OPPOSITION No B 3 010 421

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

"СИ ТРЕЙД 2011" ЕООД, област Монтана, община Берковица с. Комарево 3516 ПЪРВА No 40, 3516 с. Комарево, Bulgaria (applicant), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8 Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).

On 13/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 010 421 is upheld for all the contested goods.

2. European Union trade mark application No 17 227 901 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 17 227 901 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 8 925 281 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 8 925 281.

a) The goods

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; Animal food; malt.

The contested goods are, after a limitation, the following:

Class 29: Fish, not live; Tuna fish [preserved]; Tuna in oil; Tuna, not live; Salted fish; Fish, preserved; Cooked fish; Cooked snails; Prepared snails [escargot]; Prepared entrees consisting primarily of seafood; Silkworm chrysalis for human consumption; Fish and seafood spreads; Fish, tinned [canned (Am)]; Fish fillets; Isinglass for food; Shrimps, not live; Anchovy, not live; Mussels, not live; Sea-cucumbers, not live; Lobsters, not live; Meats; Meat, preserved; Salted meats; Meat gelatines; Preparations for making bouillon; Meat spreads; Liver pâté; Liver; Butter; Olive oil for food; Margarine; Sunflower oil for food; Maize oil for food; Pickles; Milk beverages, milk predominating; Milk; Milk products; Yoghurt; Whey; Vegetable salads; Vegetables, tinned [canned (Am)]; Mushrooms, preserved; Tomato paste; Compotes; Fruit salads; Jams; Processed fish; Smoked fish; Dried fish; Frozen fish; Pickled fish; Frozen cooked fish; Fish paste; Fish in olive oil; Fish sticks; Dishes of fish; Fish extracts; Fish with chips; Fish-based foodstuffs; Boiled and dried fish; Tuna fish [not live]; Dried fish meat; Sweetfish [not live]; Swordfish, not live; Smoked fish spread; Fish meal for human consumption; Fish, seafood and molluscs; Cooked meals consisting principally of fish; Klipfish [salted and dried cod]; Chilled foods consisting predominately of fish; Flakes of dried fish meat (kezuri-bushi); Sea breams [red snappers, not live]; Blocks of boiled, smoked and then dried bonitos (katsuo-bushi); Steamed cakes of smashed fish and yam (hampen).

Class 30: Fish sauce; Flavourings made from fish; Sauces for frozen fish; Salt for preserving fish; Seasoned coating for meat, fish, poultry; Salt pellets for preserving fish; Pastries consisting of vegetables and fish; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Boxed lunches consisting of rice, with added meat, fish or vegetables.

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

Fish; meat/s; jams; milk; milk products are identically contained in both lists of goods.

The contested fish, not live is identical to the opponent’s fish, in Class 29, since live fish does not appear in this Class.

The contested tuna fish [preserved]; tuna in oil; tuna, not live; salted fish; fish, preserved; cooked fish; fish, tinned [canned (am)]; fish fillets; processed fish; smoked fish; dried fish; frozen fish; frozen cooked fish; fish in olive oil; boiled and dried fish; tuna fish [not live]; dried fish meat; sweetfish [not live]; swordfish, not live; klipfish [salted and dried cod]; sea breams [red snappers, not live] are various kinds of fish and prepared fish. They are either included in the broad category, or overlap with, the opponent’s fish. Therefore, they are identical.

The contested meat, preserved; salted meats are included in the broad category of the opponent’s meat. Therefore, they are identical.

The contested butter; milk beverages, milk predominating; yoghurt; whey are included in the broad category of, or overlap with, the opponent’s milk products. Therefore, they are identical.

The contested vegetables, tinned [canned (am)]; vegetable salads; fruit salads are included in the broad categories of, or overlap with, the opponent’s preserved, frozen, dried and cooked fruits and vegetables. Therefore, they are identical.

The contested olive oil for food; maize oil for food are included in the broad category of the opponent’s edible oils. Therefore, they are identical.

The contested seafood is shellfish and thus is included in the broad category of the opponent’s fish. Therefore, they are identical.

The contested molluscs are animals such as snails, clams or octopus which have a soft body, often with hard shells to protect them. Therefore, these goods overlap with the broad category of the opponent’s fish, and thus are considered identical.

The contested meat spreads; liver pâté; liver are or can all be made of meat and are therefore highly similar to the opponent’s meat. They have the same nature and purpose (being nourishments from cattle), can come from the same producers, can have the same distribution channels and the same consumers. Furthermore, they are in competition.

