OPPOSITION No B 2 949 025

General Markets Food Ibérica, S.A.U., Polígon Empordà Internacional, Calle Germans Miquel, s/n, 17469 Vilamalla (Gerona), Spain (opponent), represented by Baker & McKenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034 Barcelona, Spain (professional representative)

a g a i n s t

Van Drie Holding B.V., Nijverheidsweg 11, 3641 RP Mijdrecht, Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 18/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 949 025 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 730 624 for the figurative mark , namely against all the goods in Class 29. The opposition is based on Spanish trade mark registration No 348 024 for the word mark ‘GOURMET’ and on Spanish trade mark registration No 2 874 221 and European Union trade mark registration No 8 780 298, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier Spanish trade marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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:

(1) Spanish trade mark No 348 024

Class 29: Vegetal preserves.

(2) Spanish trade mark No 2 874 221

Class 29: Meat, fish, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetables, meat and fish; compotes, jellies and jams; eggs; milk and milk products; edible oils and fats, dishes prepared with meat, fish or vegetables.

(3) EUTM No 8 780 298

Class 29: Meat, fish, poultry and game, meat extracts; Preserved, dried and cooked fruits, vegetables, meat and fish, compotes, jellies, jams, eggs, milk and milk products, edible oils and fats, prepared dishes made from meat, fish or vegetables.

After a limitation filed by the applicant on 11/06/2018, the contested goods are the following:

Class 29: Meat; Veal; Meat extracts; Jellies.

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.

Meat, meat extracts and jellies are identically contained in both the applicant´s list of goods and the lists of goods covered by earlier marks (2) and (3).

The contested veal is included in the broad category of the opponent´s meat covered by earlier marks (2) and (3). These goods are, therefore, identical.

The Opposition Division deems it also necessary to compare the contested goods with the vegetal preserves covered by earlier mark (1). These goods and the contested jellies (the latter including, inter alia, a substance like jelly made from gelatine and meat juices, served around meat, fish, etc.) are deemed to be lowly similar because the target the same public over the same distribution channels and often have the same commercial origin.

However, the contested meat; veal and meat extracts and the opponent´s vegetal preserves are not similar. The goods under comparison have a different nature and purpose and they are neither complementary to nor in competition with each other. Whilst they are all broadly speaking foodstuffs, this is not enough for a finding of similarity. Furthermore, the conflicting goods come from different producers and can be found in different sections in supermarkets.

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 or lowly similar, respectively, are directed at the public at large. The degree of attention is considered to be average.

3. The signs

(Spanish trade mark No 2 874 221 and EUTM No 8 780 298) GOURMET (Spanish trade mark No 348 024)
Earlier trade marks	Contested sign

The relevant territory is the European Union (for the earlier EUTM) and Spain (for the remaining earlier trade marks).

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 verbal element ‘Gourmet’ of the earlier marks, contained also in the contested sign, refers to a connoisseur of food and drink or, more broadly, to a refined taste and culinary excellence, as correctly pointed out by the applicant (12/12/2003, R 229/2003-2, XAVIER GOURMET (fig.) / GOURMET, § 22; 25/07/2018, R 83/2018-2, GOURMET (fig.) / ORIGINE GOURMET (fig.), § 45). This word is universally used by the food and drink industry to refer to high quality food and drinks but can also relate to high-class restaurants or food stores providing refined ingredients and will be understood EU-wide due to its widespread use. Bearing in mind the relevant goods in Class 29, the distinctiveness of this element must be seen as very limited.

The figurative elements in the earlier figurative marks are limited to fairly standard white title case letters set against a red background at the bottom of which is a wavy type of pattern in yellow and green. As established by the General Court, the figurative elements of these marks are rather common and so they have a decorative character and must be consequently seen as being of secondary importance in relation to the word element (despite the limited distinctiveness of the latter - 15/12/2016, T-212/15, Gourmet, EU:T:2016:746, § 57).

However, and contrary to the opponent´s view, this does not mean that only the word element of the earlier figurative marks has to be considered in the comparison of the signs. At this point and further to the opponent’s arguments, the Opposition Division finds it useful to recall that the assessment of the similarity between marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole.

Neither of the earlier marks have an element that could be considered clearly more dominant than the others.

