OPPOSITION No B 3 006 742

Amira Basmati Rice GmbH EUR, Bischofstr. 90, 47809 Krefeld, Germany (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968 Köln, Germany (professional representative)

a g a i n s t

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

On 08/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 006 742 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 17 173 824 , namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 2 596 948 ‘SULTAN’. The opponent invoked Article 8(1)(b) EUTMR.

a) The goods

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

Class 30: Rice.

The contested goods are the following:

Class 30: Sushi; Onigiri [rice balls].

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.

The contested sushi; onigiri [rice balls] are dissimilar to the opponent’s rice. The contested sushi is a Japanese dish of rice specially prepared with sweetened vinegar and garnished with other ingredients, in particular raw seafood or vegetables. It contains various ingredients, including rice. Furthermore, the contested onigiri [rice balls] is also Japanese food made from white rice formed into triangular or cylindrical shapes and often wrapped in nori (seaweed) and containing a filling. 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. An onigiri is always stocked with various fillings and flavours.

However, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T‑72/10, Naty’s, EU:T:2011:635, § 35-36). A similarity will, therefore, exist only if the goods have some other relevant criterion or criteria in common, in particular their usual origin, nature, purpose or method of use

In the present case, however, there are crucial differences between the contested goods and the opponent’s goods. For instance, rice is available predominantly in shops, whereas sushi; onigiri [rice balls] are offered in restaurants. The opponent’s rice has to be boiled and prepared for consumption, whereas the contested goods are ready-to-eat products. Although onigiri and sushi are offered as prepared meals, these are usually not produced by the companies that produce and sell rice. In retail stores, both may be available but they would then be displayed in different departments/sections of such stores. Therefore, the goods in question differ in their natures, purposes, distribution channels, sales outlets, producers and methods of use. Furthermore, they are not complementary to each other.

The opponent refers to previous decisions of the Office (i.e. 30/08/2017, R 1973/2016-4, SUSHI YAMA / YAMA PRODUCTS et al., and 30/08/2017, R 2031/2016-4, SUSHI YAMA / YAMA PRODUCTS et al.) to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

b) 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

Elena NICOLÁS GÓMEZ

Michal KRUK

Janja FELC

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.