OPPOSITION No B 3 024 364

Européenne de Condiments, 7 rue Jean Moulin, 21160, Couchey, France (opponent), represented by Cabinet Fedit-Loriot, 38, avenue Hoche, 75008, Paris, France (professional representative)

a g a i n s t

Börner Distribution International GmbH, Industriegebiet Börner 1, 54526 Landscheid-Niederkail, Germany (applicant), represented by Jörg Wagner, Monaiser Str. 21, 54294 Trier, Germany (professional representative).

On 30/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 024 364 is partially upheld, namely for the following contested goods:

Class 30: Salts, seasonings, condiments; Savory sauces, chutneys and pastes; Achar pachranga (fruit pickle); Seaweed [condiment]; Angelica; Aniseed; Aniseeds for use as a seasoning; Flavoured vinegar; Flavourings in the form of dehydrated sauces; Flavourings in the form of concentrated sauces; Flavorings and seasonings; Baking spices; Beer vinegar; Mayonnaise-based spreads; Chemical seasonings [cooking]; Chili powders; Chili oil for use as a seasoning or condiment; Curry [spice]; Curry spice mixes; Curry mixes; Curry powder [spice]; Dashi-tsuyu; Pickled ginger [condiment]; Vinegar; Fish sauce; Minced garlic; Minced garlic [condiment]; Spice rubs; Ground pepper; Pepper powder [spice]; Hot pepper powder [spice]; Vegetable concentrates used for seasoning; Roasted and ground sesame seeds for use as a seasoning; Dried chili peppers seasoning; Dried coriander seeds for use as seasoning; Dried herbs; Dried coriander for use as seasoning; Dried chives; Dried fig-based condiment; Spices; Spice extracts; Condiments; Stew seasoning mixes; Sloppy joe seasoning mix; Seasoning mixes; Cloves [spice]; Spice preparations; Seasoned salt for cooking; Spiced salt; Seasoned breading mix for deep frying; Seasoned coating for meat, fish, poultry; Ginger [spice]; Japanese pepper powder spice (sansho powder); Japanese arrowroot powder (kudzu-ko, for food); Japanese horseradish powder spice (wasabi powder); Capers; Preserved chervil; Powdered garlic; Clove powder [spice]; Cooking salt; Garden herbs, preserved [seasonings]; Preserved ginger; Crab boil [seasoning]; Marinades containing herbs; Turmeric; Turmeric for use as a condiment; Caraway seeds for use as a seasoning; Mayonnaise with pickles; Flavourings of almond; Marinades; Mayonnaise and ketchup-based spreads; Horseradish [relishes]; Sea salt for cooking; Poppy seeds for use as a seasoning; Nutmeg; Fruit vinegar; Perilla powder for food; Pepper; Pepper vinegar; Pepper spice; Peppercorns; Peppermints [other than for medicinal use]; Vegetable-based seasonings for pasta; Peppers [seasonings]; Pimento used as a condiment; Pizza spices; Popcorn seasoning; Pickling salt for pickling foodstuffs; Relishes; Red pepper powder (Gochutgaru); Saffron [seasoning]; Saffron for use as a seasoning; Salad cream; Sage [seasoning]; Salt; Salt for popcorn; Sauces; Sauce [edible]; Preserved chives; Allspice; Celery salt; Mustard vinegar; Mustard preparations for food; Mustard powder [spice]; Mustard powder for food; Sesame seeds [seasonings]; Sichuan pepper powder; Sauces [condiments]; Sauces flavoured with nuts; Sauces containing nuts; Edible salt; Star aniseed; Sweet pickle [condiment]; Taco seasoning; Table salt; Table salt mixed with sesame seeds; Dry seasoning mixes for stews; Dry seasonings; Truffle salt; Vanilla; Vanilla beans; Processed herbs; Processed seeds for use as a seasoning; Processed shallots for use as seasoning; Processed garlic for use as seasoning; Processed ginseng used as a herb, spice or flavoring; Wasabi powder; Wine vinegar; Marinades containing seasonings; Seasonings; Alimentary seasonings; Spices in the form of powders;; Cinnamon [spice]; Cinnamon powder [spice]; Prepared horseradish [condiment].

2. European Union trade mark application No 17 158 221 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 158 221 namely, against some of the goods in Class 30. The opposition is based on French trade mark registration No 4 202 744 ‘BORNIER’. 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

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

Class 30: Salt; mustard; vinegar; sauces (condiments); spices.

