OPPOSITION No B 3 001 099

Cafes Candelas S.L., C/ Poligono Industrial Ceao, rua Dos Transportes nº 7, Lugo 27003, Spain (opponent), represented by Alberto Álvarez Flores, Avenida Coruña 39 - 42 Entl., Lugo 27003, Spain (professional representative)

a g a i n s t

Seleggt GmbH, Stolberger Str. 76, Cologne 50933, Germany (applicant), represented by Matthias Humborg, Domstr. 20, Cologne 50668, Germany (employee representative).

On 19/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 099 is partially upheld, namely for the following contested goods:

Class 29: Processed eggs; spreads consisting mainly of eggs; non-alcoholic eggnog.

Class 30: Pasta containing eggs; egg roll cookies; egg tarts; custard.

2. European Union trade mark application No 17 132 201 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 29: Eggs.

Class 33: Alcoholic egg nog.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 132 201 for the word mark ‘Seleggted’. The opposition is based on European Union trade mark registration No 12 789 459 for the figurative mark . 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 and services

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

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; baked goods, confectionary, chocolate and desserts.

Class 39: Distribution by pipeline and cable; packaging and storage of goods; transport; vehicle parking and towing.

Class 43: Animal boarding; rental of furniture, linens and table settings; provision of food and drink; temporary accommodation.

The contested goods are the following:

Class 29: Eggs; processed eggs; non-alcoholic eggnog; spreads consisting mainly of eggs.

Class 30: Pasta containing eggs; egg roll cookies; egg tarts; custard.

Class 33: Alcoholic egg nog.

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

The contested processed eggs; spreads consisting mainly of eggs are processed products that may be in competition with the opponent’s goods made of processed grains, since the latter include vegetable or seed-based pates and spreads. These goods can usually be found in the same section of shops, target a shared public and can be produced by the same kinds of undertakings. Therefore, they are similar.

The contested non-alcoholic eggnog is a sweetened, thick drink made from milk, sugar and eggs. The earlier mark is protected for desserts, which includes milk-based desserts. The contested goods are sold in the same section of supermarkets as other dairy dessert products belonging to Class 30. Therefore, these goods can target the same public, be in competition and be produced by the same market operators as the opponent’s desserts in Class 30. Therefore, they are similar.

The contested eggs can be used in a variety of products, including the opponent’s baked goods, confectionary, chocolate and desserts in Class 30. However, these goods would be used as ingredients in the production of the opponent’s end products, either by being added to the raw batter or brushed on the goods prior to being baked, meaning the contested goods are not in competition with the opponent’s finished baked goods, confectionary, chocolate and deserts. Even in the case of desserts containing the contested eggs in their raw state, such as the Italian dessert Zabaglione, the contested goods necessarily undergo a process of some sort to get from raw eggs to a finished product apt for human consumption. Establishments which usually sell the opponent’s baked goods, confectionary, chocolate and desserts (such as bakeries and specialist shops) rarely sell the contested eggs alongside the former; therefore, these goods do not coincide in habitual commercial channels. The usual producers of the contested eggs (such as industrial poultry farms) are not known amongst consumers as the usual providers of the opponent’s baked goods, confectionary, chocolate and desserts. Therefore, they are dissimilar.

The contested eggs are also dissimilar to the opponent’s sweet coatings in Class 30, as even in the case of raw egg being brushed onto baked goods prior to baking, eggs are not sweet in nature and would at most serve the purpose of giving a golden appearance to the goods once cooked, rather than for adding sweetness. Thus the goods differ in nature, purpose, methods of use, relevant public, usual providers and habitual commercial channels. Therefore, these goods are dissimilar.

These contested eggs are equally dissimilar to the rest of the opponent’s goods in Class 30 (covering sugars, teas, coffees, processed grains and yeasts), distribution, packaging and transport services in Class 39 and to the animal boarding, rental and accommodation services in Class 43. The contested goods differ in nature, purpose, methods of use, distribution channels, usual producers/providers and relevant publics. Although the opponent trade mark registration covers provision of food and drink services in Class 43, the contested eggs cannot be deemed similar to said services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, as the contested goods are not final products that are usually served in establishments providing food and drink, meaning these goods further differ in usual providers and distribution channels.

Contested goods in Class 30

The contested egg roll cookies; egg tarts; custard in Class 30 are included in, or overlap with, the earlier broad category baked goods and desserts in Class 30. Therefore, they are identical.

The contested pasta containing eggs in Class 30 is at least similar to the earlier baked goods in Class 30, because they can coincide in nature, producers, distribution channels and relevant public.

Contested goods in Class 33

Alcoholic beverages are sold in separate sections of shops and the companies producing them usually differ from those producing desserts and other foodstuffs. It follows that the contested alcoholic egg nog is dissimilar to the opponent’s desserts in Class 30 and provision of food and drink in Class 43. There mere fact that food and drinks are consumed in a restaurant is not a sufficient reason to find similarity between them (09/03/2005, T-33, Hai, EU:T:2005:89, § 45 and R 1976/2010-4, THAI SPA / SPA et al. § 24-26). Therefore, the fact that alcoholic eggnog is a drink does not, in and of itself, lead consumers to think that the responsibility for the production of these goods lies with the same undertaking providing food and drink services.

Alcoholic egg nog is equally dissimilar in nature, purpose, methods of use, usual providers, distribution channels and relevant public to all the opponent’s goods in Class 30 (including sugars, coffee, teas, processed grains, yeasts and baked goods), Class 39 (relating to pipeline and cable distribution services, packing, storage and transport of goods and vehicle parking and towing) and the remaining services covered by Class 43 (animal boarding, rental of furniture and table linens and temporary accommodation). There is no reason why the average consumer would consider there was a link between the undertakings responsible for the opponent’s and the contested 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 and similar to various degrees are directed at the public at large.