The contested prepared entrees consisting primarily of seafood; silkworm chrysalis for human consumption; seafood spreads; isinglass for food; shrimps, not live; anchovy, not live; mussels, not live; sea-cucumbers, not live; lobsters, not live are at least similar to the opponent’s fish, as these sets of goods are often sold in the same specialised shops and often originate from the same undertakings. In addition, they target the same consumers since they satisfy the same consumer needs. Finally, these goods may be in competition.

The contested mushrooms, preserved; tomato paste; pickles and the opponent’s preserved, frozen, dried and cooked fruits and vegetables have similar natures and purposes. They can have the same producers, target the same public and are generally distributed through the same channels. Therefore, they are at least similar.

The contested fish sticks; fish spreads; pickled fish; fish paste; dishes of fish; fish with chips; fish-based foodstuffs; smoked fish spread; fish meal for human consumption; cooked meals consisting principally of fish; chilled foods consisting predominately of fish; flakes of dried fish meat (kezuri-bushi); blocks of boiled, smoked and then dried bonitos (katsuo-bushi); steamed cakes of smashed fish and yam (hampen) are fish-based foodstuffs and as such, at least similar to the opponent’s fish. They have the same nature, producers and relevant public.

The contested fish extracts is similar to the opponent’s meat extracts. They have the same nature, target the same end consumer and can have the same distribution channels and method of use. Furthermore, these goods can be in competition with each other.

The contested margarine; sunflower oil for food are similar to the opponent’s edible oils and fats. These goods can have the same purpose and can be in competition, because one can be used in place of the other in the process of cooking. They also target the same public.

The contested preparations for making bouillon are similar to the opponent’s meat extracts. Bouillon is a thin clear broth or stock. The opponent’s meat extracts are products resulting from filtration and concentration to a pastry of the stock prepared with meat. These goods share the same nature and purpose of use and are intended for the same public. Furthermore, they are sold in the same stores and are produced by the same undertakings.

The contested meat gelatines are similar to the opponent’s edible oils, since they coincide in purpose and relevant public and are in competition with one another.

The contested compotes are mixtures of pieces of fruit that are cooked or preserved in syrup and generally have the same producers as the opponent’s preserved, frozen, dried and cooked fruits and are to be found through the same distribution channels. They also target the same customers. Therefore, they are similar.

The contested cooked snails; prepared snails [escargot] are at least similar to a low degree to some of the earlier goods (such as the opponent’s meat, fish, poultry and game) since these goods are in competition, have the same distribution channels, are directed at the same public and may come from the same provider.

Contested goods in Class 30

The contested fish sauce; sauces for frozen fish are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested salt for preserving fish; salt pellets for preserving fish are included in the broad category of, or overlap with, the opponent’s salt. Therefore, they are identical.

The contested pastries consisting of vegetables and fish are included in the broad category of, or overlap with, the opponent’s pastry. Therefore, they are identical.

The contested flavourings made from fish; seasoned coating for meat, fish, poultry are similar to the opponent’s spices. They have the same purpose and methods of use, the same distribution channels and relevant public.

The contested pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; boxed lunches consisting of rice, with added meat, fish or vegetables and the opponent’s preserved, frozen, dried and cooked fruits and vegetables have similar purposes. The contested goods may all contain meat, fish, poultry or fruits and vegetables, since prepared meals often contain these ingredients. They target the same public, can have the same manufacturers and can be distributed through the same channels. Therefore, they are similar to at least a low degree.

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

c) The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common verbal elements ‘GOLDEN’ and ‘FISH’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a figurative mark, consisting of a square shaped figure in golden shades with two rounded corners, enclosing the verbal elements ‘GOLDEN SEAFOOD’ in golden, standard upper case letters above a drawn line depicting a fish facing left, also in golden colour. Under the fish are the verbal elements ‘PURE FINE FISH’ in pale golden letters, which due to their small size and underlying position are secondary in the mark. The background in the mark is black on top half and blue on the lower part of the mark.

The contested sign is a figurative mark, consisting of the blue, rather standard upper case letters ‘GOLDEN FISH’ below a drawn line depicting a fish facing left, in golden colour. A light blue line surrounds the words, broken by the stylised fish. On the top right side of the mark is an ® - sign.

In the earlier mark, neither the verbal elements ‘GOLDEN SEAFOOD’ nor the secondary verbal elements ‘PURE FINE FISH’ have any meaning for the relevant public and are, therefore, distinctive. The figurative element of the stylised fish will be understood as such by the relevant public. Bearing in mind that some of the relevant goods are fish, this element is weak (or even non-distinctive) for these goods. For the rest of the goods, it is distinctive.

