OPPOSITION No B 2 982 661

Oli-Art S.C.C.L, Complex La Caparrella, 97, 25192 Lleida, Spain (opponent), represented by Roper Patents, Dolors Almeda, 10, 08940 Cornella, Spain (professional representative)

a g a i n s t

Κοντοδημaσ Αθανασιοσ, Γραμμενιτσα Αρτασ, 47100 Αρτα, Greece (applicant), represented by Marinos Papadopoulos, 122 Vassilissis Sofias Ave, 11526 Athens, Greece (professional representative).

On 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 982 661 is upheld for all the contested goods.

2. European Union trade mark application No 17 032 509 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 032 509, for the figurative mark . The opposition is based on Spanish trade mark registration No 3 086 701 for the word mark ‘OLI-ART’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK ON ADMISSIBILITY

The applicant argues that the opponent failed to submit a clear and specific statement of grounds on which the opposition is based.

According to Article 2(2)(c) EUTMDR, the notice of opposition shall contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8 EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is ticked or if they are indicated in any of its annexes or supporting documents.

In the present case, by ticking the appropriate boxes in the notice of opposition, the opponent properly indicated that it based its opposition on the grounds set out in Article 8(1)(a) and (b) EUTMR, thus complying with the requirements of Article 2(2)(c) EUTMDR. Therefore, this argument of the applicant must be set aside.

PRELIMINARY REMARK ON SUBSTANTIATION

In its observations, the applicant argues that the opponent failed to substantiate earlier Spanish trade mark No 3 086 701, since it did not submit any evidence of the validity and scope protection of that earlier right.

For the purpose of substantiation, apart from providing physical evidence, in cases where evidence concerning the filing or registration of the earlier rights is accessible online from a source recognised by the Office, the opponent may instead formally declare to the Office that it relies on online evidence, and that this online evidence may take the place of any physical evidence.

In the present case, by ticking the appropriate box in the notice of opposition, the opponent made a formal declaration by which it asked the Office to access the necessary information about the earlier Spanish trade mark in TMview.

Considering that the Office was able to access the necessary information concerning the existence, validity and scope of protection of the earlier Spanish trade mark in TMview and, with specific reference to the English translation of the goods and services, in the notice of opposition, the Opposition Division considers that the opponent complied with the substantiation requirements of Article 7(2) and (4) EUTMDR. Therefore, this applicant’s argument must be set aside.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, Spanish trade mark No 3 086 701.

In the present case, the date of filing of the contested trade mark is 26/07/2017.

Earlier Spanish trade mark No 3 086 701 was registered on 19/11/2013.

Therefore, considering that, at the date of filing of the contested trade mark, the earlier mark had not been registered for more than five years, the request for proof of use is inadmissible.

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 and services

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

Class 29: Oils and fats.

Class 35: Retailing and wholesaling via global communications networks of goods relating to oils and fats.

The contested goods are the following:

Class 29: Oils and fats.

Oils and fats are identically contained in both lists of goods.

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 found to be identical are directed at the public at large. The degree of attention is average.

c) The signs

OLI-ART
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Although marks are perceived as a whole, consumers tend to break down verbal elements when they suggest clear meanings to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57) and/or when the sign itself is broken down visually into various parts (e.g. through the use of special characters, a hyphen or another punctuation mark).

In the present case, although ‘OLI-ART’ and ‘OLIART’, as a whole, do not have a meaning in Spanish, the relevant public is likely to dissect both the earlier mark and the verbal element of the contested sign into ‘OLI’ and ‘ART’, since they will be recognised as meaningful elements. Furthermore, these elements are separated by a hyphen in the earlier mark.

The applicant argues that ‘OLI’ will be perceived, in the earlier mark, as the past form of the verb ‘oler’ (‘to smell’ in Spanish). However, given the nature of the goods in question, it is reasonable to assume that this element will be associated by the relevant public with the concept of ‘oliva’ (i.e. ‘olive’) or ‘olivo’ (i.e. ‘olive tree’), both in the earlier mark and in the contested sign. This meaning may also be suggested, in the contested sign, by the figurative element, which, despite its stylisation, is likely to be perceived, at least by part of the relevant public, as depicting four olive tree leaves and olives in green. Given this, ‘OLI’ has to be considered a weak element, since it evokes or alludes to the nature or the ingredients of the goods in question.