As the contested goods are average food items, the public’s degree of attention will be average.

3. The signs

	‘Seleggted’
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 elements ‘SELECTUM’ and ‘Seleggted’ are meaningless for a relevant part of the public. The Opposition Division considers that this increases the likelihood of confusion between the signs and, consequently, finds it appropriate to limit the comparison of the signs to the aforementioned part of the public for which the verbal elements at issue convey no concept, such as the Bulgarian-speaking public.

The earlier sign is composed of the verbal element ‘SELECTUM’, written in black with standard, non-distinctive stylisation and a figurative element resembling a flame contained in a black label-like square. The verbal element ‘SELECTUM’ is not descriptive or otherwise allusive of the goods as it is meaningless for the relevant public, rendering it distinctive.

It must be borne in mind that when signs are composed of figurative and verbal elements, the verbal element 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). Whilst the graphical device of the earlier sign is a fanciful element per se, within the sign considered as a whole it performs an essentially ornamental role vis-à-vis the verbal element ‘SELECTUM’; therefore, as expressed by the aforementioned principle, when encountering the earlier mark on the marketplace, the public will afford less trade mark significance to its figurative features, owing to the common usage of label-like shapes on the market which fail to fulfil a trade mark function. Consequently, the public will instantly afford the value of main indicator of commercial origin within the sign to its verbal element, ‘SELECTUM’.

The contested sign is formed of a sole verbal element, ‘Seleggted’. In the case of word marks, it is the word as such that is protected and not its written form, therefore, their representation in upper or lower cases letters is irrelevant. Additionally, as a word mark, the earlier sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

The term ‘Seleggted’ is meaningless for the relevant public and bears no relationship to the goods at issue, rendering it distinctive.

Visually, the signs coincide in the letters ‘SELE**T**’. Rather significantly, 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. It follows that the signs’ overlap in the initial part of their distinctive verbal elements, coinciding in an identical string of letters, will impact the consumers’ perception of both marks more than the subsequent differing letters.

After the signs initial shared beginnings, they differ in the letter ‘C’ in the earlier mark and the corresponding letters ‘GG’ in the contested sign. These differing letters occur in the middle of the signs, where they could easily be overlooked or go unnoticed by consumers, who will pay more attention to the beginning of the signs, as previously explained. Although the signs also differ in their final two letters, in both instances they share the letter preceding ‘T’, which adds to the overall similarity between the signs.

Although the earlier sign features a graphic flame-like element which has no counterpart it the contested word mark, as previously explored, its impact is reduced given its ornamental role within in the sign, which is overshadowed by the sign’s distinctive verbal element, ‘SELECTUM’, to which consumers will afford more trade mark significance. In addition, the verbal elements at issue, which are fully distinctive in relation to the relevant goods, have a highly similar length (eight vs nine letters).

Therefore, considering all the above, the signs are deemed visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the initial four letters ‛SELE’, present identically in both signs. As previously mentioned, the beginnings of signs have a bigger impact on consumers, as this is the part of the sign they will first perceive. In addition, the sound of the subsequent letters ‘C’ in the earlier and ‘GG’ in the contested signs respectively only differ slightly in their pronunciation for the relevant public, meaning the signs nearly fully coincide in the sound of their first two syllables, ‘SE-LEC-TUM’ vs. ‘SE-LEG-TED’. Furthermore, the third and final syllable in both marks begins with the same consonant, ‘T’, which also adds to the similarity between the distinctive verbal elements of the signs. In total, the signs both present three syllables of identical proportions, with highly similar rhythms and vowel sequences, in addition to sharing five letters, most of which appear at the beginning of the signs.

Therefore, the signs are considered aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The figurative element of the earlier mark may evoke the concept of a flame and, to that extent, the signs are not conceptually similar, since the other mark conveys no meaning at all; nonetheless, this aspect should not be over-emphasised because, as previously explored, the attention of the relevant public when faced with the earlier mark will be attracted significantly more by the distinctive verbal element of the sign, which has no meaning. Therefore, the semantic content of the figurative device of the earlier mark will have a reduced impact for the consumers, compared to the fact that the main indicators of commercial origin at issue, ‘SELECTUM’ vs ‘SELEGGTED’, are both completely meaningless.

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 contested goods have been found identical, similar, at least similar and dissimilar to those of the opponent. They are directed at the general public, who will exhibit an average degree of attention. The earlier mark has an average degree of distinctiveness.

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).

The signs have been found visually similar to an average degree and aurally highly similar. They overlap in the initial four letters ‘SELE-’ of their distinctive verbal elements; this will mark the consumers’ perception of the signs significantly, as they tend to pay more attention to the beginning of marks, as previously explored. These letters will be pronounced identically and it must be borne in mind that the phonetic difference between the subsequent letters ‘C’ and ‘GG’ (in the earlier and contested sign respectively), which appear in the middle of the signs, is only slight; in this sense, the signs nearly overlap in the sound of their first two syllables. Furthermore, the third and final syllable in both signs starts with the shared consonant ‘T’, further reinforcing the highly similar rhythms and visual commonalities between the signs.

As explored above, the distinctive verbal elements of both marks will make a stronger impact on the consumer than the figurative component of the earlier sign. Therefore, although the earlier mark may convey the concept of a flame via its graphical element, the figurative device serves a more ornamental role within the sign. It follows that the public will be more drawn to the distinctive verbal elements ‘SELECTUM’ and ‘seleggted’, which are devoid of meaning for the relevant public and do not describe or allude to the goods, rendering these elements distinctive.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, in relation to the identical, similar and at least similar goods at issue, on the part of the Bulgarian-speaking part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 789 459. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to any degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ewelina SLIWINSKA

Gueorgui IVANOV

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.