OPPOSITION No B 2 915 943

Bimbo, S.A., C/ Josep Pla, 2-B2 (Torres Diagonal Litoral), 08019 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Matthew David Rogers, Coventry Cottage, Holyport St., SL6 2JR Holyport, United Kingdom (applicant), represented by Bright (South West) LLP, studio 5-11, 5 Millbay Road, Pl1 3LF Plymouth, United Kingdom (professional representative).

On 31/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 943 is partially upheld, namely for the following contested goods:

Class 30: Chili powder; chili seasonings; hot chili bean paste; peppers [seasonings]; sriracha hot chili sauce; chili paste for use as a seasoning; chili oil for use as a seasoning or condiment.

Class 31: Chillies (unprocessed -); chillies; fresh chilies; capsicums; peppers [plants]; fresh peppers; unprocessed peppers.

2. European Union trade mark application No 16 433 807 is rejected for all the above goods. It may proceed for the remaining 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 433 807 for the figurative mark . The opposition is based on European Union trade mark registration No 12 445 623 for the word mark ‘HOT’, European Union trade mark registration No 15 326 812 for the word mark ‘XTRA HOT’, and European Union trade mark registration No 15 583 149 for the word mark ‘HOTS’. 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.

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 12 445 623.

1. The goods and services

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

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk; edible oils and fats.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; vinegar; ice.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; natural plants and flowers; foodstuffs for animals; malt.

The contested goods and services are the following:

Class 30: Chili powder; chili seasonings; hot chili bean paste; peppers [seasonings]; sriracha hot chili sauce; chili paste for use as a seasoning; chili oil for use as a seasoning or condiment.

Class 31: Chillies (unprocessed -); chillies; fresh chilies; capsicums; peppers [plants]; fresh peppers; unprocessed peppers.

Class 35: Wholesale services in relation to chili seasonings; wholesale services in relation to chili oil for use as a seasoning or condiment; wholesale services in relation to chili paste for use as a seasoning; wholesale services in relation to hot chili bean paste; wholesale services in relation to chilli oil; wholesale services in relation to peppers [seasonings]; wholesale services in relation to chili sauce; wholesale services in relation to sriracha hot chili sauce; wholesale services in relation to fresh chilies; wholesale services in relation to chili powders; wholesale services in relation to unprocessed peppers; wholesale services in relation to peppers [plants]; wholesale services in relation to fresh peppers; wholesale services in relation to capsicums; wholesale services in relation to chillies; wholesale services in relation to chillies (unprocessed -).

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 30

The contested chili powder; chili seasonings; hot chili bean paste; peppers [seasonings]; sriracha hot chili sauce; chili paste for use as a seasoning chili oil for use as a seasoning or condiment are similar to an average degree to the opponent’s salt, as they have the same purpose and they usually coincide in producers, relevant publics and distribution channels.

Contested goods in Class 31

The contested chillies (unprocessed -); chillies; fresh chilies; capsicums; peppers [plants]; fresh peppers; unprocessed peppers are included in the broad category of the opponent’s agricultural products not included in other classes. Therefore, they are identical.

Contested services in Class 35

Wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods whenever the goods covered by the wholesale services and the specific goods covered by the other mark are identical in, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. 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.

Therefore, the contested wholesale services in relation to chilli oil and wholesale services in relation to chillies are similar to low degree to the opponent’s edible oils and preserved vegetables (which include preserved chillies) in Class 29, respectively.

Furthermore, the contested wholesale services in relation to fresh chilies; wholesale services in relation to unprocessed peppers; wholesale services in relation to peppers [plants]; wholesale services in relation to fresh peppers; wholesale services in relation to capsicums; wholesale services in relation to chillies (unprocessed -) are similar to a low degree to the opponent’s agricultural products not included in other classes in Class 31.

However, the contested wholesale services in relation to chili seasonings; wholesale services in relation to chili oil for use as a seasoning or condiment; wholesale services in relation to chili paste for use as a seasoning; wholesale services in relation to hot chili bean paste; wholesale services in relation to peppers [seasonings]; wholesale services in relation to chili sauce; wholesale services in relation to sriracha hot chili sauce; wholesale services in relation to chili powders are not identical to any of the opponent’s goods in classes 29, 30 and 31 but only similar as already explained above. Therefore, these goods and services are dissimilar because apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Wholesaling consists in offering wholesales of goods to retailers. This is not the purpose of goods. 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 to various degrees are directed at the public at large or at business customers with specific professional knowledge or expertise as with regards to wholesale services.

The degree of attention is considered to be average.

3. The signs

HOT
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word element ‘HOT’ has different meanings in English and it is likely to be perceived by part of the public in the relevant territory as referring to something spicy or to something being high in temperature. However, another part of the public, such as the Spanish- and French-speaking consumers, will not associate this word with meanings, since it is far away from the equivalent words in these languages (‘picante’ and ‘caliente’ in Spanish, and ‘épicé’ and ‘chaud’ in French).

