OPPOSITION No B 2 877 242

Organización Interprofesional del Aceite de Oliva Español, Calle Castelló 128, 2º Dcha., 28006 Madrid, Spain (opponent), represented by Baker & Mckenzie, Calle de José Ortega y Gasset, 29, 28006 Madrid, Spain (professional representative)

a g a i n s t

Scirocco Ethical Sales Management S.R.L., Via Tagliavia - Cortile 3, n. 1, 92013 MENFI (AG), Italy (applicant), represented by Studio Rag. G. Gristina S.R.L., Via Tuscolana, 1334, 00174 Roma, Italy (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 877 242 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 16 133 712 for the figurative mark , namely all the goods in Class 29. The opposition is based on European Union trade mark registration No 11 735 289 for the figurative mark . 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 29: Edible oils.

The contested goods are the following:

Class 29: Oils; Olive oil; Edible fats.

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 Oils and edible fats include, as broader categories, the opponent’s edible oils. 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 Olive oil is included in the broad category of the opponent’s edible oils. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is 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).

Both signs contain figurative and verbal elements with different lengths and placed in different ways.

The one word verbal element ‘OLIOVE’ in the contested sign is an invented fanciful word and as such it does not exist. Nevertheless, there is a possibility that some consumers may see in it a concept, such as of ‘olive’, or a fanciful combination of the ‘olive’ and ‘love’, due to the spelling similarities between them and the word ‘OLIOVE’. For them this element will be allusive of the characteristics of the goods and therefore of reduced distinctive character. For the rest of the public, which will perceive the verbal element as meaningless, it will be distinctive.

Contrary, the verbal elements in the earlier mark ‘OLIVE OILS FROM SPAIN’ have a concrete meaning for the English-speaking part of the public, which will understand them as fats obtained from olives with an origin from Spain. They provide concrete information about the kind of goods and their geographical origin and are considered therefore to be weak and non-distinctive elements at least for the English-speaking consumers in the European Union.

Considering that the words ‘olive oils’ are very close to equivalent words in other official languages of the European Union, for instance German (‘Olivenöl’) or Dutch (‘olijfolie’), it follows that also this part of the relevant public will associate the first part of the verbal elements with olive oil. For them, at least this verbal element will be descriptive and void of distinctive character.

Irrespective of possible other perceptions of the circular-shaped element in both signs, the Opposition Division agrees with the opponent that part of the public will perceive these elements as a stylised letter ‘O’. This might be additionally prompted by the fact that the single word element in the contested sign and ‘Olive oils’ in the earlier sign begin with ‘O’. It is generally recognised in the case-law that consumers tend to perceive single letters or abbreviations of letters as referring to the remaining verbal elements in the signs, provided that they coincide in their initial letters. Accordingly, the Opposition Division will proceed with analysing the signs from the point of view of the consumers who would see these elements as stylised letters ‘O’. This is considered to be the most advantageous scenario for the opponent, where an additional point of similarity between the signs exists.

Due to the size of the stylised ‘O’ elements in the mark, the Opposition Division agrees with the opponent that they are the dominant and the most eye-catching elements in the earlier mark, and of significant visual impact in the contested mark, although in this latter one there is no clear dominant element. However, despite the fact that both signs contain a circular shape, which at least part of the consumers will see as the letter ‘O’, these do present significant differences in terms of their stylisations. In the earlier mark the circular element or letter ‘O’ is bold and has a grey thick rim in the inside circle. In the contested sign the circular element looks more like an ellipsis, it is thinner upside and underside and it is surrounded by stylised elements resembling leaves or flowers. To the extent consumers may see these elements as referring to their remaining verbal parts, as discussed above, the level of distinctiveness of the elements will be for these consumers also reduced, as they will be linked with the same semantic connotations. Nevertheless, as noted above, the remaining verbal elements of the signs will be meaningless for part of the public and hence, irrespective of whether the stylised ‘O’ is seen as referring to these meaningless expressions or not, its level of distinctiveness will be undiminished for this part of the public.

Visually, even if the signs coincide visually in letters ‘OLI*VE’, of the single word element in the contested sign and the first word in the earlier mark, due to the completely different stylisation of the single ‘O’ elements of the signs, as explained above, the additional words in the earlier mark and the different positions and lengths of the verbal elements accompanying them, which leads to a different overall composition of the signs, the Opposition Division finds the signs, contrary to the opponent´s opinion, visually similar to, at most, a very low degree.

