OPPOSITION No B 3 035 147

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- Und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

Francis Busuttil and Sons Limited, 1 Misrah, St. Venera, Malta (applicant), represented by Ganado Advocates, 171 Old Bakery Street, VLT 1455 Valletta, Malta (professional representative).

On 15/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 147 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 335 316 ‘Kwik Mix’, namely against some of the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 8 457 351 ‘Knick & Mix’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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: Milk products, yoghurt.

The contested goods are the following:

Class 29: Milk; skimmed milk; cream; cream products; whipped cream or cream toppings used on cakes and/or fruit; milk beverages; milk shakes; milk products.

Class 30: Custards; custard powder and custard mixes; puddings; traditional pudding with rose flavour base; creme caramel; ices; chocolate beverages with milk; chocolate based beverage; cocoa beverages with milk; cocoa based beverages.

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 milk; skimmed milk; cream; cream products; whipped cream or cream toppings used on cakes and/or fruit; milk beverages; milk shakes; milk products are identical to the opponent’s milk products, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

Contested goods in Class 30

The contested ices are to be understood as ‘ice creams’, a smooth, sweet and cold food prepared from a mixture of milk products and/or flavourings and often eaten as a snack or dessert. They are highly similar to the opponent’s milk products as they coincide in their nature and intended purpose. They usually have the same producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested puddings; traditional pudding with rose flavour base; creme caramel; chocolate beverages with milk; chocolate based beverage; cocoa beverages with milk; cocoa based beverages are sweet puddings and drinks just as the opponent’s milk products in Class 29 might be. Moreover, the opponent’s goods may also include milk-based puddings and drinks. Therefore, the goods in question serve the same purpose and may coincide in their producer, relevant public, distribution channels and methods of use. Furthermore, they are in competition. Therefore, they are similar.

The contested custards; custard powder and custard mixes do not have sufficient commonalities with the opponent’s goods in Class 29 that would allow finding a degree of similarity between them. Custard is a mixture of eggs, milk, sugar, and flavourings that attains its consistency by the coagulation of the egg protein by heat. Baked custard contains whole eggs, which cause the dish to solidify to a gel (information extracted from Encyclopaedia Britannica Academic on 30/09/2019 at https://academic.eb.com/levels/collegiate/article/custard/28318). Custard powder and custard mixes are preparations for making custard. The mere fact that these goods may contain milk and are, broadly speaking, foodstuffs is not sufficient to make them similar to the opponent’s goods, as their nature is quite distinct. In addition, these goods usually have a different commercial origin and are not normally displayed on the same shelves even if sold in the same establishments. Furthermore, they are not in competition or interchangeable. Therefore, they are dissimilar.

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

Knick & Mix	Kwik Mix
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark, consisting of the word ‘Knick’, an ampersand (‘&’) and the word ‘Mix’. A part of the relevant public (e.g. the German-speaking part of the public) will perceive the word ‘Knick’ as meaningful (meaning ‘bend’). For the remaining part of the public the word ‘Knick’ will be meaningless. The ampersand symbol is commonly used in trade to depict the conjunction ‘and’, and it will be perceived as such by the relevant consumers. Although its only purpose is to link two words, taking into account its independent role in the earlier mark and the fact that it does not refer to any characteristics of the goods in question, it is distinctive.

The contested sign is a word mark, consisting of the words ‘Kwik’ and ‘Mix’. The word ‘Kwik’ of the contested sign will be perceived as meaningful by, for example, the Dutch- and Polish-speaking part of the public (as meaning ‘mercury’ and ‘squeak, squeal (noise)’, respectively). Moreover, due to its phonetical similarity to the English word ‘quick’, it will be perceived by at least the English-speaking part of the public as a misspelling of this word. For the remaining part of the public this word is meaningless.

The word ‘Mix’, present in both signs, is a basic English word and will be understood as meaning ‘two or more different things combined’ by the relevant public throughout the European Union, irrespective of their native language (09/04/2019, R 1734/2018‑4, STAR-MIX (fig.) / STAR (fig.) et al., § 34). Due to its common use in the relevant market in relation to various food products, the verbal element ‘Mix’ in both marks will be seen as direct reference to the characteristics of the goods, namely, that the goods in question are a mixture of or are to be mixed with various ingredients. Therefore, the verbal element ‘Mix’ in both marks is very weak or even non-distinctive in relation to the relevant goods in Classes 29 and 30.

Considering the abovementioned possible perceptions of the words ‘Knick’ in the earlier mark and ‘Kwik’ in the contested sign, the Opposition Division will continue with the assessment of similarity from the perspective of the part of the public that will perceive the word ‘Knick’ and the word ‘Kwik’ as meaningless. In the absence of any meanings that could differentiate these words and, consequently, the signs, from each other, this part of the public is more prone to confusion, and that represents the most advantageous scenario for the opponent.

When perceived as meaningless, the word ‘Knick’ of the earlier mark and the word ‘Kwik’ of the contested sign have an average degree of distinctiveness. Regarding dominant elements, according to established practice, the notion of dominance relates only to the visual impact of the elements of a sign; that is, ‘dominant’ is used exclusively to mean ‘visually outstanding’. Consequently, the dominant element of a sign is mainly determined by its position, size and/or colour. Moreover, according to the Office’s practice, word marks have no dominant elements, since they are written in standard typefaces and have no elements that could be considered visually outstanding in the overall composition of the mark. Therefore, contrary to the opponent’s assertions, neither the earlier mark nor the contested sign has any dominant element.

