ in the order of these words. Contrary to the applicant’s submission, the reverse order of the words is of very little importance, as the two elements of which the signs are composed are identical. It follows that the two signs will be recognized by the public as a combination of those two elements and the relevant public will not remember the exact order of the two elements due to the great similarity of those elements (see for instance 09/12/2009, T-484/08, Vits4Kids, EU:T:2009:486, § 32).

Concerning the additional figurative elements of both signs, their impact is somewhat limited because, as previously explained, the relevant consumers will rather memorise the verbal element of the contested sign than the embellishing figurative elements. Additionally the leaf device is also weak for the goods in question.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛BIO’ and ‘TER-RA’, present identically in both signs. Only the order of the pronunciation differs. In addition, the graphic and figurative elements of the signs are not subject to an aural assessment, as they will not be pronounced.

Therefore, the signs are aurally highly similar, as the components of both marks will be pronounced identically and the reverse order of the two verbal elements cannot dispel the overall aural similarity of the signs.

Conceptually, taken as a whole, both signs are meaningless for the part of the relevant public on which the present decision focuses. However, the element ‘BIO’ and the figurative element of the contested sign will be associated with the meanings explained above. To that extent and considering the limited impact of the concept ‘BIO’ in both signs, the signs are conceptually similar to a low degree.

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, despite the presence of the weak element ‘BIO’, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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). The principle of interdependence is particularly relevant in the present case, as the contested goods are identical or similar to a high degree to those covered by the earlier mark.

The distinctiveness of the earlier mark is normal and the degree of attention of the public will vary from low to average.

From the perspective of the Bulgarian- and Polish-speaking part of the public in the relevant territory, the signs are visually similar to an average degree, aurally highly similar and conceptually similar to a low degree.

Taking into account the aforementioned, and especially the fact that the marks coincide in their verbal elements ‘BIO’ and ‘TERRA’, it is considered that the overall impression made by the signs on the relevant public will be similar. The difference between the marks consisting of the reverse order of such verbal elements is not sufficient to counteract the prominent similarities found.

Likewise the slight stylization and different colours of the word elements as well as the different figurative elements present in both signs are insufficient to differentiate the marks because, as mentioned above, consumers will most readily refer to a sign by its verbal component which is likely to have a stronger impact than the figurative components. Furthermore the 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).

Therefore, it is likely that the consumer, on encountering use of both signs in relation to identical or highly similar goods and having an imperfect recollection of the contested mark, might think that the goods originate from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian- and Polish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 160 581. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR. The Office notices in that respect that the signs are clearly not identical.

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

Andrea VALISA

Riccardo RAPONI

Birgit FILTENBORG

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.