OPPOSITION No B 3 007 435

Ferralfaim, S.L., Avda. Jacinto Benavente 9, Fuengirola, Spain (opponent), represented by Almudena Abellán Pérez, Calle Calderón de la Barca,
Nº 12-Entresuelo A, 30001 Murcia, Spain (professional representative)

a g a i n s t

Stichting Longivity Club, 35 Gaffelaarspad, 1081KK Amsterdam, Netherlands (applicant).

On 13/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 007 435 is partially upheld, namely for the following contested goods:

Class 29: Processed fruits

2. European Union trade mark application No 17 223 009 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 all the goods of European Union trade mark application No 17 223 009 for the word mark ‘Siam Dry Fruit’. The opposition is based on Spanish trade mark registration No 3 595 886 for the word mark ‘SIAM’. 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.

1. The goods

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

Class 30: Flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sauces[condiments]; spices; prepared meals containing [principally] pasta; ready-made dishes containing pasta; prepackaged lunches consisting primarily of rice, and also including meat, fish or vegetables; sushi.

The contested goods are the following:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses).

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 processed fruits are considered similar to a low degree to the opponent’s confectionery because they have the same origin, distribution channels and end consumers.

The contested fungi and vegetables (including nuts and pulses) are dissimilar to the opponent’s goods because they differ in nature, purpose, method of use, distribution channels and end consumers.

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 similar to a low degree are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

SIAM	Siam Dry Fruit
Earlier trade mark	Contested sign

The relevant territory is 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 marks are word marks, and therefore the word as such is protected and not its written form. It is irrelevant whether word marks are depicted in lower or upper case letters.

The marks have an element in common, ‘SIAM’. The word ‘SIAM’ is the former name for Thailand. However, it has not been in use since 1939 and is therefore highly unlikely to be perceived by the majority of the relevant public as referring to the country of Thailand.

For the part of the public that perceives the word ‘SIAM’ as meaningless in relation to the relevant goods, it is of average distinctiveness. For the remaining part of the relevant public, namely that which associates ‘SIAM’ with the former name for Thailand, this element is also of average distinctiveness, since consumers would not think that the goods came from a country that no longer exists.

The contested sign contains the elements ‘DRY’ and ‘FRUIT’. A substantial part of the Spanish-speaking public will associate the word ‘FRUIT’ with the Spanish equivalent, namely ‘fruta’, since they are sufficiently similar in spelling and pronunciation that it is likely that one would bring the other to mind. For that part of the public, the element is allusive in relation to the relevant goods and therefore of low distinctiveness. The three-letter word ‘DRY’ will not be understood by the relevant public and is therefore of average distinctiveness in relation to the relevant goods.

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 verbal element ‘SIAM’ of the contested sign is the first element that the consumer will read and pronounce, and therefore has a greater impact than the other elements.

Visually and aurally, the signs coincide in the distinctive word ‘SIAM’, which has a greater impact than the other elements of the contested sign because it is the first word that will be seen and pronounced in it.

However, they differ in the verbal elements ‘DRY’ and ‘FRUIT’ of the contested sign. ‘DRY’ is a short word and therefore has a limited impact, and ‘FRUIT’ is of low distinctiveness for the part of the public that understands the word. In addition, ‘FRUIT’ will be read and pronounced last in the contested sign, which reduces its impact.

Considering that consumers generally focus on the beginning of signs, we can conclude that the signs are visually and aurally similar to an average degree for a substantial part of the public, namely the part that perceives ‘FRUIT’ as referring to the goods.

Conceptually, for the part of the public that associates the coinciding element ‘SIAM’ with the former name for ‘Thailand’, the marks are conceptually highly similar, since the word ‘FRUIT’, to the extent that it is understood as referring to the goods, has a limited differentiating impact.

For the part of the public that perceives ‘SIAM’ and ‘DRY’ as totally meaningless, the conceptual comparison does not influence the assessment of the similarity of the marks. Even though a part of this public may perceive the word ‘fruit’ as meaningful, this word would not serve to differentiate the marks conceptually, since it would be perceived as referring to the goods in question and not as an indicator of origin.

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

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 undertaking or economically linked undertakings.

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 marks 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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the relevant goods are partly similar to a low degree and partly dissimilar. The similar goods target the public at large, which will pay an average degree of attention during purchase.

The earlier mark is of average distinctiveness. The marks are visually and aurally similar to an average degree and, depending on the public’s perception of the verbal elements ‘SIAM’ and ‘FRUIT’, either they are conceptually highly similar or the conceptual comparison does not influence the assessment of the similarity of the marks.

Even though a part of the relevant public may perceive the word ‘FRUIT’ as meaningful, this word does not serve to differentiate the marks conceptually, since it will be perceived as referring to the goods in question and not as an indicator of origin.

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).

In the present case, although the goods are similar only to a low degree, the visual, aural and, for part of the public, conceptual similarities resulting from the distinctive element ‘SIAM’ are clearly sufficient to overcome the dissimilarities between the signs; the coinciding element, due to its position at the beginning of the contested sign, clearly stands out as an independent distinctive element. Furthermore, considering that part of the public will perceive the word ‘FRUIT’ as referring to the goods, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for a substantial part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree 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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

Adriana VAN ROODEN

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.