OPPOSITION No B 2 928 029

Ice Cream Factory Comaker, S.A., Avenida Vicente Vidal, s/n, 46600 Alzira (Valencia), Spain (opponent), represented by Garrigues IP, S.L.P, C/ San Fernando 57, 03001 Alicante, Spain (professional representative)

a g a i n s t

Harana Holdings (Cyprus) Ltd, Fortuna Court, Block B, 2nd Floor, 3105 Limassol, Cyprus (applicant), represented by Meyerlustenberger Lachenal, 222 Avenue Louise, 1050 Brussels, Belgium (professional representative).

On 04/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 928 029 is upheld for all the contested goods.

2. European Union trade mark application No 16 737 819 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 737 819 ‘ORIGINS’ namely goods in Class 30. The opposition is based on European Union trade mark registration No 10 842 251 ‘ORIGINS’. 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

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

Class 30: Ices, sorbets (non-alcoholic) and chocolates.

The contested goods are the following:

Class 30: Chocolate, cocoa, chocolate candies, prepared cocoa beverages.

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.

The contested chocolate is identically contained in the opponent’s list of goods (albeit in the plural).

The contested chocolate candies are included in the opponent’s broad category of chocolates. Therefore, they are identical.

The contested cocoa, prepared cocoa beverages are similar to the opponent’s chocolates, since they have the same nature, distribution channels, relevant public and producers.

2. The signs

ORIGINS	ORIGINS
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods, namely chocolate and chocolate candies.

The remaining contested goods are similar to those covered by the earlier mark. Given the identity between the signs, there is likelihood of confusion for the relevant public within the meaning of Article 8(1)(b) EUTMR.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 842 251. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Paloma PERTUSA MARTÍNEZ

Zuzanna STOJKOWICZ

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.