OPPOSITION No B 3 010 397

Monolith Süd GmbH, Hertzstr. 3/1, 71083 Herrenberg, Germany (opponent), represented by Greenfield IP Stoll Schulte Rechtsanwälte Partnerschaftsgesellschaft mbB, Kehrwieder 8, 20457, Hamburg, Germany (professional representative)

a g a i n s t

Lizard Holding S.L., Carretera de Arinsal Borda del Prat de la Font, AD400 Arinsal, Andorra (applicant), represented by Abogados Daudén S.L.P., Avenida Maisonnave 11-2º, 03003 Alicante, Spain (professional representative).

On 09/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 010 397 is upheld for all the contested goods, namely:

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

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

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beer).

2. European Union trade mark application No 17 333 022 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 333 022 for the word mark ‘BURATINO’, namely against all the goods in Classes 29, 30, 32 and 33. The opposition is based on European Union trade mark registration No 16 736 621 for the word mark ‘Buratino’. 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.

a) The goods

The goods on which the opposition is based, after limitation by the opponent from 27/04/2018, are the following:

Class 29: Meat; meat spreads; fish, seafood and molluscs; fish and seafood spreads; dairy products, other than butter, butter preparations, butter oil (clarified butter), butter concentrate, margarine, lard; cheese; birds eggs and egg products; processed fruits, fungi and vegetables (including nuts and pulses); jellies, jams, compotes, fruit and vegetable spreads; soups and stocks, meat extracts; prepared insects and larvae; sausage skins and imitations thereof; crystallized fruits.

Class 30: Salts, seasonings, flavourings and condiments; savory sauces, chutneys and pastes; bread; dried cakes, waffles, fruit bread, cakes, tarts and biscuits; sweetmeats, sweetmeats, chocolates, candy bars and chewing gum; cereal bars and energy bars; sugars, natural sweeteners, sweet coatings and fillings, bee products; syrups and treacles; sweet glazes and fillings; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed cereals and starches for foodstuffs, and goods made therefrom, in particular sweet and savoury corn sticks, bakery products and yeast; dried and fresh pastas, noodles and dumplings; cereals; rice; flour; breakfast cereals, porridge and grits; yeast and leavening agents; doughs, batters, and mixes therefor.

Class 32: Beer and brewery products; non-alcoholic beverages; nut and soy based beverages; flavoured carbonated beverages; juices; waters; preparations for making beverages.

The contested goods, after limitation by the applicant from 22/02/2018, are the following:

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

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

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beer).

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicates 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).

Moreover, 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 meat; fish; meat extracts; jellies, jams, compotes are identically contained in both lists of goods.

The contested poultry; game are included in the opponent’s broad category meat. Therefore, they are identical.

The contested preserved, frozen, dried and cooked fruits are included in, or overlap with, the opponent’s processed fruits (including nuts and pulses). Therefore, they are identical.

The contested preserved, frozen, dried and cooked vegetables are included in, or overlap with, the opponent’s processed vegetables (including nuts and pulses). Therefore, they are identical.

The contested eggs include, as a broader category, the opponent’s birds eggs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 30

The contested sugar; coffee, tea, cocoa; rice; bread; flour; treacle; yeast; salt; ice are identically contained in both lists of goods.

Ices are to be understood as ice creams. Therefore, the contested ices and the opponent’s ice creams are, as synonyms, identical.

The contested artificial coffee is included in the opponent’s coffee and substitutes therefor. Therefore, they are identical.

The contested tapioca and sago are included in the opponent’s starches for foodstuffs. Therefore, they are identical.

The contested preparations made from cereals include, as a broader category, the opponent’s breakfast cereals. 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 pastry is included in the opponent’s broad category of bakery products. Therefore, they are identical.

The contested confectionery includes, as a broader category, the opponent’s chocolates. 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 baking-powder is included in the opponent’s leavening agents. Therefore, they are identical.

The contested sauces (condiments) are included in the opponent’s condiments. Therefore, they are identical.

The contested spices and the opponent’s seasonings overlap. Therefore, they are identical.

The contested honey is included in the opponent’s bee products. Therefore, they are identical.

The contested mustard and the opponent’s condiments have the same purpose and are in competition. Furthermore, they are sold through the same distribution channels, target the same relevant public and are produced by the same undertakings. Therefore, they are highly similar.

The contested vinegar and the opponent’s seasonings have a similar purpose. Furthermore, they are sold through the same distribution channels, target the same end users and are produced by the same undertakings. Therefore, they are similar.

Contested goods in Class 32

The contested beer is identically contained in both lists of goods.

The contested mineral waters and other non-alcoholic drinks are included in the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested fruit beverages and fruit juices are included in, or overlap with, the opponent’s juices. Therefore, they are identical.

The contested syrups and other preparations for making beverages are included in the broad category of the opponent’s preparations for making beverages which in this class could be only non-alcoholic. Therefore, they are identical.

Contested goods in Class 33

The contested alcoholic beverages (except beer) and the opponent’s beer in Class 32 have a similar nature. Furthermore, they are sold through the same distribution channels, target the same end users and are usually produced by the same undertakings. Therefore, they are similar.

b) The signs

Buratino	BURATINO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs are word marks. This means not only that they do not offer protection for any particular figurative element or appearance, but also that differences in the use of lower- or upper-case letters are immaterial, even if a combination of lower-case and upper-case letters is used (31/01/2013, T 66/11, Babilu, EU:T:2013:48, § 57).

Therefore, they are identical.

c) 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/or 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).

The identity of the signs in conflict implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

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 European trade mark registration No 16 736 621.

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Furthermore, the remaining contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these 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, 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

Valeria ANCHINI

Meglena BENOVA

Cristina SENERIO LLOVET

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.