The English word ‘ART’ will be understood, due to its close similarity to the equivalent Spanish word, ‘arte’. Although it carries a certain positive connotation, the element ‘ART’ is inherently distinctive to an average degree in relation to the goods in question, since its use in relation to edible oils and fats is not common and is likely to be perceived as an arbitrary exaggeration.

The figurative element of the contested sign, albeit introducing an allusive concept for at least a part of the relevant public, presents a significant degree of stylisation. Therefore, it has an average degree of inherent distinctiveness.

The contested sign has no element that can be considered clearly more dominant than the others.

Visually, the signs are similar to the extent that all six letters of the earlier word mark are identically reproduced in the verbal element of the contested sign, in the same order. However, the signs differ in the hyphen, ‘-’, in the earlier mark, which has no counterpart in the contested sign. The hyphen breaks the earlier mark visually into two separate verbal elements (‘OLI’ and ‘ART’), while the contested sign will be perceived visually as composed of one verbal element (‘OLIART’).

The signs also differ in the figurative element of the contested sign. However, when signs consist of both verbal and figurative components, as the contested sign does, 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).

Therefore, despite the differences, since the signs coincide in all the letters of their verbal elements, overall they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OLIART’. As, contrary to the applicant’s argument, the hyphen does not result in a difference in the pronunciation of the earlier mark, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark (‘OLI-ART’) and the verbal (‘OLIART’) and figurative elements of the contested sign. Regardless of the presence of the hyphen in the earlier mark, both signs will be perceived as referring to the concepts of ‘art’ and ‘olive’ or ‘olive tree’. The concept of ‘olive’ or ‘olive tree’ is reinforced in the contested sign by the figurative element, which will be perceived as a stylised depiction of four olive tree leaves and olives in green by at least a part of the relevant public. Therefore, the signs are conceptually at least highly similar.

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, contrary to the applicant’s view, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

In the present case, the goods are identical and target the public at large, which has an average degree of attention. The earlier mark has an average degree of inherent distinctiveness.

The signs are aurally identical and visually similar to an average degree. They are conceptually at least highly similar.

The signs’ similarities reside in the coinciding sequence of letters, ‘OLIART’, identically contained in the earlier mark and in the verbal element of the contested sign. Furthermore, both marks will be perceived by the relevant public as referring to, essentially, the same concepts, as stated above in section c) of this decision.

Moreover, the differences between the signs, namely the hyphen, ‘-’, in the earlier mark and the figurative element of the contested sign, would not allow consumers to safely distinguish between the earlier mark and the contested sign. The figurative element is neither striking nor dominant in comparison with the verbal element of the contested sign. Furthermore, as explained above, the verbal component of a sign usually has a stronger impact on the consumer than the figurative component.

In its observations, the applicant argues that the contested sign has been intensively used with the aim of enhancing its distinctiveness in its particular market sector in Greece and abroad. However, it is only the reputation or the enhanced distinctiveness of the earlier mark, and not that of the contested sign, which must be taken into account in assessing the likelihood of confusion (see, for example, C‑498/07, LA ESPAÑOLA / ACEITE DE OLIVA CARBONELL, EU:C:2009:503, § 84; 28/06/2012, T‑133/09, B. Antonio Basile 1952, EU:T:2012:327, § 18; 23/09/2014, T‑195/12, Nuna, EU:T:2014:804, § 102).

Likewise, in relation to the applicant’s arguments about the actual use in the market of the contested sign in connection with a protected geographical indication, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Considering all the above, the Opposition Division finds that the signs create similar overall impressions and that there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 086 701.

It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground on which the opposition is based, namely Article 8(1)(a) EUTMR.

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

Gueorgui IVANOV

Rosario GURRIERI

Jakub MROZOWSKI

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.