OPPOSITION No B 2 930 686

Hamid Ahmad Chakari, Kohlenhofgasse 5/17, 1150 Wien, Austria (opponent), represented by Anatol Schürer, Kaisergasse 10, 4020 Linz, Austria (professional representative)

a g a i n s t

Bakhtiar Ahmad, Unit 14, Cumberland Business Park, Cumberland Avenue, NW10 7RT London, United Kingdom (applicant), represented by Pitmans LLP, 47 Castle Street, RG1 7SR Reading, United Kingdom (professional representative).

On 30/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 930 686 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 682 403 ‘SPEENGHAR UK’, namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 16 028 508 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 30/08/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/01/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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:

Class 30: Rice; flour of rice; rice-based snack food; rice cakes; husked rice; enriched rice; flavoured rices; fried rice; cooked rice; steamed rice; frozen prepared rice; foodstuffs made of rice; rice pulp for culinary purposes; extruded food products made of rice; enriched rice [uncooked]; artificial rice [uncooked]; milled rice for human consumption; frozen prepared rice with seasonings and vegetables.

Class 31: Rice, unprocessed; Paddy; Rice meal for forage.

The contested goods are the following:

Class 30: Rice; tapioca; sago, spices; sweets [candy], candy with caramel; tea; green tea; black tea; earl grey tea; jasmine tea; darjeeling tea; instant tea; instant tea [other than for medicinal purposes]; Chai tea; iced tea; tea bags; tea based beverages with fruit flavourings; rice pudding; rice vermicelli; prepared rice; frozen prepared rice with seasonings and vegetables; spices; coffee; artificial coffee and tea; cocoa; sugar.

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 Class 30

Rice; frozen prepared rice with seasonings and vegetables are identically contained in both lists of goods.

The contested rice pudding; rice vermicelli overlap with the opponent’s foodstuffs made of rice. Therefore, they are identical.

The contested prepared rice includes, as a broader category, the opponent’s frozen prepared rice with seasonings and vegetables. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested tapioca; sago, spices; sweets [candy], candy with caramel; tea; green tea; black tea; earl grey tea; jasmine tea; darjeeling tea; instant tea; instant tea [other than for medicinal purposes]; Chai tea; iced tea; tea bags; tea based beverages with fruit flavourings; spices; coffee; artificial coffee and tea; cocoa; sugar are dissimilar to the opponent’s goods in Classes 30 and 31 which are basically rice and foodstuffs made of rice. The goods under comparison differ in their purpose, distribution channels, sales outlets, producers and method of use. Furthermore, they are not in competition with each other.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

	SPEENGHAR UK
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 figurative mark composed of several words made of Latin characters and numbers made of Arabic numerals. These are, inter alia, the following words: ‘SPIN GHAR’, ‘Long Grain 1121 sella Kainat Rice’, ‘World’s Best Rice’, ‘E-mail: chamidchakari@yahoo.com’ and ‘PKG: 05/2017 EXP: 05/2017’. The earlier mark contains also various figurative elements, for instance an image of a running horse placed against a background which is a field of grass, mountains and the sky. All these elements are located on the left side of the mark. The right side of the mark is a mirror image of its left side. However, on the right side all letters and numbers are written in Arabic respectively. Furthermore, the verbal and figurative elements (on both sides) are depicted against an orange, rectangular background. The only distinctive verbal element of the earlier mark is ‘SPIN GHAR’. The letters ‘SPIN GHAR’ are depicted in larger characters relative to the other words and numbers, and they are placed against an oval background in red with two ribbons in gold. Furthermore, the rest of the words and numbers are either non-distinctive, due to their descriptive nature, or weak, due to their allusive character. It should be noted that the word ‘spin’ will be understood by the English-speaking public as a verb, that is, ‘turn or cause to turn or whirl around quickly’) or a noun, that is, ‘a rapid turning or whirling motion’, (information extracted from Oxford Dictionary at www.en.oxforddictionaries.com on 24/08/2018). For the non-English-speaking part of the public, the word ‘spin’ is meaningless. In any case the word ‘spin’ has no relation to the goods in question and, therefore, it is distinctive. Regarding the word ‘Ghar’ it has no meaning and, therefore, it is distinctive. The most eye-catching elements of the earlier mark are the verbal element ‘SPIN GHAR’ and the figurative element which is an image of a running horse placed against a background which is a field of grass, mountains and the sky. It should be noted that the layout of the earlier mark is very specific and cannot go unnoticed by the public.

The contested sign is a word mark made of two word elements, that is, ‘SPEENGHAR’ and ‘UK’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters. The word ‘SPEENGHAR’ has no meaning and, therefore, it is distinctive. The word element ‘UK’ will be recognised as referring to the United Kingdom. This element is descriptive and non distinctive, since it refers to the origin of the goods.

Visually, the signs coincide in some of the letters in their respective, distinctive word, namely ‘SP*N GHAR’ (earlier mark) and ‘SP**NGHAR’ (contested sign). However, they differ in the third letter of the distinctive word elements of the earlier mark and the third and fourth letters of the distinctive word element in the contested sign, namely ‘I’ (earlier mark) and ‘EE’ (contested sign). Furthermore, the signs differ in the figurative elements and the layout of the earlier mark as described above.

Therefore, the signs are visually similar to a very 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 in their distinctive verbal elements, namely ‘SP*N GHAR’ (earlier mark) and ‘SP**NGHAR’ (contested sign). The pronunciation differs in the sound of the third letter of the earlier mark’s distinctive verbal element, namely ‘I’, and the third and fourth letters in the contested sign’s distinctive verbal element, namely ‘EE’. The signs differ also is some weak and non-distinctive verbal elements as explained above.

Therefore, the signs are aurally similar to an average degree.

Conceptually, taking into account the distinctive verbal elements ‘SPIN GHAR’ (earlier mark) and ‘SPEENGHAR’ (contested sign), for the non-English-speaking part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Bearing in mind the aforesaid distinctive word elements, although part of the public in the relevant territory (i.e. the English-speaking part of the public) will perceive the meaning of the element of the earlier mark (i.e. ‘spin’) 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. With regard to the figurative elements of the earlier mark (i.e. the running horse placed against a background which is a field of grass, mountains and the sky), 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 non‑distinctive and weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly dissimilar, and they target the public at large, whose degree of attention is average. The signs are visually similar to a very low degree and aurally similar to an average degree. With regard to the conceptual comparison, the signs are either not conceptually similar or the conceptual aspect does not influence the assessment of the similarity of the signs. Furthermore, the earlier mark has a normal degree of distinctiveness.

The earlier mark has a very specific layout and consists of several verbal and figurative elements. These figurative and verbal elements of the earlier mark, predominantly the image of the horse, contribute to the overall impression given by the earlier mark, which is quite different from that of the contested sign, a word mark. Furthermore, the other difference is that the distinctive word element in the earlier mark is composed of two words ‘SPIN GHAR’, whereas the distinctive word element of the contested sign is one word ‘SPEENGHAR’.

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).

The Opposition Division is not convinced that consumers would believe that the conflicting goods come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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.

The Opposition Division

Keeva DOHERTY

Michal KRUK

Loreto URRACA LUQUE

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.