OPPOSITION No B 2 973 835

Intersnack Group GmbH & Co. KG, Peter-Müller-Str. 3, 40468 Düsseldorf, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Coffee King Limited, Clifton House, Ashville Point, Sutton Weaver, Runcorn, WA7 3FW, United Kingdom (applicant), represented by Sean Le. Tissier, Clifton House, Ashville Point, Sutton Weaver, Runcorn, WA7 3FW, United Kingdom (employee representative).

On 03/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 973 835 is upheld for all the contested goods, namely:

Class 30: Baked goods, confectionery, chocolate and desserts.

2. European Union trade mark application No 16 186 413 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 186 413 for the figurative mark , namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 12 966 628 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.

1. The goods

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

Class 30: Extruded and pelletised or otherwise manufactured or processed tapioca, manioc, maize, wheat or other cereal products for snacks, and ginger products being confectionery and fruit jellies; Savoury biscuits and pretzels; Muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; Chocolate and chocolate products; Sauces.

The contested goods are the following:

Class 30: Baked goods, confectionery, chocolate and desserts.

Chocolate is identically contained in both lists of goods.

The contested baked goods include, as a broader category, the opponent’s savoury biscuits and pretzels. 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 desserts and confectionery overlap with the opponent’s chocolate products; these goods are, therefore, 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 are directed at the public at large with an average degree of attention.

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).

Both marks are figurative and have in common the basic English word ‘KING’, which is widely used throughout the relevant territory and will be understood by a sizeable part of the relevant public as ‘a person, animal, or thing considered as the best or most important of its kind’ (see Collins English Dictionary online). This conclusion has been confirmed by case-law (see, for example, 07/05/2009, T‑414/05, LA Kings, EU:T:2009:145, § 43, where the General Court held that the Spanish public has some knowledge of English that enables it to understand the English word ‘king’; 08/12/2015, T‑525/14, XKING (fig.) / X (fig.) et al., EU:T:2015:944, § 32, confirmed by 26/07/2017, C‑84/16 P, EU:C:2017:596, where the General Court held that the word ‘king’ is perceived by the French public, which understands basic English, as meaning ‘king’ or ‘the best’).

The word ‘KING’, included in both signs, is frequently used to denote something having a superior quality and, therefore, has a laudatory connotation. Bearing in mind that the relevant goods are foodstuffs, it is considered that this element is rather weak (see, by analogy, 20/09/2011, T‑99/10, Tofuking, EU:T:2011:497, § 26).

In the earlier mark, the word ‘KING’ is depicted in standard white upper case letters within a red shield with a depiction of the profile of a king’s head above it, facilitating the perception of the semantic content of the word ‘KING’ and, thus, reinforcing its concept.

In the contested sign, the word ‘KING’ is preceded by the word ‘COFFEE’, both words being slightly stylised, in white and black. ‘COFFEE’ will be universally understood to refer to the hot drink. This word immediately informs consumers about the goods provided — namely that they are based on, containing or to be consumed with coffee — and is therefore weak in relation to the relevant goods. Above the verbal elements, there is a depiction of a crown with a coffee bean at each point of the crown, thus emphasising the concepts of the verbal elements.

Neither of the signs has any element that could be considered more dominant than others.

Visually, the signs coincide in the element ‘KING’ and they differ in the additional word, ‘COFFEE’, of the contested sign, both being weak in relation to the goods at issue.

The slightly fanciful typeface in which the contested sign is written is considered not very elaborate or sophisticated and will not lead the consumer’s attention away from the elements it seems to embellish

Considering the previous assertions regarding the distinctiveness of the elements, the differences between the marks under comparison cannot overcome the finding of at least a low degree of visual similarity between the signs.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘KING’, present in both signs. The pronunciation differs in the sound of the word ‘COFFEE’ in the contested sign.

Therefore, taking into account the distinctiveness issues, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding word, ‘KING’, will evoke a concept, taking into account the distinctiveness issues, the signs are conceptually similar to an average degree. The additional elements of the marks, namely the verbal element ‘COFFEE’ of the contested sign and the figurative elements contained in both signs, since they just reinforce the concepts conveyed by the verbal elements of the signs, cannot offset the conceptual similarity between the marks.

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. Considering what was stated in section c) of this decision, the distinctiveness of the earlier mark as a whole is below average.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods are identical. The earlier mark as a whole is of lower than average distinctiveness. The signs are visually similar to a low degree and aurally and conceptually similar to an average degree. The relevant public is the public at large, whose degree of attention is average.

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).

In addition, 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, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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). In the present case, the identity between the goods outweighs the low degree of visual similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 966 628.

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 (formerly 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

Eva Inés PÉREZ SANTONJA

Alexandra APOSTOLAKIS

Victoria DAFAUCE MENÉNDEZ

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.