OPPOSITION No B 2 896 226

Boneco a.s., Lopatecká 13, 147 00 Praha 4, Czech Republic (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000 Praha 1, Czech Republic (professional representative)

a g a i n s t

Cafea GmbH, Am Sandtorkai 2, 20457 Hamburg, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

On 31/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 896 226 is upheld for all the contested goods.

2. European Union trade mark application No 16 336 521 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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/or 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 16 336 521 for the word mark ‘BONEO’. The opposition is based on, inter alia, European Union trade mark registration No 9 520 586 for the word mark ‘BONECO’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

According to Article 10(1) EUTMDR, a request for proof of use is only admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) EUTMDR.

In the present case, even if a request for proof of use can be identified in the applicant’s observations submitted on 05/12/2017, within the period referred to above, it was not presented separately (on a separate sheet).

Consequently, since the applicant did not submit the request for proof of use by way of a separate document as required, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 European Union trade mark registration No 9 520 586.

1. The goods

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

Class 29: Meat, fish, poultry and game, none being live; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; graded eggs, milk and milk products, egg products; edible oils and fats; fruit icecream, frozen foods; salads and spreads, vegetable, meat and fish-based salads.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, ketchup; vinegar, pickles and sauces (condiments), dressings, salads with a mayonnaise or dressing base; spices; mayonnaises and creams, ice.

The contested goods are the following:

Class 29: Coffee whiteners, preparations made from vegetable raw materials for whitening coffee, dietetic foodstuffs, not for medical purposes, included in class 29; Mixed milk beverages, milk predominating or half milk, including with added cocoa and/or malt and/or chocolate; Including all the aforesaid goods in instant form.

Class 30: Coffee, coffee extracts, artificial coffee, malt coffee, malt coffee extracts, grain coffee, grain coffee extracts, tea, tea extracts, including all the aforesaid products in instant form; cocoa, chocolate, chocolate goods and confectionery, in particular bars, including with added milk products and fruit products, nuts and/or cereal products, flour and preparations made from cereals; pastry and confectionery; coffee-based, tea-based, cocoa-based and chocolate-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products, including all the aforesaid goods in instant form; natural sweeteners and sweetening substances, coffee, cocoa and chocolate preparations for making non-alcoholic beverages, including in instant form.

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

The terms ‘in particular’ and ‘including’, used in the applicant’s lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

In this respect, it should be noted that the various indications including all the aforesaid products in instant form in the applicant’s lists of goods in Classes 29 and 30 simply indicate that the preceding goods listed are also offered in instant form. Since the opponent’s goods are not limited to exclude the goods protected in instant form, the indications including all the aforesaid products in instant form in the applicant’s lists of goods do not affect the degree of similarity of the preceding contested goods referred to with the opponent’s goods. Therefore, considering that it would not alter the result of the comparisons and in order to avoid unnecessary repetition, the indications including all the aforesaid products in instant form in the applicant’s lists of goods in Classes 29 and 30 will be taken into account but will not be mentioned in the comparisons that follow.

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 coffee whiteners include coffee whiteners consisting principally of dairy products and thus overlap with the broad category of the opponent's milk products which also include such goods. Therefore, they are identical.

The contested mixed milk beverages, milk predominating or half milk, including with added cocoa and/or malt and/or chocolate are included in the broad category of the opponent’s milk products. Therefore, they are identical.

The broad category of the contested dietetic foodstuffs, not for medical purposes, included in class 29 consists of foodstuffs that contain dietary supplements, or that are, for example, lower in calories, salt, sugar or fat and includes for example dietetic milk products. Therefore, the contested goods and the opponent's milk products can have, at least, a similar nature and purpose and have the same methods of use; they can share the same distribution channels and be found in the same supermarkets and grocery stores next to each other. Furthermore, they can share the same commercial origin, target the same relevant public and be in competition. Therefore, they are considered at least highly similar.

The contested preparations made from vegetable raw materials for whitening coffee are similar to the opponent's milk products which include coffee whiteners consisting principally of dairy products. Therefore, these goods can have the same purpose, share the same distribution channels and target the same relevant public. Furthermore, they can be in competition.

Contested goods in Class 30

Coffee; artificial coffee; cocoa; tea; flour and preparations made from cereals; pastry and confectionery are identically contained in both lists of goods.

The contested natural sweeteners and sweetening substances include, as a broader category, the opponent’s honey, treacle. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested chocolate, chocolate goods and confectionery, in particular bars, including with added milk products and fruit products, nuts and/or cereal products are identically covered or otherwise included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested malt coffee; grain coffee; coffee-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products; coffee preparations for making non-alcoholic beverages are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested cocoa preparations for making non-alcoholic beverages; cocoa-based and chocolate-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested tea-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products are included in the broad category of the opponent’s tea. Therefore, they are identical.

The contested chocolate preparations for making non-alcoholic beverages are highly similar to the opponent's cocoa which includes cocoa preparations for making non-alcoholic beverages. Therefore, apart from having a similar nature, these goods can have the same purpose and methods of use. Furthermore, they share the same distribution channels, target the same relevant public and are produced by the same undertakings.

