OPPOSITION No B 3 032 078

Bunge Gida Sanayi Ve Ticaret Anonim Sirketi, Centrum, Is, Merkezi, Aydinevler, Sanayi, Cad., No:3/301, Kucukyali, Maltepe, Istanbul, Turkey (opponent), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Merschbrock-Wiese GmbH & Co. KG, Ludwig-Erhard-Str. 3-5, 33397 Rietberg, Germany (applicant), represented by Rechtsanwälte Schils & Kollegen, Vossenstraße, 4, 33332 Gütersloh, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 032 078 is upheld for all the contested goods.

2. European Union trade mark application No 17 322 124 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all of the goods of European Union trade mark application No 17 322 124 for the word mark ‘MARA’. The opposition is based on European Union trade mark registration No 11 989 423 for the word mark ‘MADRA’. 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.

In the present case, 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.

1. The goods

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

Class 29: Meat, fish, meat of poultry and game and all kinds of processed meat products; dried leguminous, ready-made soups, bouillons; olives, olive paste; milk and milk products including butter, edible vegetable oils; all sorts of dried, preserved, frozen, cooked, smoked, pickled fruits and vegetables including pollen prepared as foodstuff; dried fruits and nuts; puree of hazelnut and peanut, tahin crushed sesame seeds; eggs, powdered eggs; potato crisps.

Class 30: Coffee, cocoa, coffee or cocoa-based beverages, chocolate-based beverages; macaroni, meat pies, vermicelli; products of patisserie and bakery, desserts; honey, propolis; flavourings for foods; yeast, baking powder; any kind of flour, semolina, starch; sugar, lump sugar, powdered sugar; teas, ice-teas; confectioneries, chocolates, biscuits, crackers, wafers; chewing-gums; ice creams, edible ices; salt; cereals and their products.

As regards the contested goods, according to Article 147(3) EUTMR, in cases of doubt, the text in the language of the Office in which the application for the EU trade mark was filed shall be authentic. In the present case, the contested application was filed in German and the list of goods in German is, therefore, the authentic version. The goods listed in Class 30 in German in the contested sign are the following:

Class 30: Fertiggerichte, Teilfertiggerichte und verzehrfertige lmbissprodukte aus Backwaren und/oder Nudeln und/oder Reis und/oder Saucen; Reiserzeugnisse, soweit in Klasse 30 enthalten; Semmelknödel; Gewürze, Gewürzmischungen; konservierte Küchenkräuter und Küchenkräutermischungen; Speisewürze, insbesondere in flüssiger Form, Würzmittel; Saucen [einschließlich Salatsaucen]; Saucenfonds und Saucenansätze; Ketchup; Teigmischungen und vorbereitete Teige.

The Opposition Division notes that the German term ‘Reiserzeugnisse, soweit in Klasse 30 enthalten’ means ‘Rice products, included in Class 30’, not ‘Travel goods, included in class 30’ as indicated in the English version of the list of goods.

In view of this, the Opposition Division will consider that the contested goods are the following:

Class 29: Binding products, being cooking aids in dried form, consisting of vegetables and/or herbs and/or mushrooms being foodstuffs; Prepared meals, semi-prepared meals and ready-to-eat snacks, mainly consisting of meat and/or meat products and/or poultry and/or poultry products and/or fish and/or fish products and/or shellfish and/or molluscs and/or vegetables and/or fruits and/or mushrooms and/or cheese; Potato products, included in class 29; Soups, Soup stocks, Broths, Stock cubes, Stock.

Class 30: Prepared meals, semi-prepared meals and ready-to-eat snacks consisting of baked goods and/or noodles and/or rice and/or sauces; Rice products, included in class 30; flour-based dumplings; Spices, mixed spices; Preserved garden herbs and mixed garden herbs; Condiments, in particular in liquid form, seasonings; Sauces (including salad dressing); Sauce stocks and sauce bases; Tomato ketchup; Dough mix and Prepared dough.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods

The term ‘including’ used in the applicant’s and the opponent’s respective list of goods and the term ‘in particular’ in the applicant’s list of goods indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 potato products, included in class 29 include, as a broader category, the opponent’s potato crisps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

The contested soups include the opponent’s dried leguminous, ready-made soups. Therefore, they are considered identical.

The contested broths also include, or otherwise overlap with, the opponent’s dried leguminous, ready-made soups. Therefore, they are considered identical.

The contested soup stocks; stock cubes, stock include, are included in, or overlap with, the opponent’s bouillons. Therefore, they are identical.

