OPPOSITION No B 2 915 711

Societe cooperative groupements d'achats des centres Leclerc, SC GALEC, 26 Quai Marcel Boyer, 94200 Ivry Sur Seine, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

House of Smily S.L., Calle San Bartolome Num. 164 Bloque II, Planta 9 Puerta D, 03560 El Campello (Alicante), Spain (applicant), represented by JTV Patentes & Marcas, Ortega y Gasset, 11-3°-D, 03600 Elda (Alicante), Spain (professional representative).

On 11/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 711 is partially upheld, namely for the following contested goods and services:

Class 30: Ices; confectionery; pastry; preparations made from cereals; bread.

Class 35: Retailing and wholesaling in shops and via global computer networks of edible ices.

2. European Union trade mark application No 16 387 508 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods and services of European Union trade mark application No 16 387 508 (figurative mark ‘ ’), namely against all the goods and services in Classes 3, 16, 21, 30, 32 and 35. The opposition is based on French trade mark registration No 14 4092526 (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 and services

Preliminary remark with regard to the comparison of the goods and services

The opponent filed an opposition against all goods and services of the contested EUTMA. Even though in its submissions on 09/11/2017 the opponent only refers to some of the contested goods and services in Classes 30 and 35, this cannot be considered to constitute an explicit withdrawal of the opposition against part of the goods and the services.

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

Class 30: Edible ice cream; sherbets (ices); edible ices; frozen confections.

The contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Non-medicated soaps; Perfumery, Essential oils, non-medical cosmetics, Non-medicated hair lotions; Non-medicated dentifrices.

Class 16: Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites (except furniture); Adhesives for stationery or household purposes; artists' materials and drawing materials; Paint brushes; Instructional and teaching material; Plastic sheets, film and bags for wrapping and packaging; Printing blocks, printers' type.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Brush-making materials; Articles for cleaning purposes; Glass, unworked or semi-worked, except building glass; Articles of glassware, porcelain and earthenware.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 32: Beer; Mineral waters and other non-alcoholic drinks; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 35: Issuing of franchises relating to assistance in the operation or management of a commercial or industrial company, retailing and wholesaling in shops and via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices, paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, other than furniture, adhesives for stationery or household purposes, artists' and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printers' type, printing blocks, household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, other than building glass, glassware, porcelain and earthenware, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

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 Classes 3, 16 and 21

The contested goods in the classes 3, 16 and 21 are cleaning preparations, paper and cardboard, stationery, photographs, household utensils and glassware (among other things). These goods are dissimilar to the earlier goods, which are ice-creams and frozen confections. These goods originate from different producers, are directed at different consumers and neither share distribution channels nor the same purpose. Also, their nature is different.

Contested goods in Class 30

The contested goods Ices refer to the same goods as the opponent’s goods edible ices and are therefore identical.

The contested goods confectionery overlap with the opponent’s frozen confections as confectionery can obviously also be presented in frozen form. Therefore they are identical.

The contested goods pastry; preparations made from cereals are similar to the opponent’s goods frozen confections as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested goods bread are lowly similar to the opponent’s goods frozen confections as they usually coincide in producer, relevant public and distribution channels.

The contested goods Ice are goods such as ice cubes which are produced to cool beverages or to be used in drinks. They have a different purpose than the opponent’s ice-cream. They may be produced by the same companies, but as their purpose, distribution channels and end consumers are different, they are considered to be dissimilar.

The remaining contested goods, namely Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour; Bread; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices are also dissimilar to the opponent’s goods. They are directed at different consumers, are produced by different companies and are available through different distribution channels. Their purpose is also different as is their nature.

Contested goods in Class 32

The contested beverages and syrups and preparations for making beverages have a different purpose, nature and distribution channels from the goods of the opponent. They are directed at different consumers, originate from different producers and are neither in competition nor complementary. For these reasons, these goods are considered to be dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing and wholesaling in shops and via global computer networks of edible ices are similar to a low degree to the opponent’s edible ices.

Retailing and wholesaling in shops and via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices, paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, other than furniture, adhesives for stationery or household purposes, artists' and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printers' type, printing blocks, household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, other than building glass, glassware, porcelain and earthenware, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages and the opponent’s edible ice cream; sherbets (ices); edible ices; frozen confections are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

The remaining contested services Issuing of franchises relating to assistance in the operation or management of a commercial or industrial company refer to specific business management services and the offering of franchising services. They share no similarity whatsoever with the opponent’s edible ice cream; sherbets (ices); edible ices; frozen confections. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Their purpose is different. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 and services found to be identical or similar are directed at the public at large.

A lower degree of attention can be associated, in particular, with habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43). The level of attention is considered to be low.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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 element ‘Smicy’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The verbal elements ‘house of’ of the contested sign will be understood, if they are not overlooked as these elements are very small, with the same meaning as in English as these two words are part of the basic English (13/02/2015, R 1019/2014-5, BARISTA PRIMA COFFEHOUSE, § 40). This verbal element is considered to be of weak distinctive character as it only refers to the place of production or rendering of services.

The element ‘Smily’ of the contested sign is a common misspelling of the word ‘Smiley’ which has the same meaning in French as in English. Therefore, it will be associated with that meaning. This element has no descriptive meaning for the relevant goods and services and is considered to be distinctive. It is considered to be the dominant element in the contested sign.

The signs are composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature, namely the dark background in both signs, the underlining curve in the earlier mark and the not unusual hand written style font in both signs. Therefore, the verbal elements are more distinctive than the figurative elements.

The earlier mark has no element that could be considered clearly more dominant than other elements. The element ‘Smily’ is the dominant element in the contested sign.

When signs consist 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).

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 ‘Smi*y’. However, they differ in the fourth letter in each sign (c versus l), although these letters look similar to a certain degree because in both signs hand written typefaces are used. They also differ in the much smaller additional verbal element ‘house of’ in the contested sign as well as in the figurative and graphic elements in both signs which are non distinctive.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛smi*y’, present identically in both signs. The pronunciation differs in the sound of the letter ‛l’ of the contested mark, which has no counterpart in the earlier sign and may differ in the pronunciation of elements ‘house of smily’ in the contested sign which are unlikely to be pronounced because of their very small size.

Therefore, the signs are highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements ‘smily’ and ‘house of’ within the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 enhanced distinctiveness but did not file any evidence in order to prove such a 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 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 some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are identical, similar (to different degrees) and dissimilar. The signs are visually similar to an average degree and aurally highly similar while conceptually they are not similar.

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.

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).

The goods in Class 30 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).

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).

There is a likelihood of confusion because the differences between the signs are not sufficient to overcome the similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn BURTCHAELL

Lars HELBERT

Tobias KLEE

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.