OPPOSITION No B 3 031 690

Mc Cain Alimentaire, Zone Industrielle, 62440 Harnes, France (opponent), represented by Cabinet Plasseraud, 31 Rue Des Poissonceaux, 59044 Lille Cedex, France (professional representative)

a g a i n s t

Puro Acaso, Lda., Calçada Marquês de Abrantes, n.º 107, C/V Esquerda, 1200-718 Lisbon, Portugal (applicant).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 690 is upheld for all the contested goods.

2. European Union trade mark application No 17 303 009 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 17 303 009 for the figurative mark . The opposition is based on, inter alia, French trade mark registration No 3 284 689 for the word mark ‘GOLDEN ALLUMETTES’. 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, inter alia, the following:

Class 29: Canned, dried and cooked potato fries; french fries.

The contested goods are the following:

Class 29: French fries; potato crisps; low-fat potato crisps.

Contrary to the applicant’s allegations, the contested goods are either identically contained in both lists (i.e. french fries) or overlap with the opponent’s canned, dried and cooked potato fries (i.e. potato crisps; low-fat potato crisps). Consequently, the goods in question are identical.

2. Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large, whose degree of attention is deemed to be average.

3. The signs

GOLDEN ALLUMETTES
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Firstly, the earlier mark is a word mark and as such is protected for its verbal elements and not for their graphical depiction, that is to say, its protection will include the depiction of its verbal components in various fonts, stylisations and as lower-, upper- or title-case letters. Therefore, the arguments of the applicant regarding the use of the sign in the market, in different fonts or with different stylisation, is irrelevant, since the comparison must be herein carried out by taking into account the sign as registered.

Secondly, the unitary character of the European Union trade mark means that likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The elements ‘GOLDEN’ of the earlier mark and ‘goldens’ of the contested sign have no meaning for the vast majority of the relevant public and are, therefore, distinctive in relation to the goods. It cannot be excluded that some of the public may attribute the words ‘goldens’ or ‘golden’ to the concept of ‘yellowish colour’, and therefore may consider the said elements as allusive to the characteristics of the goods involved. Consequently, the Opposition Division find it appropriate to proceed with the comparison based on the part of the public (i.e. significant part) for which ‘GOLDEN’ and ‘goldens’ are meaningless and of an average distinctiveness in relation to the goods.

The word ‘ALLUMETTES’ of the earlier sign will be understood by French speakers as a matchstick-sized cut of potatoes. Bearing in mind that the relevant goods are potatoes preserved in different forms, this element is non-distinctive for these goods as it directly informs about the shape in which the products are offered in the market. Therefore, this differing element will be of a reduced impact since it will not serve as an identifier of a commercial origin in relation to the goods of the earlier mark.

In addition, the stylisation used to embellish the contested sign is rather standard, and its impact on the overall perception of the sign will be of a limited importance.

Visually and aurally, the signs coincide in the string of letters/sounds ‘golden*’, which constitute almost the entirety of the contested sign, and the only distinctive element in the earlier mark.

They differ in the additional element ‘ALLUMETTES’ of the earlier mark, which lacks distinctiveness, in the stylisation of this later mark of a plain character, and in the additional letter ‘s’ in the contested sign being the final letter of the sign.

In principle, consumers 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. Consequently, in addition to being devoid of distinctiveness, the differing verbal element of the earlier mark, ‘ALLUMETTES’, also occupies a secondary position within the sign. Furthermore, the final letter ‘s’ of the contested sign, being placed in a less prominent position, may be easily overlooked by the public.

Lastly, it has to be added that French consumers will tend to pronounce the first verbal element of the earlier mark and the contested sign identically due to the silent ‘s’ at the end of the contested sign.

Therefore, bearing the aforementioned in mind, the signs are considered visually and aurally at least similar to an average degree.

Conceptually, although the public in the relevant territory will perceive a meaning of part of the earlier mark, as explained above, 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.

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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and the degree of attention paid by the relevant public is average. The earlier mark enjoys a normal degree of distinctiveness as a whole.

As established above, the signs demonstrate similarities on account of their coinciding distinctive verbal element ‘golden*’, constituting most of the contested sign. These coincidences, together with the fact that the additional element of the earlier mark is devoid of distinctiveness and the differences in the contested sign are only of a reduced impact (an additional ‘s’ in a non-prominent position and a plain stylisation), contribute to a finding of at least an average degree of visual and aural similarity.

Therefore, even though the signs are not conceptually similar, the Opposition Division considers that the visual and aural similarities are sufficient for consumers to confuse the sign’s origin. Generally, 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. 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 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 public, as has been set out in section c). Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 284 689 for the word mark ‘GOLDEN ALLUMETTES’. As previously mentioned, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. It follows that the contested trade mark must be rejected for all the contested goods.

In its observations, the opponent puts forward an argument that the earlier trade marks are all characterised by the presence of the same word component, ‘golden’. This claim, interpreted as a claim for ‘family of marks’ or ‘marks in a series’, does not need to be assessed in the present proceedings since it will not change the findings (already in favour of the opponent) or the outcome above. Consequently, it is not necessary for the Opposition Division to either address the evidence of use provided by the opponent in relation to the ‘family of marks’ claim or to comment on it referring to the applicant’s arguments in that respect.

As the earlier right examined above 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

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

Sylvie ALBRECHT

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.