OPPOSITION No B 2 999 897

Annabel Karmel Group Holdings Limited, 18A Pindock Mews, London, W9 2PY, United Kingdom (opponent), represented by Gill Jennings & Every LLP, The Broadgate Tower, 20 Primrose Street, London, EC2A 2ES, United Kingdom (professional representative)

a g a i n s t

Gago Biotechnology (HK) Co. Limited, 16/F, Kowloon Building, 555 Nathan Road, Mongkok, Kowloon, Hong Kong (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street, Walthamstow, London, E17 9AP, United Kingdom (professional representative).

On 30/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 999 897 is upheld for all the contested goods.

2. European Union trade mark application No 17 080 921 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 17 080 921 for the mark . The opposition is based on, inter alia, European Union trade mark registration No 15 856 974 for the mark . The opponent invoked Article 8(1)(a) and (b) and Article 8(4) and (5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 15 856 974.

1. The goods

The goods on which the opposition is based are, among others, the following:

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

The contested goods are the following:

Class 29: Jams; snack food (fruit-based -); crystallized fruits; apple puree; milk products; milk powder; fruit jellies; fruit, preserved; fruit pulp; potato snacks; fruit snacks; candied fruit snacks; tofu-based snacks; snacks of edible seaweed; dried fruit-based snacks.

The contested jams; milk products; fruit, preserved are identically contained in both lists of goods (including synonyms).

The contested snack food (fruit-based -); potato snacks; fruit snacks; candied fruit snacks; tofu-based snacks; snacks of edible seaweed; dried fruit-based snacks are included in the opponent’s prepared snacks. Therefore, they are identical.

The contested crystallized fruits; apple puree; fruit pulp are included in or overlap with the opponent’s preserved, frozen, dried, cooked or prepared fruits. Therefore, they are identical.

The contested milk powder is included the opponent’s category of milk products. Therefore, they are identical.

The contested fruit jellies are included in the opponent’s broader category of jellies. Therefore, they are identical.

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 to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs differ only in colour: the earlier mark is depicted in pink and green, whereas the contested mark is in two shades of grey. However, this difference is less memorable than the coinciding verbal elements and their design, since the public is used to seeing marks being used in both colour and black and white. It follows that the overall impression of the signs at issue can only be that they are visually highly similar.

The signs are aurally identical.

Conceptually, both marks contain the figurative element of an apple and the verbal element ‘Annabel Karmel’, which will be perceived in the relevant territory as a woman’s name. The letters ‘AK’ may be perceived as the woman’s initials. The marks are conceptually identical.

4. Global assessment, other arguments and conclusion

The goods are identical. The degree of attention is considered to be average.

The marks are visually highly similar and aurally and conceptually identical. In particular, the marks differ only in the colours of the earlier mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 and services covered are from the same or economically linked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.

In the present case, although the public in the relevant territory might detect that the signs are depicted in different colours, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a mere variation of the earlier mark, withthe only difference being the lack of colour. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as coming from the same undertaking (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, 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 European Union trade mark registration No 15 856 974. It follows that the contested sign must be rejected for all the contested goods.

As earlier European Union trade mark registration No 15 856 974 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 grounds of the opposition, namely Article 8(1)(a) and Article 8(4) and (5) 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

María del Carmen SUCH SÁNCHEZ

Francesca CANGERI SERRANO

María Clara IBÁÑEZ FIORILLO

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.