OPPOSITION No B 2 900 168

Star Stabilimento Alimentare S.p.A., Via Matteotti, 142, 20041 Agrate Brianza (Milano), Italy (opponent), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

Joseph Bergougnoux, 25, avenue du Forez, 43110 Aurec sur Loire, France (applicant).

On 16/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 900 168 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 367 104 for the word mark ‘woody star’, namely against some of the goods in Class 29. The opposition is based on international trade mark registration No 810 042 designating Ireland, Romania, Austria, France, Bulgaria, Czech Republic, Estonia, Benelux, Croatia, Finland, Slovenia and the United Kingdom and on Italian trade mark registration No 891 647, both 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 the following:

International trade mark registration No 810 042

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams, compotes; eggs, milk and dairy products; edible oils and fats.

Italian trade mark registration No 891 647

Class 29: Meat, peaches, hoppers and game, extracts of preserved, dried and cooked fruit and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats.

After the decision of 16/04/2018 in opposition proceedings No B 2 894 601, which partially rejected the European Union trade mark application, became final, the contested goods are the following:

Class 29: Fungi and vegetables (including nuts and pulses); oils and fats; sausage skins and imitations thereof; soups and stocks, meat extracts; birds eggs and egg products.

As a preliminary remark, the Office notes that the indication of the contested goods in the Notice Opposition contains an obvious mistake, namely the word ‘processed’ is missing at the beginning of the list. Accordingly, the Office will proceed with the present comparison taking into account this clarification.

Some of the contested goods are identical or similar to goods on which the opposition is based; for example, meat extracts are identically contained in the lists of goods of the earlier international trade mark registration No 810 042 and in the contested sign. 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.

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, which are assumed to be to be identical, are directed at the public at large. The degree of attention is average.

3. The signs

	woody star
Earlier trade marks	Contested sign

Both earlier trade marks protect the same figurative mark . For reasons of simplicity, both marks will hereinafter be referred to as one mark in the singular.

The relevant territories are Italy, Ireland, Romania, Austria, France, Bulgaria, Czech Republic, Estonia, Benelux, Croatia, Finland, Slovenia and the United Kingdom.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark that consists of the word ‘STAR’ written in fairly standard red upper case letters on a white background inside a rectangular frame with rounded corners. The frame has a green border and also two convex yellow lines on the left- and right-hand sides. Since its function is purely decorative, the distinctiveness of this element is weak. There are no elements in the sign that could be considered clearly dominant over, in terms of being visually more outstanding than, other elements.

As regards the verbal element ‘STAR’, included in both signs and constituting the sole verbal element of the earlier mark, the relevant public could understand this English word, in relation to the relevant goods, as a reference to a star in the sense of ‘a star-shaped symbol used to indicate a category of excellence’ (information extracted from Oxford Living Dictionaries on 02/11/2018 at https://en.oxforddictionaries.com/definition/star). This word is, according to case-law, a laudatory term emphasising the quality of the goods, and will be understood by a large part of the European Union public, even in non-English-speaking Member States (11/05/2010, T-492/08, Star foods, EU:T:2010:186, § 52). The distinctiveness of this element is therefore low.

Part of the relevant public, namely the English-speaking part of the public, will understand the first element of the contested sign ‘woody’ as ‘(of an area of land) covered with trees’ (information extracted from Oxford Living Dictionaries on 02/11/2018 at https://en.oxforddictionaries.com/definition/woody). This element has no connection whatsoever with the goods in question and therefore is distinctive. For the remaining public this element has no meaning and is distinctive as well.

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, the signs coincide in the letters forming the common laudatory designation ‘STAR’. They differ in the letters forming the first, distinctive, element of the contested mark ‘woody’, which has no counterpart in the earlier mark, and the figurative elements of the earlier mark, as described above. The coinciding element, ‘STAR’, is weak and it is placed in the second position in the contested mark. Therefore, the signs are visually similar to a low degree.

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 letters ‛STAR’, present identically in both signs. The pronunciation differs in the sound of the letters ‛woody’ of the contested mark, which have no counterparts in the earlier mark and create a noticeable phonetic difference. Consequently, considering that the differing element is more distinctive than the coinciding element and is placed at the beginning of the contested mark, to which the public pays more attention, the marks are considered aurally similar to a low degree.

Conceptually, the conflicting signs coincide in the concept of the word ‘STAR’, as explained above. For the part of the public that recognises any meaning in the word ‘woody’, the trade marks under comparison are conceptually similar to a very low degree because they overlap in a weak element and the differentiating element ‘woody’ conveys a different distinctive concept. For the part of the public for which the word ‘woody’ is meaningless, the signs are conceptually similar to a low degree, since they coincide in a weak element.

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 Opposition Division has found in section c) of this decision that the element ‘STAR’ is weak and that the figurative elements are purely decorative. Consequently, the inherent distinctiveness of the earlier mark is considered low.

5. 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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods were assumed to be identical and they target the general public whose degree of attention is average. The signs are visually and aurally similar to a low degree and conceptually similar to a very low degree for English speakers and similar to a low degree for the non-English-speaking part of the public.

The opponent considers that in the contested sign the word ‘star’ is the main element and the word ‘woody’ a generic word. However, as explained in section c), the distinctiveness of the element ‘woody’ in the contested sign is much higher than that of the element ‘STAR’. Therefore, the element ‘woody’ is the most distinctive and noticeable element and the overall impression created by this mark is quite unlike that created by the opponent’s figurative mark.

Taking into account all the foregoing, and in particular the facts that the earlier mark has a low degree of distinctiveness and that the only similarity is found in a weak element, the Opposition Division is of the opinion that this similarity is not sufficient to counteract the differences, even on the assumption that the goods are identical; therefore, the public would not believe that the goods come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, including likelihood of association.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously 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 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Monika CISZEWSKA

Carlos MATEO PEREZ

Marta GARCÍA COLLADO

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.