OPPOSITION No B 2 989 963

Podravka prehrambena inustrija d.d., Ante Starčevića 32, 48000 Koprivnica, Croatia (opponent), represented by Item D.O.O., Resljeva 16, 1000, Ljubljana, Slovenia (professional representative)

a g a i n s t

Zakłady Mięsne Henryk Kania Spółka Akcyjna, ul. Korczaka 5, 43-200, Pszczyna, Poland (applicant), represented by Łukasz Korga, ul. Stefana Batorego 48/406, 41-506, Chorzów, Poland (professional representative).

On 14/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 963 is upheld for all the contested goods.

2. European Union trade mark application No 17 213 505 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 17 213 505, . The opposition is based on, inter alia, Slovenian trade mark registration No 201 470 015, 'MAESTRO'. The opponent invoked Article 8(1)(a) and (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 Slovenian trade mark registration No 201 470 015.

1. The goods

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

Class 29: Cheese and cheese products; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats (not included in other classes); dietetic products made from the above-mentioned goods (not included in other classes); food additives not included in other classes.

The contested goods are the following:

Class 29: Meats; poultry; game, not live; prepared meat dishes; prepared meals made from meat [meat predominating]; cured sausages; smoked sausages; meat, preserved; sausage meat; sliced meat; meat spreads; pates; beef jerky; dried meat; uncooked sausages; charcuterie.

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

Game, not live; poultry; meats are identically contained in both lists of goods (including synonyms).

The contested cured sausages; smoked sausages; meat, preserved; sausage meat; sliced meat; meat spreads; pates; beef jerky; dried meat; uncooked sausages; charcuterie are included in the broad category of the opponent's meat. Therefore, they are identical.

The contested prepared meat dishes; prepared meals made from meat [meat predominating] are similar to the opponent’s meat. It is clear that the applicant's goods constitute the main ingredients of the earlier goods, which are processed in a certain way and offered in different forms, and that all of these goods have the same purpose and can be provided to the same end consumers, who can choose to prepare meals themselves or buy them already prepared for consumption. These goods are in competition and are sold in the same outlets (see also 04/05/2011, T-129/09, Apetito, EU:T:2011:193, confirming the finding of similarity between a particular foodstuff and prepared meals mainly consisting of the same particular foodstuff).

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 are directed at the public at large. The degree of attention is deemed average.

3. The signs

MAESTRO
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 word 'MAESTRO' in both signs will be understood by the relevant public as a title especially for the elderly, respectable composer, conductor, master (see https://fran.si/iskanje?View=1&Query=maestro). However, it has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, it is distinctive to a normal degree in both signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and in view of these, the signs are conceptually identical.

Visually and aurally, the earlier mark is entirely reproduced in the contested sign. They only differ visually in the specific stylisation of the contested sign but this difference will, however, hardly have an impact on the consumers as it is neither elaborate nor sophisticated and merely serves to embellish the word 'MAESTRO'. Therefore, the signs are visually highly similar and aurally identical.

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.

Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

Account must be 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).

In the present case, the goods, found to be in part identical and in part similar, are directed at the public at large who will display an average degree of attention. The earlier mark is distinctive to a normal degree and the signs are aurally and conceptually identical whereas they are visually highly similar.

In view of the foregoing, the Opposition Division considers that the relevant 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

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 Slovenian trade mark registration No 201 470 015. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Slovenian trade mark registration No 201 470 015 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).

Likewise, 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(1)(a) EUTMR.

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

Begoña URIARTE VALIENTE

Martina GALLE

María del Carmen COBOS PALOMO

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.