OPPOSITION No B 2 942 939

Prana Biovegan Inc., 1440 boul. Jules-Poitras, Montreal, Quebec H4N 1X7, Canada (opponent), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Prana Food S.R.L., Frazione Morano Madonnuccia Snc, 06023 Gualdo Tadino, Italy (applicant), represented by Giuseppe Caforio, Via Bartolo 10, 06122 Perugia (PG) Italy (professional representative).

On 13/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 942 939 is partially upheld, namely for the following contested goods:

Class 29: Fruit-based snack food; dried fruit-based snacks; vegetables, dried.

Class 30: Chocolate; processed grains; sponge cakes; cereal bars; chips [cereal products]; ready-to-eat cereals; cereal preparations; cereals.

Class 31: Germ grains.

2. European Union trade mark application No 16 579 906 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 579 906 for the figurative mark . The opposition is based on European Union trade mark registration No 16 271 298 for the word mark ‘PRANA’.

In the notice of opposition, dated 16/08/2017, the opponent initially also invoked Article 8(5) EUTMR in relation to the abovementioned mark and Article 8(4) EUTMR in relation to the non-registered trade mark ‘PRANA’, used in France.

However, by a letter dated 28/02/2018, the opponent withdrew Articles 8(4) and 8(5) EUTMR as grounds of the opposition. Consequently, the non-registered earlier mark in relation to which Article 8(4) EUTMR was invoked was also withdrawn as a basis of the opposition.

The opposition will therefore proceed based on European Union trade mark registration No 16 271 298 for the word mark ‘PRANA’ and in relation to 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.

a) The goods

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

Class 29: Processed edible nuts and seeds; dried fruits; edible oils; dried fruit and nut mixes; nut-based milk; milk-based beverages containing fruit juice.

Class 30: Chocolate; chocolate confections; chocolate covered nuts; chocolate covered fruit.

The contested goods are the following:

Class 5: Nutritional supplements.

Class 29: Fruit-based snack food; dried fruit-based snacks; vegetables, dried.

Class 30: Chocolate; processed grains; sponge cakes; cereal bars; chips [cereal products]; ready-to-eat cereals; cereal preparations; cereals.

Class 31: Germ grains.

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 5

The contested nutritional supplements in Class 5 are nutritional substances intended for people with special dietary needs and who suffer from a medical condition.

The opponent’s goods in Classes 29 and 30, however, are foodstuffs for mass consumption. They are finished food products, suitable for daily human consumption. All of these goods are sold in supermarkets and non-specialist food shops together with other food products.

The contested goods, which are specific products formulated for dietary purposes, do not have a sufficient connection with the opponent’s goods. The fact that all of these goods have a nutritional purpose, as argued by the opponent, is not sufficient to render them similar. The goods in question have different purposes and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the contested goods are mainly sold in pharmacies and specialist shops, whereas the opponent’s goods are sold in supermarkets and other food outlets.

Consequently, these goods are dissimilar.

Contested goods in Class 29

The contested fruit-based snack food; dried fruit-based snacks are similar to a high degree to the opponent’s dried fruits. They usually have the same producers, relevant public and distribution channels. Furthermore, they are in competition.

The contested vegetables, dried are similar to a low degree to the opponent’s dried fruits, as they usually have the same producers, relevant public and distribution channels.

Contested goods in Class 30

Chocolate is identically included in both specifications.

The contested sponge cakes are similar to the opponent’s chocolate. These goods usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested cereal bars; chips [cereal products]; ready-to-eat cereals; cereal preparations and cereals are similar to chocolates confections, as they have the same purpose. In addition, they usually have the same relevant public and distribution channels. Furthermore, they are in competition.

As the contested processed grains are grain products (cereals) that have been modified from their natural composition (e.g. by removing bran and germ, usually mechanically), these contested goods and the opponent’s chocolate confections are similar for the same reasons as those indicated in the previous paragraph.

Contested goods in Class 31

The germ is the nucleus, or the embryo, of the grain and a grain is ‘a seed or seeds from a plant, especially a plant like a grass such as rice or wheat’ (information extracted from Cambridge Dictionary at https://dictionary.cambridge.org/dictionary/english/grain). Germ grains are similar to a low degree to the opponent’s processed seeds in Class 29. These goods can have same commercial origin, distribution channels and relevant public, and they are in competition.

b) 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 at issue primarily target the public at large. These goods can be bought on a daily basis and are relatively inexpensive, and therefore the degree of attention displayed by end users when purchasing the relevant goods will be no higher than average.

c) The signs

PRANA
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 a word mark and consists of the verbal element ‘PRANA’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the earlier mark is depicted in upper case characters. To simplify the description and comparison of the signs, this word will be referred to below using lower case letters.

As will be explained below, the words that differ between the signs, namely the additional words ‘raw vegan’ and ‘organic’ in the contested sign, have, at most, a low degree of distinctiveness for the English-speaking part of the public. Therefore, the Opposition Division considers it appropriate to focus on this part of the public, which is considered to constitute the best-case scenario for likelihood of confusion to arise.

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 contested sign is a figurative mark in which the dominant verbal element ‘prana’ is depicted in quite heavily stylised dark green letters. The mark also contains a figurative component, namely a light green circle with white lines resembling tree roots, this element is likely to convey the concept of something natural, or organic, to the relevant consumers’. Within the green circle there are two further verbal elements in dark green, although they are much smaller than the dominant verbal element ‘prana’, namely ‘raw vegan’ at the top of the circle and ‘organic’ at the bottom.