The contested binding products, being cooking aids in dried form, consisting of vegetables and/or herbs and/or mushrooms being foodstuffs are at least similar to the opponent’s all sorts of dried, preserved, frozen, cooked, smoked, pickled fruits and vegetables including pollen prepared as foodstuff since they can at least target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The contested prepared meals, semi-prepared meals and ready-to-eat snacks, mainly consisting of meat and/or meat products and/or poultry and/or poultry products and/or fish and/or fish products and/or shellfish and/or molluscs and/or vegetables and/or fruits and/or mushrooms and/or cheese are also at least similar to either one or various of the opponent’s respective broad categories of meat, fish, meat of poultry and all kinds of processed meat products; milk products including butter; all sorts of dried, preserved, frozen, cooked, smoked, pickled fruits and vegetables including pollen prepared as foodstuff; dried fruits since these goods, even if some may be identical (such as the contested ready-to-eat snacks, mainly consisting of fruits and the opponent’s dried fruit which can both consist of dried ready-to-eat fruit snacks), do at least target the same relevant public, share the same distribution channels and may be produced by the same undertakings.

Contested goods in Class 30

The contested prepared meals, semi-prepared meals and ready-to-eat snacks consisting of baked goods are included in, or overlap with, the opponent’s broad category of products of patisserie and bakery. Therefore, they are identical.

The contested prepared meals, semi-prepared meals and ready-to-eat snacks consisting of rice; rice products, included in class 30 are included in the broad category of the opponent’s cereals and their products, which also include rice products. Therefore, they are identical.

The contested prepared meals, semi-prepared meals and ready-to-eat snacks consisting of sauces, which include such goods made with fruit sauces, are highly similar to the opponent’s preserved fruits in Class 29 since they can have the same purpose, target the same relevant public, share the same distribution channels and be produced by the same undertakings. Furthermore, they can also be in competition.

The contested prepared meals, semi-prepared meals and ready-to-eat snacks consisting of noodles are highly similar to the opponent’s vermicelli since they can have the same purpose, target the same relevant public, share the same distribution channels and be produced by the same undertakings. Furthermore, they can also be in competition.

The contested condiments, in particular in liquid form; tomato ketchup are also highly similar to the opponent’s preserved fruits in Class 29 for the same reasons as those outlined above.

The contested flour-based dumplings are similar to the opponent’s meat pies since they target the same relevant public and can share the same distribution channels. Furthermore, they can also be produced by the same undertakings and be in competition.

The contested spices, mixed spices; preserved garden herbs and mixed garden herbs; seasonings are similar to the opponent’s flavourings for foods since they can have the same purpose and method of use; they target the same relevant public and can share the same distribution channels.

The contested dough mix and prepared dough are similar to opponent’s products of patisserie and bakery since they can have the same purpose, target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The contested sauces (including salad dressing); sauce stocks and sauce bases are similar to the opponent’s edible vegetable oils in Class 29 since they can have the same purpose and method of use; they target the same relevant public and can be in competition.

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 to varying degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

MADRA	MARA
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.

A part of the public may associate the contested word mark ‘MARA’ with a female given name (e.g. in Bulgaria, Italy and Romania) but another part of the public will perceive it as a fanciful word without any meaning (such as in Germany, Estonia and Lithuania). As regards the earlier word mark ‘MADRA’, it has no meaning in any part of the European Union and will therefore be perceived as a fanciful word throughout the relevant territory. Since a conceptual difference between the signs could help the consumer to more easily distinguish between them, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public in the relevant territory for which both signs are meaningless, such as that in Germany, Estonia and Lithuania.

Each of the signs is composed of one word. As explained above, neither of the words have a meaning for the part of the public under analysis and are, therefore, distinctive to a normal degree.

Visually, the signs coincide in the letters ‘MA(*)RA’ and differ only in the letter ‘D’ in the middle of the earlier mark, which has no counterpart in the contested sign. Considering this and that neither of the signs has any particular stylisation, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MA*RA’, present identically in both signs. The pronunciation of the signs only differs in the sound of the additional letter ‛D’ in the middle of the earlier mark. The applicant argues that this additional letter cuts the earlier mark ‘MADRA’ into two syllables. However, whilst the Opposition Division agrees that the earlier mark will be pronounced in two syllables, ‘MA-DRA’, the same is also true for the contested sign, which will be pronounced as ‘MA-RA’. Consequently, considering that both signs will have the same rhythm and intonation and that the additional letter ‛D’ in the middle of the earlier mark will not produce a significant aural difference between them, the signs are also aurally highly similar.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 8 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 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).

In the present case, the goods concerned have been found partly identical and partly similar to various degrees. The goods are directed at the public at large and the degree of attention is average. The earlier mark has a normal distinctiveness and the signs have been found visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

In view of the foregoing, taking into account the considerable similarities between the signs and the principles of interdependence and imperfect recollection as outlined above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-, Estonian- and Lithuanian-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 trade mark registration No 11 989 423. It follows that the contested trade mark must be rejected for all the contested goods.

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

Sam GYLLING

Martin INGESSON

Catherine MEDINA

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.