The contested sign comprises, on top the verbal element ‘GOURMET’ (written in red title case handwritten font), also a figurative device which may be seen by the relevant public as an abstract figurative device or as a fanciful depiction of a cow´s or a calf´s head (maybe even with a halo, as explained by the applicant) against the background of conjoined blue and red triangles. In any event, even in the latter scenario, where the relevant public could relate the representation of a cow´s or a calf´s to the nature of the relevant goods, the Opposition Division is of the view that on account of the particular stylisation of the figurative device and of its relatively fanciful drawing this element will be perceived as at least as distinctive (if not even more) as the very weak verbal element ‘GOURMET’.

The opponent maintains that the verbal element of the sign has a stronger impact on the consumer than its figurative part. However, the verbal element of a sign does not automatically have a stronger impact (judgment of 31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (judgment of 23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). In addition, when the earlier mark is a word mark, the figurative elements of the contested sign may even play a decisive role in differentiating the signs.

The Opposition Division is of the opinion that in the present case the figurative element of the mark applied for is as important as the word element and has a significant impact on the overall impression given by that mark. It is positioned above the word element and occupies not less space than the verbal element. As a result of its size, its colour and its position and its fanciful depiction, the figurative device of the contested sign helps clearly to establish the image of the contested mark which the relevant public will retain in their mind, with the result that it cannot be discounted in the perception of that mark.

Visually, the signs coincide in ‘GOURMET’ which is the only verbal element of all earlier marks and is reproduced also in the contested mark but which is also of limited distinctiveness and, hence, the coincidence in such an element has a limited impact on the relevant public.

On the other hand, the signs differ in the figurative elements of the contested sign and of the earlier figurative marks. In particular, the signs differ in the stylised typescript and colour in which the verbal element of the contested sign is represented and in its figurative device. In the Opposition Division´s view, contrary to what the opponent contends, the figurative device of the contested sign not only cannot be regarded as negligible but significantly contributes to a distinct overall impression of the contested sign on account of its layout and structure which differ from those of the earlier marks and largely counterbalance the common very weak verbal element.

Therefore, the earlier word mark and the contested sign are similar to a lower than average degree.

Moreover, the particular graphical composition of the earlier figurative marks has to be given certain significance when the visual impact of the marks is considered resulting into a very low degree of visual similarity between these earlier marks and the contested sign.

Aurally, since the figurative elements of the signs (in the case of the figurative marks) have no impact on the pronunciation, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. All signs will be associated with the meaning of ‘GOURMET’ which, as correctly emphasised by the applicant, cannot be attributed much weight. Considering also the additional figurative device of the contested sign which is not less distinctive than the coinciding element, the signs are found to be similar to a no more than average degree.

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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

In its submissions filed within the substantiation time limit, the opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation. Furthermore, the opponent did not submit within the substantiation time limit any evidence in support of a higher degree of distinctiveness acquired by the earlier marks due to use. The opponent merely referred to the judgement of the General Court of 15/12/2016, T-212/15, Gourmet, EU:T:2016:746 to counter argue possible allegations on part of the applicant as to lack of distinctiveness of the earlier marks.

The opponent submitted voluminous evidence in response to the applicant’s proof of use request and claimed that this evidence would also be a ´clear indication of enhanced distinctive character of the "GOURMET" brand in the Spanish food wholesale sector´. However, this evidence was submitted after the time limit granted to the opponent to substantiate the opposition and to prove the existence and validity of the earlier rights invoked and its entitlement to file the opposition (including, where relevant for the opposition, to submit evidence of reputation, enhanced distinctiveness or any other aspect affecting the scope of protection of the earlier right). Therefore, the evidence submitted by the opponent following the proof of use request cannot be taken into account for the purposes of substantiating the opponent’s claim as to enhanced distinctive character of the earlier marks.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The opponent is correct in noting that the earlier marks enjoy a ‘presumption of validity’ and that in proceedings opposing the registration of a European Union trade mark, the validity of trade marks may not be called into question (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41). However, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

The contested goods are identical to the goods covered by the earlier figurative marks and lowly similar and dissimilar to the goods covered by the earlier word mark, respectively.

The marks under comparison are similar to the extent that they coincide in the word ‘GOURMET’, which forms the entire (verbal component of the) earlier marks as well as the only verbal component of the contested sign.

The opponent did not prove that the earlier marks enjoyed an enhanced distinctiveness due to their extensive use. The inherent distinctiveness of the earlier marks is considered to be low. While it is true that the earlier word mark (and the single verbal element of the earlier figurative marks) are included in their entirety in the contested mark and this is an indication that the marks are similar (as maintained by the opponent and backed with references to case law), in the present case this similarity is not sufficient to lead to a likelihood of confusion.

