OPPOSITION No B 3 002 915

Dockhorn & Co. Import-Export GmbH, Alsterdorfer Str. 247, 22297, Hamburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354, Hamburg, Germany (professional representative)

a g a i n s t

Hangzhou Mulian Asset Management Co. Ltd., Room 543 Floor 5th Building 2-D Binan Road 688 Changhe Street Binjiang District Hangzhou Zhejiang, Hangzhou, China (applicant), represented by D'Agostini Organizzazione S.L., San Telmo 7, 03002 Alicante, Spain (professional representative).

On 10/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 915 is upheld for all the contested goods, namely:

Class 29: Prepared nuts.

2. European Union trade mark application No 17 098 716 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 098 716, . The opposition is based on European Union trade mark registration No 3 549 821, ‘LUCKY JOE’. 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 29: Peanut creams.

The contested goods are the following:

Class 29: Prepared nuts.

The contested prepared nuts include, as a broader category, or overlap with the opponent’s peanuts creams. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 will be average.

3. The signs

LUCKY JOE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘LUCKY’ present in the marks has a meaning in English. However, this word is meaningless in other parts of the relevant territory, i.e. those countries where English is not understood. For reasons of procedural economy, the Opposition Division will focus the analysis of the marks on the part of the public that will not understand the word ‘LUCKY’. This element is distinctive to a normal degree for the relevant goods.

The earlier mark also includes the word ‘JOE’ that will be associated by the public under analysis with a male name, and is also distinctive. The contested sign includes a figurative element consisting of the depiction of a bird wearing clothes and chopsticks in its hand. The verbal element ‘LUCKY’ is written on a ribbon. These elements are distinctive for the goods.

However, when signs consist of both verbal and figurative components, in principle, 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).

There are no dominant elements (visually outstanding) in the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the element ‘LUCKY’ which appears in a prominent position at the beginning of the earlier mark and is the only verbal element of the contested sign, where it appears in upper standard typeface. They differ in the remaining elements, ‘JOE’ of the earlier mark and the figurative elements and graphic features of the contested sign

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the territory under analysis, the pronunciation of the signs coincides in the sound of the letters ‘LUCKY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘JOE’ of the earlier mark, which have no counterpart in the contested mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are conceptually not 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 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, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods have been found to be identical. The marks are visually and aurally similar to an average and high degree respectively. Their differences are confined to elements that play a secondary role in the sign or which have less impact in consumers and will not attract primarily their attention.

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).

Furthermore, 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/services covered are from the same or economically linked undertakings.

In the present case, it is highly conceivable that consumers believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to products that are identical to those protected by the trade mark. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (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 non-English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 549 821. 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

Anna BAKALARZ

Begoña URIARTE VALIENTE

María del Carmen COBOS PALOMO

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.