The contested goods are the following:

Class 30: Salts, seasonings, condiments; Savory sauces, chutneys and pastes; Achar pachranga (fruit pickle); Seaweed [condiment]; Angelica; Aniseed; Aniseeds for use as a seasoning; Flavoured vinegar; Flavourings in the form of dehydrated sauces; Flavourings in the form of concentrated sauces; Flavorings and seasonings; Baking spices; Beer vinegar; Mayonnaise-based spreads; Chemical seasonings [cooking]; Chili powders; Chili oil for use as a seasoning or condiment; Curry [spice]; Curry spice mixes; Curry mixes; Curry powder [spice]; Dashi-tsuyu; Pickled ginger [condiment]; Edible essences for foodstuffs [other than etheric substances and essential oils]; Essences for food [other than essential oils]; Essences for foodstuffs, except etheric essences and essential oils; Essences for use in cooking [other than essential oils]; Essences for use in food preparation [other than essential oils]; Vinegar; Fish sauce; Minced garlic; Minced garlic [condiment]; Spice rubs; Ground pepper; Pepper powder [spice]; Hot pepper powder [spice]; Vegetable concentrates used for seasoning; Roasted and ground sesame seeds for use as a seasoning; Dried chili peppers seasoning; Dried coriander seeds for use as seasoning; Dried herbs; Dried coriander for use as seasoning; Dried chives; Dried fig-based condiment; Spices; Spice extracts; Condiments; Stew seasoning mixes; Sloppy joe seasoning mix; Seasoning mixes; Cloves [spice]; Spice preparations; Seasoned salt for cooking; Spiced salt; Seasoned breading mix for deep frying; Seasoned coating for meat, fish, poultry; Ginger [spice]; Japanese pepper powder spice (sansho powder); Japanese arrowroot powder (kudzu-ko, for food); Japanese horseradish powder spice (wasabi powder); Capers; Preserved chervil; Powdered garlic; Clove powder [spice]; Cooking essences; Cooking salt; Garden herbs, preserved [seasonings]; Preserved ginger; Crab boil [seasoning]; Marinades containing herbs; Turmeric; Turmeric for use as a condiment; Caraway seeds for use as a seasoning; Mayonnaise with pickles; Flavourings of almond; Marinades; Mayonnaise and ketchup-based spreads; Horseradish [relishes]; Sea salt for cooking; Poppy seeds for use as a seasoning; Nutmeg; Fruit vinegar; Perilla powder for food; Pepper; Pepper vinegar; Pepper spice; Peppercorns; Peppermints [other than for medicinal use]; Vegetable-based seasonings for pasta; Peppers [seasonings]; Pimento used as a condiment; Pizza spices; Popcorn seasoning; Pickling salt for pickling foodstuffs; Relishes; Red pepper powder (Gochutgaru); Saffron [seasoning]; Saffron for use as a seasoning; Salad cream; Sage [seasoning]; Salt; Salt for popcorn; in; Sauces; Sauce [edible]; Preserved chives; Allspice; Celery salt; Mustard vinegar; Mustard preparations for food; Mustard powder [spice]; Mustard powder for food; Sesame seeds [seasonings]; Sichuan pepper powder; Sauces [condiments]; ice; Sauces flavoured with nuts; Sauces containing nuts; Edible salt; Star aniseed; Sweet pickle [condiment]; Taco seasoning; Table salt; Table salt mixed with sesame seeds; Dry seasoning mixes for stews; Dry seasonings; Truffle salt; Vanilla; Vanilla beans; Processed herbs; Processed seeds for use as a seasoning; Processed shallots for use as seasoning; Processed garlic for use as seasoning; Processed ginseng used as a herb, spice or flavoring; Wasabi powder; Wine vinegar; Marinades containing seasonings; Seasonings; Alimentary seasonings; Spices in the form of powders; Aromatic preparations for food; Cinnamon [spice]; Cinnamon powder [spice]; Prepared horseradish [condiment].

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.

Salts, spices; salt; sauces; sauces [condiments]; vinegar are identically contained in both lists of goods (including as synonyms).

