OPPOSITION No B 2 996 125

Albert Kerbl GmbH, Felizenzell 9, 84428 Buchbach, Germany (opponent), represented by Kalkoff & Partner Patentanwälte, Martin-Schmeisser-Weg 3a-3b, 44227 Dortmund, Germany (professional representative)

a g a i n s t

Jorge Ortega de la Cruz, Calle Comunidad de Madrid 49, Chalet 25, Boadilla del Monte, 28669 Madrid, Spain (applicant).

On 24/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 996 125 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 116 708 for the figurative mark , namely against all the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 7 554 256 for the word mark ‘Delizia’. 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 3: Grooming preparations for horses, cooling gels, skin sprays and blue sprays, skin ointments, hoof grease, hoof ointment, beechwood tar, sprays for imparting sheen to the mane, tail and hide, shampoos and washing lotions, cosmetics, hair lotions; dentifrices; cleaning and care preparations for leather articles for riding.

Class 31: Dietetic substances, supplements, and single and mixed animal foodstuffs for horses.

The contested goods are the following:

Class 29: Oils and fats; Meats; Processed fruits, fungi and vegetables (including nuts and pulses); Birds eggs and egg products; Prepared insects and larvae; Fish, seafood and molluscs; Dairy products and dairy substitutes; Soups and stocks, meat extracts; Sausage skins and imitations thereof.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice, ice creams, frozen yogurts and sorbets; Salts, seasonings, flavourings and condiments; Ready to eat savory snack foods made from maize meal formed by extrusion; Canned pasta foods; Extruded wheat snacks; Prepared foodstuffs in the form of sauces; Prepared savory foodstuffs made from potato flour; Snack foods made from corn; Snack foods made from wheat; Sesame snacks; Snack foods consisting principally of extruded cereals; Crisps made of cereals; Cereal snack foods flavoured with cheese; Puffed corn snacks; Cheese flavored puffed corn snacks; Tortilla snacks; Snack foods made from corn and in the form of puffs; Snack foods made from corn and in the form of rings; Snack foods made of whole wheat; Snack foods prepared from maize; Snack foods consisting principally of bread; Sweet rice with nuts and jujubes (yaksik); Stir-fried rice; Filled baguettes; Baozi [stuffed buns]; Chocolate-based ready-to-eat food bars; Pizza crust; Pizza bases; Bibimbap [rice mixed with vegetables and beef]; Sandwiches containing minced beef; Sandwiches containing fish; Sandwiches containing meat; Sandwiches containing salad; Sandwiches containing fish fillet; Filled bread rolls; Chinese steamed dumplings (shumai, cooked); Rice dumplings; Puffed cheese balls [corn snacks]; Steamed buns stuffed with minced meat (niku-manjuh); Bean jam buns; Brioches; Burritos; Rice dumplings dressed with sweet bean jam (ankoro); Shrimp dumplings; Pineapple fritters; Banana fritters; Calzones; Canapes; Chalupas; Chimichanga; Wonton chips; Tortilla chips; Chow mein [noodle-based dishes]; Chow mein; Prepared pizza meals; Boxed lunches consisting of rice, with added meat, fish or vegetables; Rice-based prepared meals; Noodle-based prepared meals; Pasta-based prepared meals; Prepared meals in the form of pizzas; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Prepared meals containing [principally] pasta; Meals consisting primarily of rice; Meals consisting primarily of pasta; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Chips [cereal products]; Crepes; Pancakes; Crumble; Meat pies [prepared]; Poultry and game meat pies; Pork pies; Frozen pastry stuffed with meat; Frozen pastry stuffed with meat and vegetables; Frozen pastry stuffed with vegetables; Egg pies; Vegetable pies; Pies [sweet or savoury]; Fresh pies; Pies containing poultry; Pies containing meat; Pies containing game; Pies containing fish; Pies containing vegetables; Pot pies; Chinese stuffed dumplings (gyoza, cooked); Pastries consisting of vegetables and