In view of the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Spanish-speaking part of the public for which the word ‘hot’ is meaningless, and therefore distinctive to a normal degree in relation to the relevant goods and services.

In the contested sign, the element ‘Dr.’ will be understood as an abbreviation for ‘doctor’, which is a distinctive to a normal degree for the goods and services at issue. The expression ‘Dr. Hot’ will, as a whole, be perceived as referring to a doctor named ‘Hot’. Furthermore, the verbal elements of the contested sign are depicted in red and shadowed in black, with the letters ‘D’ and ‘o’ having a green coloured stem on them. As the letters are coloured in red, they are likely to be perceived as peppers or chili peppers with green stems; consequently, the depiction of the letters ‘D’ and ‘o’ are of below average distinctiveness for the relevant goods and services. Moreover, ‘Dr. Hot’ is preceded and followed by patterns reminiscent of heart beats in red, which have no obvious connections to the goods and services and are of average distinctiveness. Nevertheless, 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).

The blue background of the contested sign will merely be perceived as an ordinary depiction of a label and as decorative; therefore, it is of weak distinctiveness. Finally, the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in that the earlier mark is reproduced in its entirety in the contested sign. They differ in all the remaining elements of the contested sign, as explained above, with, for instane some of them being weak or having less impact on the consumers’ perception of the signs. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in French and Spanish, the pronunciation of the signs coincides in the sound of the only verbal element of the earlier mark (‘HOT’) and differ in the sound of abbreviation ‘Dr.’ in the contested sign, which will be pronounced as ‘doctor’. Bearing this in mind, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since one of the signs will not be associated with meanings, 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 claims to have ‘an obvious and proved relation with the sign “HOT” and thus, as owner of the opposing trademark, it should be protected of any likelihood of confusion or conflict on the market.’ However, the opponent 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 has no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 covered are from the same or economically linked undertakings.

In the present case, the contested goods are partially identical and partially similar to an average degree to the goods of the opponent, while the contested services are partially similar to a low degree and partially dissimilar to the goods of the opponent.

It is true that the signs will be perceived as being conceptually not similar by the public under analysis. However, they are similar to an average degree visually and aurally; the earlier mark is fully included in the contested sign where it plays an independent and distinctive role, and the only differences between the signs lie in two additional letters and some figurative elements which are not sufficient to dilute the overall similarity between the marks. In addition, the earlier mark is of normal distinctiveness for the public taken into consideration.

In view of the foregoing, the Opposition Division considers that consumers may be led to believe that the goods and services concerned offered under the signs in dispute come 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (which includes likelihood of association) on the French- and Spanish- speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 445 623. 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 from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods of the earlier trade mark.

Nevertheless, the opposition is not successful insofar as the services that are similar to a low degree are concerned. The similarity of the marks does not compensate the low degree of similarity between these services.

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 15 583 149 for the word mark ‘HOTS’, registered for meat extracts; preserved, dried and cooked fruits and vegetables; jellies; marmalade; fruit, stewed; eggs; milk; milk products; edible oils and fats; preserves, pickles; nut-based snack foods; potato crisps in the form of snack foods; roasted walnuts; none of the aforementioned goods containing meat and/or fish and/or poultry and/or game in Class 29, and coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour; cereals; bread; pastries; confectionery; ices; honey; syrups and treacles; yeast; baking powder; salt; mustard; vinegar; herb-sauces; spices; ice; snacks based on corn, including puffed corn snacks and pretzels; tortilla chips; none of the aforementioned goods containing meat and/or fish and/or poultry and/or game in Class 30.

European Union trade mark registration No 15 326 812 for the word mark ‘XTRA HOT’, registered for fruit salads; eggs; milk; edible fats in Class 29, rice; tapioca and sago; flour and preparations made from cereals; bread; sugar, honey, treacle; yeast, baking- powder; ice in Class 30, and grains and agricultural, horticultural and forestry products not included in other classes; live animals; natural plants and flowers; foodstuffs for animals; malt in Class 31.

European Union trade mark registration No 15 583 149 is registered for some additional goods in Class 30, namely herb-sauces and spices. Nevertheless, its sign, ‘HOTS’, is less similar to the contested mark than the opponent’s European Union trade mark registration which has been compared. This is due to the visual and aural differences the additional letter ‘S’ makes at the end of the sign vis-à-vis the contested sign. Such a difference is more noticeable in rather short signs; the shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. It is true that, for instance spices in Class 30 are similar to a low degree to the contested wholesaling services of such goods in Class 35. However, as these goods and services are at most similar to a low degree, and European Union trade mark registration No 15 583 149 is less similar to the contested sign overall, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services. This also applies to the opponent’s European Union trade mark registration No 15 326 812, ‘XTRA HOT’, which covers the same or a narrower scope of goods as the earlier right examined in section a) of this decision.

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

Sandra IBAÑEZ

Christian RUUD

Begoña URIARTE VALIENTE

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.