In particular, when the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion.

The opponent maintains that the average consumer usually retains the established similarities between trade marks rather than their differences. However, contrary to the opponent’s view, it cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel/CHORAGON, EU:T:2015:280, § 84) and, in particular, less attention will be paid to the elements that are weak or devoid of distinctive character and the existing differences between the signs have to be given more importance in the overall assessment of the signs.

Therefore, taking into account the very limited distinctiveness of the verbal element ‘GOURMET’, the additional figurative elements, such as the font, layout, colours and additional graphic elements of the contested sign are of capital importance. Consequently, although the earlier figurative marks and the contested sign obviously have common word elements, these similarities cannot be expected to cause a likelihood of confusion for the reasonably well-informed and reasonably observant and circumspect relevant public, although the marks are considered to cover identical goods.

Also, in the global assessment, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate to examine the objective conditions under which the marks may be present on the market (03/07/2003, T‑129/01, Budmen, EU:T:2003:184, § 57 and of 06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 49). In this connection, in relation to the goods in question it is concluded that the visual impression must be expected to be more important than the phonetic impression as the goods are normally bought in a grocery shop, and picked by the client from the shelf or handed over to the client by a sales person.

Consequently, in the context of a global assessment of the likelihood of confusion, taking into account the lower than average (or even very low) degree of visual similarity between the mark applied for and the earlier marks, despite the phonetic identity and a certain conceptual similarity, the differences between the marks (found in the different graphical layout and structure, colours and the presence of the figurative device in the contested sign, which is at least as distinctive as the element where the coincidences lie) are sufficient for distinguishing the conflicting signs. The coincidence in a very weak element is not enough to induce the relevant public to believe that one of the signs is a variant of the other, and that the goods in question are from the same or economically linked undertakings, regard being had, moreover, to the very weak distinctive character of the earlier marks.

It is to be recalled that the essential function of the trade mark is to guarantee the identity of the origin of the marked products for the consumers by enabling them, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality. As explained above, it is a known fact that a great number of companies dealing with foodstuffs use the element ‘GOURMET’ and, consequently, consumers will not assume that all trade marks including this word will have the same commercial origin.

Finally, as regards the earlier word mark, while, admittedly, this mark does not include any graphical features which contribute to setting the conflicting signs apart, account is to be taken of the interdependence principle and of the fact that the similarity (if any) between the contested goods and the goods covered by this earlier mark is to a low degree only. Consequently, the Opposition Division is of the view that a likelihood of confusion can be excluded also with regard to this earlier mark.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘Gourmet’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content.

An assumption of a family of marks on the part of the public requires that the common denominator of the contested application and the earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between all of these signs.

Considering the low inherent distinctiveness of the element ‘GOURMET’ and the additional figurative device and the differing layout and structure of the mark applied for, as a whole, the Opposition Division finds that the contested sign does not display the characteristics which might suggest that it belongs to the family of marks relied on. Moreover, the opponent did not submit any evidence of use of the alleged family of marks within the time limit to substantiate the opposition. Therefore, this argument of the opponent must be rejected.

The opponent also makes reference in support of its arguments to the reasoning in 22/01/2010, C‑23/09 P, Ecoblue, EU:C:2010:35 wherein the reasoning of the Court of Justice in its judgment of 6/10/2005, C‑120/04, Thomson Life, EU:C:2005:594 is quoted. In the latter judgment it was held that, in a case where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, has an independent distinctive role therein.

The Opposition Division is of the opinion that the principles set out in the judgment quoted by the opponent cannot be applied in the present case. In the first place, as evident from the evidence submitted by the applicant, suffice it to notice that the contested application passed the absolute grounds examination on account of its figurative elements and that above it was already established that the distinctiveness of the earlier marks is limited. Therefore, the opponent’s argument is rejected.

The Opposition Division also takes note of the opponent’s reference to the judgement of the General Court of 15/12/2016, T-212/15, Gourmet, EU:T:2016:746. However, it is to be pointed out that in the case referred to by the opponent the contested sign differed from the contested sign in the present case, so that the Opposition Division is of the view that the circumstances are different, thus justifying the different outcome in the case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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

Eva Inés PÉREZ SANTONJA

Denitza STOYANOVA-VALCHANOVA

Renata COTTRELL

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.