meat; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and fish; Enchiladas; Rice salad; Macaroni salad; Pasta salad; Canned spaghetti in tomato sauce; Spaghetti and meatballs; Fajitas; Corn chips; Pumpkin porridge (Hobak-juk); Rice biscuits; Pellet-shaped rice crackers (arare); Stir fried rice cake [topokki]; Onion biscuits; Soft pretzels; Crackers flavoured with meat; Crackers flavoured with spices; Crackers flavoured with herbs; Crackers flavoured with cheese; Crackers flavoured with vegetables; Rice crackers; Rice crackers [senbei]; Crackers made of prepared cereals; Crackers filled with cheese; Gimbap [Korean rice dish]; Corn kernels being toasted; Hamburgers being cooked and contained in a bread roll; Cheeseburgers [sandwiches]; Hamburgers contained in bread rolls; Buckwheat jelly (Memilmuk); Jiaozi [stuffed dumplings]; Lasagne; Macaroni with cheese; Flaky pastry containing ham; Empanadas; Pre-baked pizzas crusts; Fried corn; Processed unpopped popcorn; Corn, roasted; Nachos; Okonomiyaki [Japanese savoury pancakes]; Popcorn; Flavoured popcorn; Candy coated popcorn; Caramel coated popcorn; Microwave popcorn; Caramel coated popcorn with candied nuts; Prawn crackers; Kimchi pancakes (kimchijeon); Mung bean pancakes (bindaetteok); Pasta containing stuffings; Glutinous pounded rice cake coated with bean powder (injeolmi); Korean traditional rice cake [injeolmi]; Sticky rice cakes (Chapsalttock); Meat pies; Millet cakes; Mincemeat pies; Savory pastries; Rice cakes; Flapjacks; Seaweed flavoured corn chips; Rice crisps; Vegetable flavoured corn chips; Wholewheat crisps; Grain-based chips; Hot dog sandwiches; Hot dogs (prepared); Frozen pizzas; Fresh pizza; Pizzas; Pizzas [prepared]; Preserved pizzas; Uncooked pizzas; Chilled pizzas; Rice based dishes; Prepared rice dishes; Pasta dishes; Freeze-dried dishes with main ingredient being rice; Freeze-dried dishes with main ingredient being pasta; Ready-made dishes containing pasta; Prepared meals containing [principally] rice; Dry and liquid ready-to-serve meals, mainly consisting of rice; Pretzels; Snack food products made from cereal flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack food products made from cereal starch; Snack food products made from rusk flour; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products consisting of cereal products; Quesadillas; Quiches; Ramen [Japanese noodle-based dish]; Ravioli [prepared]; Ravioli; Rice-based snack food; Cereal-based snack food; Risotto; Cheese curls [snacks]; Egg rolls; Spring rolls; Fresh sausage rolls; Sausage rolls; Hot sausage and ketchup in cut open bread rolls; Samosas; Sushi; Toasted cheese sandwich; Toasted cheese sandwich with ham; Sandwiches; Sandwiches containing chicken; Frankfurter sandwiches; Toasted sandwiches; Tabbouleh; Taco chips; Tacos; Stir-fried noodles with vegetables (Japchae); Tamales; Pies; Snacks manufactured from muesli; Tortillas; Chocolate-coated rice cakes; Green onion pancake [pajeon]; French toast; Wontons; Wraps [sandwich]; Cereal bars and energy bars; Sweets (candy), candy bars and chewing gum; Bread; Pastries, cakes, tarts and biscuits (cookies); Cotton candy; Foods with a cocoa base; Foodstuffs containing chocolate [as the main constituent]; Foodstuffs containing cocoa [as the main constituent]; Almonds covered in chocolate; Snack foods consisting principally of confectionery; Chocolate flavourings; Rice pudding; Confectionery items coated with chocolate; Candy; Wafered pralines; Chocolate waffles; Bars of sweet jellied bean paste (Yohkan); Chocolate coated nougat bars; Viennoiserie; Fruited scones; Jam buns; Chocolates; Liqueur chocolates; Apple fritters; Liquorice flavoured confectionery; Mint flavoured confectionery (Non-medicated -); Chocolate flavoured confectionery; Confectionery having liquid spirit fillings; Confectionery having liquid fruit fillings; Confectionery having wine fillings; Confectionery containing jelly; Sweetmeats [candy]; Chocolate; Chocolate with alcohol; Chocolate with Japanese horseradish; Imitation