The contested seasonings, Angelica; Aniseed; Aniseeds for use as a seasoning; Flavorings and seasonings; Baking spices Chemical seasonings [cooking]; Chili powders; Curry [spice]; Curry spice mixes; Curry mixes; Curry powder [spice]; Pickled ginger [condiment]; Minced garlic; Minced garlic [condiment]; Spice rubs; Ground pepper; Pepper powder [spice]; Hot pepper powder [spice]; Vegetable concentrates used for seasoning; Roasted and ground sesame seeds for use as a seasoning; Dried chili peppers seasoning; Dried coriander seeds for use as seasoning; Dried herbs; Dried coriander for use as seasoning; Dried chives; Preserved chives; Spice extracts; Stew seasoning mixes; Sloppy joe seasoning mix; Seasoning mixes; Cloves [spice]; Spice preparations; Seasoned breading mix for deep frying; Ginger [spice]; Japanese pepper powder spice (sansho powder); Japanese horseradish powder spice (wasabi powder); Preserved chervil; Powdered garlic; Clove powder [spice]; Garden herbs, preserved [seasonings]; Preserved ginger; Crab boil [seasoning]; Marinades containing herbs; Turmeric; Turmeric for use as a condiment; Caraway seeds for use as a seasoning; Flavourings of almond; Marinades; Horseradish [relishes]; Poppy seeds for use as a seasoning; Nutmeg; Perilla powder for food; Pepper; Pepper spice; Peppercorns; Peppermints [other than for medicinal use]; Vegetable-based seasonings for pasta; Peppers [seasonings]; pimento used as a condiment; Pizza spices; Popcorn seasoning; Red pepper powder (Gochutgaru); Saffron [seasoning]; Saffron for use as a seasoning; Sage [seasoning]; Allspice; mustard powder [spice]; mustard powder for food; Sesame seeds [seasonings]; Sichuan pepper powder; Star aniseed; Taco seasoning; dry seasoning mixes for stews; Dry seasonings; Vanilla; Vanilla beans; Processed herbs; Processed seeds for use as a seasoning; Processed ginseng used as a herb, spice or flavoring; Wasabi powder; Marinades containing seasonings; Seasonings; Alimentary seasonings; Spices in the form of powders; Cinnamon [spice]; Cinnamon powder [spice]; Prepared horseradish [condiment] are at least similar to a low degree the opponent’s spices as they coincide in their purpose, distribution channels and relevant public. as well as for some in their producers, which does not preclude that some of them are identical with the opponent’s said spices, because the opponent’s goods include, are included in, or overlap with, the contested goods, bearing in mind that the Office cannot dissect ex officio the broad categories of the contested goods.

The contested condiments; savory sauces, chutneys and pastes; Achar pachranga (fruit pickle); seaweed [condiment]; flavourings in the form of dehydrated sauces; flavourings in the form of concentrated sauces; mayonnaise-based spreads; Chili oil for use as a seasoning or condiment; dashi-tsuyu; fish sauce; dried fig-based condiment; condiments; seasoned coating for meat, fish, poultry; Japanese arrowroot powder (kudzu-ko, for food); Capers; mayonnaise with pickles; mayonnaise and ketchup-based spreads; Relishes; salad cream; sauce [edible]; sauces flavoured with nuts; sauces containing nuts; sweet pickle [condiment]; Processed shallots for use as seasoning; Processed garlic for use as seasoning are at least similar to a low degree the opponent’s sauces (condiments), as they coincide in their purpose, distribution channels and relevant public. as well as for some in their producers, which does not preclude that some of them are identical with the opponent’s said sauces (condiments), because the opponent’s goods include, are included in, or overlap with, the contested goods, bearing in mind that the Office cannot dissect ex officio the broad categories of the contested goods.

The contested flavoured vinegar; beer vinegar; fruit vinegar; pepper vinegar; mustard vinegar; wine vinegar are included in the broad category of the opponent’s vinegar. Therefore, they are identical.

The contested seasoned salt for cooking; spiced salt; cooking salt; sea salt for cooking; pickling salt for pickling foodstuffs; salt for popcorn; celery salt; edible salt; table salt; table salt mixed with sesame seeds; truffle salt are included in the broad category of the opponent’s salt. Therefore, they are identical.

The contested mustard preparations for food are included in the broad category of the opponent’s mustard. Therefore, they are identical.