The fact that both signs contain a stylised letter ‘O’ does not by itself lead to a finding of similarity. This is because a single letter as such may not serve as an origin identifier and it is therefore the particular manner of representation of the letter that is particularly relevant. The contrary would mean that similarity should be found whenever two signs contain the same shape without taking into account how such shape is represented in terms of forms and proportions, and its impact in the overall visual perception of the sign. As seen above, the stylisation of the letter ‘O’ in both signs is very different – the elegant oval shape and finish in the contested sign with tiny branches with leaves surrounding it is opposed to the thick line and almost circular shape of the letter in the earlier sign, which is half white and half grey inside and crossed out by a grey line in the middle.

Furthermore, the signs contain additional elements, positioned in completely different manner, which makes the overall layout of the signs different. In particular, in the contested sign a single word element in quite big letters is at the top, while the stylised ‘O’ is beneath it. In the earlier mark it is the stylized ‘O’ which is at the top, while a four-word phrase in two rows and quite small typeface is positioned beneath it. Moreover, the verbal elements of the earlier sign are clearly secondary due to their much smaller size, thus with limited impact overall. On the contrary, the contested sign has no clearly dominant elements.

In summary, the signs are visually different in proportions, structure, forms and their overall composition.

Aurally, the pronunciation of the signs coincides only in the sounds ‘O’ and ‘OLI*VE’ and differs in the sound of the letter ‘O’ (presented in the middle of the contested sign´s verbal element) and the words ‘OILS FROM SPAIN’ presented only in the earlier mark. For the part of the public that will pronounce all elements of the signs, considering the non-coinciding elements in the earlier mark, the signs are aurally similar to a low degree. It is not exclude though that part of the public does not pronounce all elements of the earlier mark, given consumers tend to economies in the case of longer verbal elements of marks. For this part of the public the degree of aural similarity may even be above average (coincidence in ‘O OLI*VE’, where the difference is in ‘OIL’ at the end of the earlier mark).

Conceptually, the signs are conceptually similar to an average degree. This stems from the common perception of the letter ‘O’ in both signs and possible understanding of the meaning of some or all of the remaining verbal elements of the signs.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for the goods in question, namely edible oils in Class 29 and for a part of the relevant consumers, namely those from countries for which the verbal elements will provide information about the nature and the geographical origin of the goods. The mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation to the goods in question.

e) Global assessment, other arguments and conclusion

The goods are identical. They are directed at the public at large whose degree of attention is deemed to be average.

As explained in section c) of this decision, the signs are considered visually similar to a very low degree due to the contrasting lengths and positions of their verbal elements and the different stylisations of the figurative elements resulting in different visual impacts. Depending on the different pronunciation possibilities the signs have been found aurally similar either to a low degree or to above average degree. Conceptually the signs are similar to an average degree.

The earlier mark is of normal or of lower than average distinctive character depending on the public’s perception.

According to the Court, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18, 24).

Nevertheless, even for the public for whom the earlier mark’s distinctiveness is not diminished, no likelihood of confusing may arise. The differently stylised elements and the contrasting lengths and positions of the verbal elements in the signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

Moreover, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). As has been seen above, the signs are visually similar at most to a very low degree. In this respect, even for the public for whom there is above average aural similarity and average degree of conceptual similarity, due to the impact of the visual aspect, likelihood of confusion may not arise. As seen above, the coincidence in the single letter ‘O’ in both signs is not sufficient, given its completely different stylisation and the overwhelming differences in the overall graphical representation of the signs as a whole (structure, positioning and stylisation of their elements).

In its observations the Opponent refers to a number of previous decisions from different instances to support its arguments. The Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Nevertheless, the Opposition Division has analysed the previous cases referred to by the opponent and concluded that they are not relevant to the present proceedings. These cases include a number of different goods and services directed to very different public including various professionals having different degrees of attentions. Contrary, the contested goods in the present case are ordinary consumer goods targeting the average consumer. The pointed out cases deal with a variety of conflicting signs. In some of the examples the comparison is restricted to purely figurative signs, in another to figurative signs versus figurative signs with verbal elements where the figurative sign is entirely or almost represented in the conflicting sign. Taking into account all these differences it is impossible to establish any common pattern, which could be applied by analogy to the present case. Therefore, this opponent´s argument must be dismissed.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public, that perceives both signs as containing a stylised letter ‘O’. Apparently, for those who perceive the signs as containing stylised circular shapes or in a further different manner, the similarities between them will be even lower (on aural and conceptual level). Therefore, the opposition must be rejected.

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

María del Carmen SUCH SÁNCHEZ

Meglena BENOVA

Teodora TSENOVA-PETROVA

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.