The contested coffee extracts; malt coffee extracts; grain coffee extracts and tea extracts include such extracts used to give a coffee/tea flavour to other foodstuffs or beverages. The contested goods and the opponent’s coffee and tea respectively can thus have the same purpose and coincide in their methods of use. Consequently, the contested goods and the opponent’s coffee and tea respectively are similar to a low degree.

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 similar to varying degrees are directed at the public at large.

The goods concerned are mass consumption goods that are inexpensive and frequently consumed. In respect of such goods, the degree of attention of the general public is at most average and may in fact be (somewhat) below normal (see to this effect, 10/10/2012, T-569/10, Bimbo Doughnuts, EU:T:2012:535, § 99; 17/01/2013, T-355/09, Walzer Traum (fig.) / Walzertraum, EU:T:2013:22, § 42).

3. The signs

BONECO	BONEO
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 earlier mark is the word mark ‘BONECO’ and the contested sign is the word mark ‘BONEO’.

The word ‘BONECO’ is a Portuguese word meaning ‘doll’ and the earlier mark will therefore be understood by the Portuguese-speaking public in the relevant territory as having this meaning, which has no connection to the goods concerned and is, therefore, distinctive. For the non-Portuguese-speaking public, the word ‘BONECO’ will be perceived as a fanciful word without any meaning and is, therefore, also distinctive for this part of the public.

The word ‘BONEO’ has no meaning in any of the languages of the European Union and will therefore be perceived as a fanciful word without any meaning by the public concerned throughout the whole of the relevant territory. Since the contested sign will not be associated with any meaning by the relevant public, it is also distinctive.

The applicant argues that the relevant public throughout the European Union will clearly perceive the word ‘NEO’ in the contested sign, ‘BONEO’, since it is an ancient Greek word meaning ‘new’ when talking about new incidents, movements, fields of culture, arts, and architecture, political opinions, etc. and commonly used in expressions such as neo-liberal, neo-classicism, neo-gothic, neo-nazi and neo-catholic. However, although the Opposition Division agrees that consumers throughout the European Union are generally likely to be aware of the word ‘NEO’ and its meaning, in particular in the contexts referred to, the applicant did not provide any further line of reasoning to explain why the contested sign for ‘BONEO’ in relation to the goods concerned would be dissected by consumers in this way. In this respect, the Opposition Division notes that consumers normally perceive a sign as a whole and do not proceed to analyse its various details. Therefore, taking into account that the beginning ‘bo’ of the contested sign has no concrete meaning in relation to the goods concerned in any of the relevant languages, that the meaning of ‘neo’ referring to ‘new’ is normally used in rather specific expressions, such as those referred to by the applicant, and that it is also usually present at the beginning of such expressions and not at their end, the relevant public is not likely to associate the contested sign, ‘BONEO’, with any meaning in relation to the goods concerned or break it down into different components. Therefore, the Opposition Division considers that ‘BONEO’ will be perceived as a fanciful, distinctive word without any particular meaning as already stated above.

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).

Since both signs will be perceived as two fanciful words without any meaning by the non-Portuguese-speaking public in the relevant territory, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

Visually, the signs coincide in the letters ‘BONE*O’ in an identical position and are only differentiated by the additional fifth letter ‘C’ of the earlier mark.

Therefore, the signs are visually highly similar overall.

Aurally, irrespective of the different pronunciation rules in the different parts under analysis of the relevant territory, the contested sign will be pronounced as three syllables (and not only two as argued by the applicant), namely as ‛BO-NE-O’ and the earlier mark as ‛BO-NE-KO’.

The applicant puts forward that the additional ‛K’ sound in the earlier mark is the most distinctive and audible consonant in the alphabet and claims that there is therefore a high phonetic difference between the signs. However, as already mentioned above, consumers normally perceive a sign as a whole and do not proceed to analyse its various details. In this respect, neither of the signs has any meaning for the part of the public under analysis and they have therefore no components that will be perceived as more distinctive than other components. With this in mind, it is the overall impression produced by the marks that should be taken into consideration and not their individual letters in isolation.

Taking into account that the pronunciation of the signs coincides identically in their first two syllables and that their respective third syllable also ends with the sound of the same letter ‛O’, contrary to the arguments of the applicant, the ‛K’ sound of the additional letter ‛C’ in the third syllable of the earlier mark will not lead to a significant difference between the signs in the overall aural impression they produce.

Therefore, the signs are also aurally highly similar overall.

Conceptually, neither of the signs has a meaning for the public under analysis 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 claimed that the earlier trade mark enjoys reputation but did not file any evidence to prove this claim.

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 has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

Account should also be 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 the present case, the goods have been found partly identical and partly similar to varying degrees and the degree of attention of the relevant public is at most average.

The signs are visually and aurally highly similar and, since neither of the signs will have any meaning for the part of the public under analysis, the conceptual aspect does not influence the assessment of the similarity between them.

Therefore, taking into account the overall high degree of similarity between the signs and the identity or similarity between the goods concerned and bearing in mind that consumers will have to rely on their imperfect recollection of the signs, there is a likelihood of confusion on the non-Portuguese-speaking part of the public in the European Union, even in relation to the goods found to be similar only to a low degree.

Consequently, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 520 586. 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 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(5) EUTMR.

Furthermore, as the examined earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

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.