The contested edible essences for foodstuffs [other than etheric substances and essential oils]; essences for food [other than essential oils]; essences for foodstuffs, except etheric essences and essential oils; essences for use in cooking [other than essential oils]; essences for use in food preparation [other than essential oils]; cooking essences; aromatic preparations for food are dissimilar from the opponent’s goods in Class 30. These goods have a different commercial origin, they serve specific purposes and are in principle addressed mainly to companies operating in the food and beverage industry and consequently to a specialised and different relevant public.

The contested term ice refers to frozen water. Although the contested goods and the opponent’s goods fall under the heading of food additives and food products respectively, ice does not share any relevant points of contact with the opponent’s goods - salt; mustard; vinegar; sauces (condiments); spices - such as to justify a finding of similarity. Their respective natures and purposes are different; the methods of use are distinct; their neither complement nor compete with each other, and they have different producers. Consequently they are dissimilar.

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 (at least to a low degree) are directed at the public at large for which the degree of attention is average.

c) The signs

BORNIER
Earlier trade mark	Contested sign

The relevant territory is France.

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).

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).

The earlier mark consists of the term ‘BORNIER’ which, contrary to the assertions of the applicant, is fanciful and meaningless for the vast majority of the relevant French public given that it is a technical term in the field of electricity of which only professionals in that field are likely to be aware. It follows that this term is normally distinctive.

The contested figurative sign consists of the verbal element ‘Börner’ placed above the verbal element ‘GERMANY’, both depicted in a slightly-stylised type face in the colour black and both placed within a simple hexagonal device element of a decorative nature.

The verbal element ‘Börner’ has no meaning for the relevant French public so it is normally distinctive thereof. The diacritic/accent over the letter ‘o’ of the contested sign, while noticeable, will not play a material role in the visual impression. Contrary to the submissions of the applicant, the Office considers that there is no evidence to support the applicant’s argument that the relevant French consumer will perceive this verbal element as being a German surname, which is not a common surname either in France or in Germany.

The meaning of the verbal element ‘GERMANY’ will be understood by the relevant French public as it is the name in English of a large country in the European Union. As it will be perceived merely as a reference to the geographical origin of the relevant goods, it possesses no distinctive character. Moreover, given that this verbal term is relatively much smaller in size than the verbal term ‘Börner’, its impact on the perception of the relevant public is reduced.

Visually, the signs coincide in the letter sequence ‘BORN*ER’ and they differ in the additional letter ‘I’ of the earlier mark, the diacritic/accent over the letter ‘o’ of the contested sign, as well as the verbal element ‘GERMANY’ and the figurative device of the contested sign. As explained above, the verbal element ‘GERMANY’ is non-distinctive of the relevant goods and the figurative device of the contested sign is merely decorative. Furthermore, although the said diacritic/accent will not go unnoticed by the relevant consumer, it will not amount to a material point of visual difference between the signs.

Taking the above into account, the signs at issue are considered to be visually similar to an above-average degree.

Aurally, the earlier mark will be pronounced in two syllables /bor-nier/, not three as argued by the applicant in its submissions, and it differs only in the sound /i/ from the sound of the contested sign, at least for a significant part of the French public. The verbal element ‘Börner’ of the contested sign will also be pronounced in two syllables: /bor-ner/. The diacritic/accent on the letter ‘o’ in the contested sign does not exist in the French language and so the letter ‘ö’ therein will be pronounced like a normal letter ‘o’.

As explained above, the verbal element ‘GERMANY’ is non-distinctive of the relevant goods and so even if pronounced by the relevant French public its aural impact is reduced.

On the basis of the above, the signs at issue are considered to be phonetically similar to an above-average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the verbal element ‘GERMANY’ of the contested sign will evoke a concept, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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

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).

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.

The signs at issue have been found to be visually and phonetically similar to an above-average degree with no conceptual comparison being possible, the goods are partly identical or similar to at least a low degree and party dissimilar, the distinctiveness of the earlier mark is normal, and the degree of attention is average.

In that regard, 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).

Taking all the relevant factors into consideration, including that of interdependence, the Opposition Division concludes that the similarities between the signs clearly outweigh the differences, which concern mostly merely decorative or non-distinctive elements or aspects.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public including for the goods that are similar at least to a low degree. It follows that the contested trade mark must be rejected for the goods found to be identical or similar 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

Catherine MEDINA

Kieran HENEGHAN

Boyana NAYDENOVA

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.