The verbal element included in both signs, ‘prana’, could be understood by a part of the public as being related to yoga, or energy, meaning ‘cosmic energy believed to come from the sun and connecting the elements of the universe’ (information extracted from Collins Dictionary on 27/11/2018 at https://www.collinsdictionary.com/dictionary/english/prana). The rest of the public will perceive it as an invented meaningless word. From either perspective, ‘PRANA’ is inherently distinctive, since it is neither descriptive nor allusive of the characteristics of the relevant goods.

The contested sign also contains the verbal components ‘raw vegan’ and ‘organic’.

The word ‘organic’ means ‘methods of farming and gardening [using] only natural animal and plant products to help the plants or animals grow and be healthy, rather than using chemicals’ (information extracted from Collins Dictionary on 29/11/2018 at https://www.collinsdictionary.com/dictionary/english/organic). This element evokes the idea of something grown naturally. Bearing in mind that the relevant goods are or are related to foodstuffs, this element is devoid of distinctiveness.

The word ‘VEGAN’ is used to refer to those consumers who do not eat any animal products. This will be seen as an indication of the characteristics of the goods, namely of the fact that they contain ingredients that can be eaten by vegan consumers. Therefore, this element is also devoid of distinctiveness.

The word ‘RAW’ will be understood as food that has not yet been cooked (information extracted from Collins Dictionary on 29/11/2018 at https://www.collinsdictionary.com/dictionary/english/raw). Bearing in mind that the relevant goods are or are related to foodstuffs, which can be served raw, or some of the ingredients they contain can be unprocessed/raw, this element is descriptive or allusive in a way that affects its distinctiveness in relation to all of the relevant goods, and it is therefore of lower than average degree of distinctiveness at most.

Finally, the circular shape with white lines inside in the contested mark is, in combination with the words described above, at least allusive (in a way that affects distinctiveness) of the organic/natural origin or characteristics of the goods, and therefore it has, at most, a lower than average degree of distinctiveness.

The figurative element of the light green circle acts as a background, and it has less visual impact than the word ‘prana’. This element, ‘prana’, is portrayed in large stylised lower case green letters and takes up almost the whole mark. The remaining elements (i.e. the additional verbal elements) forming the sign are visually secondary.

Considering the above, the element ‘prana’ in the contested sign has the strongest impact on the consumer, as it stands out visually (it is visually eye-catching) and is the most distinctive element, while the other elements have less importance in the overall perception of the sign, for the reasons explained above (i.e. having less visual impact and/or little or no distinctiveness).

Furthermore, 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is another reason why the verbal element ‘prana’ has a greater impact than the figurative element.

Visually, the signs coincide in ‘prana’, which is the only element of the earlier mark. It is reproduced in its entirety in the contested sign, in which it is the dominant and most distinctive element.

The signs differ in elements that have a limited impact, for the reasons explained above.

Therefore, taking into account the abovementioned similarities and differences, and their relative importance in the signs, it is considered that the signs are visually similar to a high degree.

Aurally, considering the sizes and positions of the verbal elements in the signs, and their degrees of distinctiveness, it is highly likely that the contested sign will be pronounced as [prana], since the differing words would not help consumers to identify the commercial origin of the goods, and they are likely to be omitted. The earlier mark will be pronounced as [prana].

For the part of the public that pronounces all the elements in the contested mark, the signs are aurally similar to a high degree.

If the differing words in the contested sign are omitted, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs coincide in the concept of ‘prana’, if it is understood, and differ in the concepts of the rest of the elements of the contested sign, as explained above, all of which have less impact than ‘prana’.

For the part of the public for which ‘prana’ has no meaning, and which grasps only the other concepts of the contested sign, the signs are not conceptually similar, since one of them will not be associated with any meaning. However, the impact of these conceptual differences is very limited, since the differing concepts have a low degree of distinctiveness.

For the part of the public that understands the concept of ‘prana’, as explained above, the signs are conceptually similar to a high degree, since the differing concepts between the marks arise from secondary elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 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.

e) 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/services covered are from the same or economically linked undertakings.

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

In the present case, the goods are partly identical or similar to various degrees, and partly dissimilar. The goods target the public at large; the degree of attention is no higher than average. Furthermore, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness for the relevant public.

The signs are visually similar to a high degree and, depending on consumers’ pronunciation of the contested sign, aurally similar to a high degree or aurally identical. The signs are conceptually highly similar or not conceptually similar.

The differences, resulting mainly from the less important figurative element and the additional verbal elements in the contested sign, which are less dominant and less distinctive, are not capable of offsetting the significant commonalities between the signs resulting from the fact that the earlier mark is reproduced in its entirety in the contested sign, as an element with an independent distinctive role. The coinciding element constitutes the entire earlier mark and the most distinctive and dominant element in the contested mark.

Consequently, the relevant public could believe the contested sign to be a variant of the earlier mark and, therefore, conclude that the contested goods found to be identical or similar (to various degrees) to those of the opponent originated from the same undertaking or at least from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 various degrees) to those of the earlier trade mark. This conclusion furthermore holds for the contested goods that are similar to a low degree to those of the earlier mark. This is because, taking into account the principle of interdependence set out above, the similarity between the signs is significant enough to lead to a likelihood of confusion even in relation to the goods that have only a low degree of similarity.

In its observations, the applicant argues that the earlier trade mark ‘represents a weak mark, with little distinctive capacity’, given that many trade marks include ‘PRANA’. In support of its argument the applicant refers to several trade mark registrations in the EU.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘PRANA’. Under these circumstances, the applicant’s claims must be set aside.

The rest of the contested goods (those in Class 5) 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Gonzalo BILBAO TEJADA

Martin EBERL

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.