OPPOSITION No B 3 004 473

Egetürk Wurst- und Fleischwarenfabrikation GmbH & Co. KG, Feldkasseler Weg 5, 50769 Köln, Germany (opponent), represented by Siebeke - Lange - Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative)

a g a i n s t

Seamaid A/S, Lundtoftevej 266, 2800 Lyngby, Denmark (applicant), represented by Gyllin Glenn, Lundtoftevej 266, 2800 Lyngby, Denmark (employee representative)

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 004 473 is partially upheld, namely for the following contested goods:

Class 29: Meats; fish, not live; poultry; game, not live; shelled prawns; dried prawns; shrimps, not live; lobsters, not live; crayfish, not live; crustaceans, not live; crabs [not live]; clams, not live; octopuses [not live].

2. European Union trade mark application No 17 173 824 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 173 824 , namely against some of the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 13 809 322 ‘SULTAN’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 809 322.

1. The goods

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

Class 29: Sausages and prepared meat products.

The contested goods are the following:

Class 29: Meats; fish, not live; poultry; game, not live; jellies for food; oils for food; laver; shelled prawns; dried prawns; shrimps, not live; lobsters, not live; crayfish, not live; crustaceans, not live; crabs [not live]; clams, not live; octopuses [not live].

Class 30: Chinese stuffed dumplings (gyoza, cooked); onigiri [rice balls]; samosas; spring rolls.

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 meats; poultry; game, not live overlap with the opponent’s prepared meat products. Therefore, they are identical.

The contested fish, not live; shelled prawns; dried prawns; shrimps, not live; lobsters, not live; crayfish, not live; crustaceans, not live; crabs [not live]; clams, not live; octopuses [not live] are similar at least to a low degree to the opponent’s prepared meat products. They usually have the same relevant public and method of use. Furthermore, they are in competition.

The contested jellies for food; oils for food; laver are dissimilar to the opponent’s sausages and prepared meat products. Jellies for food are a soft, semi-solid food substance with a resilient consistency, made by setting a liquid containing pectin or gelatine or by adding gelatine to a liquid. They are used in preparing various types of meals. Oils for food are animal- or vegetable-based oils prepared for consumption or cooking. Laver is a type of edible green seaweed. The opponent’s goods are sausages and prepared meat products, that is, meat that has been processed. Even though both the opponent’s and the contested goods may originate from animals, as the opponent argues, this is not sufficient for a finding of similarity. The goods under comparison have different purposes, and they are neither in competition nor complementary. Furthermore, they are displayed on different shelves and in different sections of shops and do not usually originate from the same producers.

Contested goods in Class 30

The contested Chinese stuffed dumplings (gyoza, cooked); onigiri [rice balls]; samosas; spring rolls are dissimilar to the opponent’s sausages and prepared meat products. Chinese stuffed dumplings (gyoza, cooked) are a kind of Chinese dumpling. A gyoza typically consists of a ground meat and/or vegetable filling wrapped in a thinly rolled piece of dough. Onigiri [rice balls] are a Japanese food made from white rice formed into triangular or cylindrical shapes, often wrapped in nori (seaweed), containing various fillings and having various flavours. Traditionally, an onigiri is filled with pickled ume (umeboshi), salted salmon, katsuobushi, kombu, tarako or any other salty or sour ingredient, as a natural preservative. Spring rolls refers to a large variety of filled, rolled appetisers or dim sum found in East Asian, South Asian and Southeast Asian cuisine. Spring rolls are savoury rolls with cabbage and other vegetable fillings inside a thinly wrapped cylindrical pastry. Therefore, the above reasoning applies also with regard to these contested goods and the opponent’s sausages and prepared meat products. The goods under comparison differ in their purposes, and they are neither in competition nor complementary. Furthermore, they do not usually originate from the same producers. It should be noted that the contested goods are usually offered in restaurants, whereas the opponent’s goods are generally sold in shops, butchers and supermarkets.

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 or similar at least to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

SULTAN
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 earlier mark is a word mark, ‘SULTAN’. In the case of word marks, it is the word as such that is protected and not its written form.