chocolate; Non-medicated chocolate; Chocolate for toppings; Chocolate for confectionery and bread; Aerated chocolate; Ginseng confectionery; Orange based confectionery; Flavoured sugar confectionery; Low-carbohydrate confectionery; Nut confectionery; Non-medicated flour confectionery containing chocolate; Non-medicated flour confectionery containing imitation chocolate; Non-medicated flour confectionery coated with imitation chocolate; Non-medicated flour confectionery coated with chocolate; Confectionery in frozen form; Frozen confectionery containing ice cream; Chocolate confectionery having a praline flavour; Non-medicated chocolate confectionery; Chocolate confectionery containing pralines; Non-medicated flour confectionery; Ice confectionery; Non-medicated mint confectionery; Non-medicated confectionery in jelly form; Confectionery in liquid form; Dairy confectionery; Non-medicated confectionery in the shape of eggs; Non-medicated confectionery having toffee fillings; Non-medicated confectionery having a milk flavour; Non-medicated confectionery for use as part of a calorie controlled diet; Non-medicated confectionery containing chocolate; Non-medicated confectionery containing milk; Confectionery containing jam; Chocolate bark containing ground coffee beans; Creamed rice; Custard; Cocoa based creams in the form of spreads; Chocolate creams; Chocolate spreads; Peanut brittle; Croissants; Decorations [edible] for christmas trees; Chocolate decorations for confectionery items; Chocolate decorations for cakes; Chocolate decorations for christmas trees; Turkish delight; Turkish delight coated in chocolate; Confectionery; Boiled confectionery; Frozen dairy confections; Panned sweets (Non-medicated -); Frozen confections on a stick; Korean traditional sweets and cookies [hankwa]; Frozen yogurt pies; Chocolate vermicelli; Crème caramel; Chocolate fondue; Chocolate coated fruits; Chocolate-coated nuts; Cheese-flavored biscuits; Salt crackers; Confectionery chips for baking; Salted biscuits; Crackers; Crackers flavoured with fruit; Savory biscuits; Salted wafer biscuits; Waffles; Waffles with a chocolate coating; Graham crackers; Sugar-coated coffee beans; Halvah; Potato flour confectionery; Confectionery ices; Cocoa-based ingredients for confectionery products; Floating islands; Marzipan; Chocolate marzipan; Meringues; Sweet bean jam coated with sugared-bean based soft shell [nerikiri]; Kheer mix (rice pudding); Chocolate mousses; Mousse confections; Dessert mousses [confectionery]; Custards [baked desserts]; Chocolate coated macadamia nuts; Coated nuts [confectionery]; Pandoro; Cinnamon rolls; Panettone; Edible paper; Edible rice paper; Fruit jellies [confectionery]; Biscotti dough; Sandwich spread made from chocolate and nuts; Chocolate-based spreads; Chocolate spreads containing nuts; Dried sugared cakes of rice flour (rakugan); Sweet pounded rice cakes (mochi-gashi); Cakes of sugar-bounded millet or popped rice (okoshi); Soft pin-rolled cakes of pounded rice (gyuhi); Japanese sponge cakes (kasutera); Sopapillas [fried pastries]; Pavlovas made with hazelnuts; Butterscotch chips; Poppadums; Muesli desserts; Rice-based pudding dessert; Prepared desserts [chocolate based]; Prepared desserts [confectionery]; Preparations for making of sugar confectionery; Chocolate based products; Chocolate spreads for use on bread; Vla [custard]; Almond confectionery; Peanut confectionery; Peanut butter confectionery chips; Non-medicated confectionery products; Confectionery for decorating Christmas trees; Bakery goods; Bread pudding; Puddings; Yorkshire puddings; Rice puddings containing sultanas and nutmeg; Ready-to-eat puddings; Instant dessert puddings; Semolina pudding; Marshmallow topping; Chocolate topping; Sopapillas [fried bread]; Dessert souffles; Imitation custard; Marzipan substitutes; Tablet (confectionary); Tiramisu; Fried dough twists; Truffles (rum -) [confectionery]; Truffles [confectionery]; Nougat.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 29