The other figurative elements of the earlier mark, such as the golden frame and the colours, are less distinctive figurative elements of a purely decorative nature.

In the contested sign, the verbal element ‘GOLDEN FISH’ has no meaning for the Spanish-speaking public. Therefore, it is distinctive.

The figurative element of the stylised fish in the contested sign will be understood as such by the relevant public. Bearing in mind that some of the relevant goods are fish, fish dishes and seafood, this element is weak (or even non-distinctive) for part of these goods, namely for fish, not live; tuna fish [preserved]; tuna in oil; tuna, not live; salted fish; fish, preserved; cooked fish; cooked snails; prepared snails [escargot]; prepared entrees consisting primarily of seafood; silkworm chrysalis for human consumption; fish and seafood spreads; fish, tinned [canned (Am)]; fish fillets; isinglass for food; shrimps, not live; anchovy, not live; mussels, not live; sea-cucumbers, not live; lobsters, not live; processed fish; smoked fish; dried fish; frozen fish; pickled fish; frozen cooked fish; fish paste; fish in olive oil; fish sticks; dishes of fish; fish extracts; fish with chips; fish-based foodstuffs; boiled and dried fish; tuna fish [not live]; dried fish meat; sweetfish [not live]; swordfish, not live; smoked fish spread; fish meal for human consumption; fish, seafood and molluscs; cooked meals consisting principally of fish; klipfish [salted and dried cod]; chilled foods consisting predominately of fish; flakes of dried fish meat (kezuri-bushi); sea breams [red snappers, not live]; blocks of boiled, smoked and then dried bonitos (katsuo-bushi); steamed cakes of smashed fish and yam (hampen), in Class 29, and fish sauce; sauces for frozen fish; salt for preserving fish; salt pellets for preserving fish; flavourings made from fish; seasoned coating for meat, fish, poultry; pastries consisting of vegetables and fish; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; boxed lunches consisting of rice, with added meat, fish or vegetables. For the rest of the goods, it is distinctive.

The contested sign also includes the small symbol ‘®’. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The remaining figurative elements of the contested sign, such as the light blue frame and the colours are less distinctive figurative elements of a purely decorative nature.

Neither the earlier mark, nor the contested sign have any elements that could be considered clearly more dominant than other elements.

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.

Visually, the signs coincide in the distinctive first verbal element ‘GOLDEN’ and in the distinctive verbal element ‘FISH’, which however is secondary in the earlier sign and therefore might not be perceived, and moreover in the figurative element of a fish in golden colour, facing left, which is weak for part of the goods. However, they differ in the distinctive verbal element ‘SEAFOOD’ of the earlier sign and in the verbal elements ‘PURE FINE’ of the earlier sign, if perceived, since they are secondary in the mark as described above. Furthermore, they differ in the overall stylisation of the marks.

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

Aurally, the pronunciation of the signs coincides in the sound of the first word ‘GOLDEN’, which is present identically in both signs, and is distinctive. The pronunciation also coincides in the word ‘FISH’ (distinctive), if perceived and pronounced in the earlier mark, as it is secondary in the mark. The pronunciation differs in the sound of the letters ‛SEAFOOD’ of the earlier sign, which are distinctive, and in the sound of the letters ‘PURE FINE’, if perceived and pronounced as they are secondary in the earlier mark.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element of a golden fish, included in both signs, will be perceived as such. To that extent, the signs are conceptually at most lowly similar for those goods for which this element is of limited distinctiveness, and conceptually similar to an average degree for the remaining goods.

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.

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, despite the presence of some weak (or even non-distinctive) elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

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 or economically linked undertakings.

In the present case, the goods are partly identical and partly similar to various degrees. They are directed at the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree and conceptually similar to low degree for part of the goods and to an average degree in relation to some of the goods, to the extent that they coincide in the verbal element ‘GOLDEN’, in the stylisation of a fish in golden colour, and furthermore in a verbal element ‘FISH’, if perceived in the earlier mark. The degree of distinctiveness of the earlier mark is normal.

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).

Indeed, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 925 281. It follows that the contested trade mark must be rejected for all the contested goods, even those similar to only a low degree. The similarity between the signs outweighs the low similarity of these goods.

As the earlier European Union trade mark registration No 8 925 281 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).

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

Boyana NAYDENOVA

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.