OPPOSITION No B 3 026 351

S.C. Mert S.A., Sos. Bucuresti Urziceni 50A, Afumati, jud. Ilfov, Romania (opponent), represented by Ruxandra Raluca Ardeleanu, Str. Baia de Arama nr. 1, bloc B, tronson 3, etaj 6, ap. 117, sector 2, 022204 Bucharest, Romania (professional representative)

a g a i n s t

Tatlisumaklar Gida Maddeleri Pazarlama Ticaret Ve Sanayi Anonim Sirketi, Büyük Kayacik Mah. Kon. Organize San. Bölgesi 13. Sokak Nº 17, Selçuklu, Konya, Turkey (applicant), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez 3 – piso 3, 28001 Madrid, Spain (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 026 351 is upheld for all the contested goods.

2. European Union trade mark application No 17 143 207 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 17 143 207 for the figurative mark . The opposition is based on Romanian trade mark registration No 135 018 for the word mark ‘MERT JOLITA’. 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.

a) The goods and services

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

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (we request protection for entire list of products included in this class, according to Nice classification).

Class 35: Advertising; business management; business administration; office functions, all this services being made only in relation with products from Class 30.

The contested goods are the following:

Class 30: Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pasta, stuffed dumplings, noodles; pastries and bakery products based on flour; desserts based on flour and chocolate; bread, simit [turkish ring-shaped bagel covered with sesame seeds], pogaça [turkish bagel], pita, sandwiches, katmer [turkish pastry], pies, cakes, baklava [turkish dessert based on dough coated with syrup], kadayif [turkish dessert based on dough]; desserts based on dough coated with syrup; puddings, custard, kazandibi [turkish pudding], rice pudding, keskül [turkish pudding]; honey, bee glue for human consumption, propolis for food purposes; condiments for foodstuff, vanilla (flavoring), spices, sauces (condiments), tomato sauce; yeast, baking powder; flour, semolina, starch for food; sugar, cube sugar, powdered sugar; tea, ice tea; confectionery, chocolate, biscuits, crackers, wafers, cones for ice cream, edible food cups; chewing gums; ice-cream, edible ices; salt; cereal-based snack food, popcorn, crushed oats, corn chips, breakfast cereals, processed wheat for human consumption, crushed barley for human consumption, processed oats for human consumption, processed rye for human consumption, rice; molasses for food; candy and sweets, fruit jelly candy, jellies and fruit jellies [confectionery], dried pieces of agar jelly (kanten).

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.

Coffee, cocoa; pastries; bread, honey, spices, sauces (condiments), yeast, baking powder; flour, sugar, tea, confectionery, ice-cream, edible ices; salt; rice are identically contained in both lists of goods (including synonyms and plurals).

The contested coffee based beverages are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested cocoa based beverages, chocolate based beverages are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested desserts based on flour and chocolate; katmer [Turkish pastry], pies, cakes, baklava [Turkish dessert based on dough coated with syrup], kadayif [Turkish dessert based on dough]; desserts based on dough coated with syrup; puddings, custard, kazandibi [Turkish pudding], rice pudding, keskül [Turkish pudding] are at least similar, if not identical to the opponent’s pastry as they can be in competition, have the same distribution channels and target the same public.

Condiments for foodstuff include, as a broader category the opponent’s sauces (condiments). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested tomato sauce is included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested starch for food includes, as a broader category, the opponent’s tapioca. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cube sugar, powdered sugar are included in the broad category of the opponent’s sugar. Therefore, they are identical.

The contested candy and sweets, fruit jelly candy, jellies and fruit jellies [confectionery], dried pieces of agar jelly (kanten) are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested ice tea is included in the broad category of the opponent’s tea. Therefore, they are identical.

The contested pasta, stuffed dumplings, noodles; bakery products based on flour; simit [Turkish ring-shaped bagel covered with sesame seeds], pogaça [Turkish bagel], pita, sandwiches; bee glue for human consumption; propolis for food purposes; vanilla (flavoring); semolina; chocolate, biscuits, crackers; wafers; cones for ice cream, edible food cups; chewing gums; cereal-based snack food, popcorn; crushed oats, corn chips, breakfast cereals, processed wheat for human consumption, crushed barley for human consumption, processed oats for human consumption, processed rye for human consumption; molasses for food are at least similar, if not identical, to the opponent’s preparations made from cereals; honey; sugar; spices or confectionery. The contested goods are, at least, produced by the same companies, target the same end user and are sold through the same channels of distribution, even if it cannot be excluded that some may coincide in additional criteria such as their purpose, their complementarity, and whether they are competing goods, and that they may even be identical.

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 or similar are directed at the public at large.

The degree of attention is average.

c) The signs

MERT JOLITA
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 elements ‘MERT’ of the earlier mark and ‘JOLITA’ present in both signs have no meaning for the relevant public and are, therefore, distinctive.

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).

Visually, the signs coincide in ‘JOLITA’ which forms the only verbal element of the contested mark and is fully included as an independent and distinctive element in the earlier mark. However, they differ in the verbal element ‘MERT’ of the earlier sign, which is equally distinctive, and in the graphic representation of the contested sign, which is, however, of lesser importance for the reasons explained above.

Although, as argued by the applicant, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the case must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛JOLITA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛MERT’ of the earlier sign which have no counterparts in the contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case the goods are partly identical and partly similar. They target the public at large, which possesses an average degree of attention. The earlier mark enjoys a normal level of distinctiveness.

The signs are visually and aurally similar to an average degree on account of the element ‘JOLITA’ which constitutes the only verbal element of the contested mark and which is a clearly perceptible element of the earlier sign, where it plays a distinctive and independent role. The conceptual aspect does not influence the comparison of the signs. Overall, the differences consisting of the additional verbal element and the graphic representation of the contested sign are insufficient to counteract the similarities between the marks.

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 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 135 018. 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

Helen Louise MOSBACK

Katarzyna ZANIECKA

Begoña URIARTE VALIENTE

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.