In the present case, the contested oils and fats; meats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; prepared insects and larvae; fish, seafood and molluscs; dairy products and dairy substitutes; soups and stocks, meat extracts; sausage skins and imitations thereof are dissimilar to the opponent’s goods in Class 31, namely dietetic substances, supplements, and single and mixed animal foodstuffs for horses.

All of the opponent’s goods in Class 31 are meant for horses, while the contested goods in Class 29 are, in contrast, foodstuffs for human consumption. Even considering that foodstuffs for horses can be or contain the human foodstuffs that are included in the contested list of goods, such as processed fruits, fungi and vegetables, as pointed out by the opponent in its observations, the contested food products are still intended for human consumption, and are, therefore, different in nature and intended purpose from the opponent’s goods, which are food for horses.

Furthermore, the goods in question are neither in competition nor complementary. Moreover, foodstuffs for horses and their additives are not sold in the same stores as foodstuffs for humans. As regards the producers of the goods, it is not common on the market for producers of foodstuffs for animals to also produce foodstuffs for people and vice versa.

The opponent’s grooming preparations for horses, cooling gels, skin sprays and blue sprays, skin ointments, hoof grease, hoof ointment, beechwood tar, sprays for imparting sheen to the mane, tail and hide, shampoos and washing lotions, cosmetics, hair lotions; dentifrices; cleaning and care preparations for leather articles for riding in Class 3 are mainly cosmetics, grooming preparations for horses and cleaning and care preparations for equestrian equipment and have nothing relevant in common with the contested goods in Class 29, which are foodstuffs for humans. They completely differ in their natures, intended purposes and methods of use. These goods are neither in competition with each other nor in any way complementary. Furthermore, it is clear that these categories of goods relate to different sectors of industry, and they are therefore manufactures by different producers and sold through different distribution channels. Consequently, the contested goods in Class 29 are also considered dissimilar to all of the opponent’s goods in Class 3.

Contested goods in Class 30

The contested goods in Class 30 are various foodstuffs for human consumption. Their nature, purpose and method of use are different from those of all of the opponent’s goods in Class 3, which include cosmetics, grooming preparations for horses and cleaning and care preparations for equestrian equipment. Moreover, these goods are not complementary or in competition with each other. Furthermore, while the contested foodstuffs are produced by the food industry, the opponent’s goods are offered by cosmetics companies or other companies that manufacture equestrian equipment. Moreover, it is not common for these goods to be offered through the same retail channels. Consequently, they are considered dissimilar to the opponent’s goods in Class 3.

In the comparison of the contested goods in Class 30 with the opponent’s goods in Class 31, the same line of reasoning as asserted previously in relation to the contested foodstuffs in Class 29 applies, as the contested goods in Class 30 are also foodstuffs for human consumption.

In its observations, the opponent argues that some of the contested goods, such as processed grains and other cereal-based foodstuffs, may be offered as the sole feed for horses or as ingredients of mixed feed in the form of flakes, muesli bars, etc. In support of its arguments, several printouts relating to the content of horse feed were submitted.

However, the fact remains that the contested goods in Class 30 are not intended for feeding horses and are sold in portions adapted for human needs and are, moreover, sold through distribution channels for human food, such as supermarkets, which are different from the channels through which horse feed is distributed. Therefore, the contested goods and the opponent’s goods differ in their purposes and methods of use. Furthermore, the goods in question are not complementary to or in competition with each other, as the average consumer would not go to a horse feed provider to purchase cereal-based products for her or his own consumption and vice versa. As regards the producers of the goods, it is not common on the market for producers of foodstuffs for animals to produce foodstuffs for people and vice versa.

Therefore, these contested goods are also found to be dissimilar to all of the opponent’s goods in Class 31.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Tu Nhi VAN

Martin EBERL

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.