OPPOSITION No B 3 005 652

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm, Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Unilever N.V., Weena 455, 3013 AL, Rotterdam, The Netherlands (applicant), represented by Baker & McKenzie LLP, 100 New Bridge Street, EC4V 6JA London, United Kingdom (professional representative).

On 02/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 005 652 is upheld for all the contested goods.

2. European Union trade mark application No 17 177 007 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 17 177 007 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 572 691 designating, inter alia, Austria, Benelux, Bulgaria, Croatia, Czech Republic, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovakia, Slovenia and Spain for the word mark ‘CRUNCH’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 572 691 designating Austria, Benelux, Bulgaria, Croatia, Czech Republic, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovakia, Slovenia and Spain.

a) The goods

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

Class 30: Coffee and coffee extracts, artificial coffee and artificial coffee extracts, mixtures of coffee and chicory; tea and tea extracts; chocolate and chocolate preparations, cocoa and cocoa-based preparations; confectionery, chocolate products; sugar; sugar confectionery, sweets, caramels, chewing gum; flours, food preparations made with cereals, bread, biscuits, cakes, pastries; edible ice sorbets, products for making edible ices and sorbets, frozen cakes; honey and honey substitutes, desserts, puddings.

The contested goods are the following:

Class 30: Ice cream; water ices; frozen confectionery.

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 frozen confectionery is included in the broad category of the earlier confectionery. Therefore, they are identical.

The contested water ices overlap with the earlier edible ice sorbets. Therefore, they are identical.

The contested goods ice cream are similar to a high degree to the opponent’s confectionery, because they coincide in purpose, distribution channels, relevant public and producer. Furthermore, these goods are in competition.

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 to a high degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

CRUNCH
Earlier trade mark	Contested sign

The relevant territory is Austria, Benelux, Bulgaria, Croatia, Czech Republic, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovakia, Slovenia and Spain.

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 the word mark ‘CRUNCH’. The contested sign is figurative. It consists of the words ‘PERFECT’ and ‘CRUNCH’ depicted in brown upper-case letters, placed one above the other and separated by a highly stylised depiction of an ice cream cone, on the right of which is a wavy line. All of the elements are placed on a circular white background that resembles a white liquid or semi-solid element, such as milk or ice cream.

For reasons of procedural economy, the Opposition Division will examine the opposition in relation to a part of the relevant territories, namely Spain, in view of the fact that in that territory the word ‘CRUNCH’ is meaningless.

Contrary to what is stated by the applicant in its observations of 06/09/2018, the word ‘CRUNCH’ is not a basic English word. Spanish consumers, for instance, will regard it as meaningless. However, the word ‘PERFECT’ is almost identical to the Spanish word ‘perfecto’, which means, as in English, as good as it can possibly be.

The applicant’s claim as regards the understanding of the word ‘CRUNCH’ in, for instance, Spain must be set aside. The fact that products containing the word ‘CRUNCH’ are placed on the Spanish market does not necessarily mean that the word ‘CRUNCH’ is understood by Spanish consumers who are exposed to it, or at least by a significant proportion of them. In the absence of additional and convincing arguments, the Opposition Division will proceed on the assumption that the term ‘CRUNCH’ does not convey any semantic content for Spanish consumers.

The element ‘CRUNCH’ is therefore distinctive. However, the word ‘PERFECT’ of the contested sign implies the idea of total satisfaction, of having all essential elements and being excellent in all respects. Hence, it will be seen as a laudatory term, which can describe the quality of the products. This element is therefore, at best, weak. The same is valid, overall, for the figurative elements, which are reminiscent of ice cream or a liquid in general, which are or can be concepts that, strictly speaking, are related to the ingredients of the goods in Class 30.

The contested sign has no element that could be considered clearly more dominant than other elements.

However, 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 the distinctive element ‘CRUNCH’, which is the whole of the earlier sign. However, they differ in the additional figurative elements of the contested sign, which are overall of reduced impact, and in the weak element ‘PERFECT’ of the contested sign.

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

Aurally, the signs coincide in the way the common letters of the distinctive element ‛CRUNCH’, present identically in both signs, are pronounced. The pronunciation differs in the sound of the letters of the weak element ‘PERFECT’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the meaning of the word ‘PERFECT’ and the figurative elements of the contested sign, as explained above. However, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Therefore, the signs are conceptually not similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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

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 goods covered by the trade marks in dispute have been found partly identical and partly similar to a high degree. They target the public at large, whose degree of attention is expected to be average.

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 are visually similar to an average degree and aurally similar to a high degree. In fact, the earlier mark ‘CRUNCH’ is identically contained in the contested sign’s two verbal elements ‘PERFECT CRUNCH’ and is the most distinctive element with an independent distinctive role.

As seen above in section c) of this decision, both the word ‘PERFECT’ and the additional figurative elements of the contested sign are, at best, weak.

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).

The goods, as already mentioned, have been found partly identical and partly similar to a high degree. The word ‘CRUNCH’, which for the Spanish-speaking consumer is meaningless, enjoys an independent distinctive role within the two words ‘PERFECT CRUNCH’.

Considering all the above, there is a likelihood of confusion at least, but not necessarily only, on the Spanish-speaking part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 572 691 designating, inter alia, Spain. It follows that the contested application must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 572 691 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

In its observations of 06/09/2018, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word ‘CRUNCH’. In support of its argument the applicant refers to some European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘CRUNCH’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the applicant, namely opposition decision B 553 158 of 30/06/2005, is not relevant to the present proceedings. In fact, that decision concludes that the word ‘CRUNCH’ is ‘used and recognised in other non-English speaking territories including France’.

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.

The conclusion of the Opposition Division in the present case cannot be questioned by invoking a decision that in fact does not contradict it, since the fact that the word ‘CRUNCH’ might be understood in France is obviously not conclusive of the fact that the word is understood in other territories such as, for instance, Spain.

In view of the foregoing, this claim, submitted by the opponent, must also be dismissed.

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

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

María Clara IBÁÑEZ FIORILLO

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.