The word ‘sultan’ means ‘the sovereign of a Muslim country, especially of the former Ottoman Empire’ (information extracted from Collins Dictionary on 10/10/2018 at www.collinsdictionary.com). This word will be understood not only by the English-speaking part of the public, but also by the rest of the public in the European Union. This is because the word ‘sultan’ derives from Arabic, exists as such in some other official EU languages, for example in Estonian, French and German, and has very similar equivalents in others, for instance ‘sultán’ (Czech and Spanish), ‘sułtan’ (Polish), ‘султан’ (Bulgarian) and ‘sultano’ (Italian).

The word ‘sultan’ has no direct meaning in relation to the goods in question and is therefore distinctive for these goods.

The contested sign is a figurative mark made up of the verbal element ‘SULTANLAR’ and some figurative elements, that is, a profile of a bearded man wearing a decorative turban, a fish and some fanciful lines. The verbal and figurative elements are in blue, grey and white. The profile is placed above the word ‘SULTANLAR’, whereas the fish and the lines appear below it.

The verbal element ‘SULTANLAR’ is an invented word. However, even when a sign contains a single verbal element, the relevant consumers, when perceiving that sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, it is quite likely that at least a part of the relevant public will break this verbal element down into two verbal components, namely ‘SULTAN’ and ‘LAR’. This perception has an impact on the degree of similarity between the signs, as it cannot be excluded that the part ‘SULTAN’ of the verbal element of the contested sign will be perceived as an independent element due to its meaning, which is explained above.

The element ‘SULTAN’ will be perceived with the meaning given above, whereas the verbal element ‘LAR’ will not be attributed any clear meaning.

Neither ‘SULTANLAR’ as a whole nor the verbal elements ‘SULTAN’ and ‘LAR’ has any direct meaning in relation to the goods in question, and they are therefore distinctive. The profile described above has no meaning for the goods in question and is therefore distinctive. The profile of a bearded man wearing a decorative turban may be perceived as a sultan’s head because the contested sign contains the verbal element ‘SULTAN’. The depiction of a fish is descriptive for fish, not live; shelled prawns; dried prawns; shrimps, not live; lobsters, not live; crayfish, not live; crustaceans, not live; crabs [not live]; clams, not live; octopuses [not live], as these goods are all various types of seafood. It is weak for the other goods, as it may be perceived as a general reference to foodstuffs. The other figurative elements, namely the fanciful lines, are of a purely decorative nature and cannot serve as a badge of origin. Furthermore, the verbal element ‘SULTANLAR’ and the abovementioned profile in the contested sign are the dominant elements as they are the most eye-catching. Therefore, the other figurative elements, namely the depiction of a fish and the lines, play a secondary role in the comparison.

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).

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. In the present case, the signs coincide in their first six letters, as the earlier mark is incorporated in its entirety in the contested sign at its beginning.

Visually, the signs coincide in their first six letters, ‘SULTAN’. However, they differ in the last three letters of the word element of the contested sign, namely ‘LAR’. They also differ in the figurative elements described above.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their first letters, ‛SULTAN’, present identically in both signs. The pronunciation differs in the sound of the last three letters, ‛LAR’, of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually similar to an average degree.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical, partly similar at least to a low degree and partly dissimilar. They target the general public, which has an average degree of attention. The signs are visually and conceptually similar to an average degree. Aurally, they are similar at least to an average degree. Furthermore, the earlier mark has a normal 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 only differences between the signs are the last three letters and some figurative elements of the contested sign. However, the profile described above makes it particularly likely that the public will identify the verbal element ‘sultan’ in the contested sign, which makes the signs even more alike. Consumers will perceive the differences, but, as the earlier mark is fully reproduced in the contested sign, they may assume that the contested sign is a variation of the earlier mark. Therefore, the differences cannot outweigh the visual, aural and conceptual similarities between the marks.

It is a common practice nowadays for companies to make small variations in their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modern version of the mark.

Furthermore, 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.

It follows from the above 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.

The opponent has also based its opposition on German trade mark registration No 1 130 438.

Since this mark is identical to the one which has been compared and has been invoked only inasmuch as it covers the same goods as the earlier European Union trade mark, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Elena NICOLÁS GÓMEZ

Michal KRUK

Claudia ATTINÀ

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.