Visually, the signs are similar to the extent that they coincide in the first and last letters ‘K’ and in the letter ‘i’ of their first verbal elements ‘Knick’ and ‘Kwik’. The signs also coincide in their verbal element ‘Mix’. However, the signs differ in the second and fourth letters ‘n’ and ‘c’ of the earlier mark and in the second letter ‘w’ of the contested sign, as well as in the ampersand of the earlier mark.

It is true the signs share the same verbal element ‘Mix’. However, its impact on creating similarity between the signs is minimal or even non-existent as this word is very weak or even non-distinctive (for the reasons explained above) for the goods in question. Moreover, it is the second verbal element in both signs. As correctly pointed out by the applicant, consumers generally tend to focus on the first element 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. For all these reasons, the relevant consumers will not pay much attention to the element ‘Mix’ but will focus on the more distinctive elements at the signs’ beginnings.

The opponent claims that both signs are composed of two words and share most of their letters and that even their differing parts might be similar if written in a stylised typeface. However, although the distinctive elements, ‘Knick’ of the earlier mark and ‘Kwik’ of the contested sign, have the same letter ‘k’ as their first and last letters, the presence of the striking letter ‘w’ in the middle part ‘wi’ of the contested sign creates a clearly perceptible visual difference from the middle part ‘nic’ of the earlier mark, regardless of the presence of the same letter ‘i’. Regarding the possible typefaces referred to by the opponent, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Moreover, when assessing a likelihood of confusion under Article 8(1)(b) EUTMR, the marks must be compared on the basis of how they are registered or applied for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145, § 35). Since both marks are registered/applied for as word marks, any possible stylisations in which the signs might be depicted or how they might be used are irrelevant.

Moreover, the signs’ distinctive elements, ‘Knick’ of the earlier mark and ‘Kwik’ of the contested sign, are rather short words, consisting of five and four letters, respectively. Consequently, the public will be able to more easily perceive all of their individual letters and will notice the clear difference between their middle parts ‘nic’ and ‘wi’, as well as the difference between the letter combination ‘ck’ and a single consonant ‘k’ at their endings. In addition, due to the difference in the length of the words in question, the letter ‘i’ will not be seen by the relevant consumers as appearing in the same position, as it is the penultimate letter in the element ‘Kwik’ of the contested sign and exactly in the middle of the element ‘Knick’ of the earlier mark. Therefore, the coincidence in this letter will not attract the consumer’s attention.

Furthermore, the earlier mark has the additional element of an ampersand (‘&’), which creates additional perceptible visual differences in the overall impression of the earlier mark. Therefore, contrary to the opponent’s assertions, it cannot be unambiguously stated that the signs under comparison have the same structure, since the earlier mark will be seen by the relevant consumers as composed of three elements (two words and an ampersand), while the contested sign will be seen as composed of two words only.

Considering all the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier mark and, therefore, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide in the sounds of the first and last letters ‘K’ and of the letter ‘i’ of the verbal elements ‘Knick’ and ‘Kwik’ of the earlier mark and the contested sign, respectively. The pronunciation also coincides in the sound of the common element ‘Mix’ present in both marks. The pronunciation differs in the remaining letters of the first verbal elements, namely ‘n’ and ‘c’ (for part of the public) of the earlier mark and ‘w’ of the contested sign, as well as in the pronunciation of the ampersand in the earlier mark, which will be pronounced as the word ‘and’ in the relevant languages.

As correctly pointed out by the opponent, the pronunciation of the words ‘Knick’ of the earlier mark and ‘Kwik’ of the contested sign will coincide in three sounds, for the part of the public that will pronounce ‘c’ in the word ‘Knick’ as /k/. However, the signs still differ in the pronunciation of their second letters ‘n’ and ‘w’, as well as in the pronunciation of the ampersand in the earlier mark. Consequently, when taken as a whole, the earlier mark, ‘Knick & Mix’, will be pronounced in three syllables, while the contested sign, ‘Kwik Mix’, will be pronounced in two syllables, and this will create different rhythms and intonations.

Taking into account the above and the fact that the coinciding element ‘Mix’ is very weak, if not non-distinctive, the signs are considered aurally similar to an average degree at most.

Conceptually, neither the distinctive element of the earlier mark, ‘Knick’, nor the distinctive element of the contested sign, ‘Kwik’, has a meaning for the public on which the assessment focuses. Although the verbal element ‘Mix’, present in both signs, will bring to mind a concept (as explained above), considering the weight attributed to this element, the attention of the relevant public will not be attracted to it and it therefore is not capable of creating any conceptual similarity between the marks. Since the only purpose of the ampersand (‘&’) in the earlier mark is to link two words, it is not considered as having a concept and therefore is not capable of creating any conceptual difference between the signs.

As the most distinctive verbal elements of the signs do not convey any concepts, a conceptual comparison is not considered possible, and 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak or even non-distinctive element in the mark, as stated above in section c) of this decision.

5. 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).

As concluded above, the contested goods are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods. The relevant goods target the public at large whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The earlier mark and the contested sign are similar insofar as they coincide in the initial and the last letter of their distinctive verbal elements and have an additional weak or even non-distinctive verbal element in common. However, as explained in detail in section c), these commonalities can only lead to a finding of a low degree of visual similarity and at most an average degree of aural similarity.

Furthermore, the goods themselves are fairly ordinary consumer products. The degree of aural similarity between the two marks is of less importance for goods that are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods visually, as is the case for the goods at issue that have been considered identical or similar (to varying degrees). These goods are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). As the initial and distinctive elements in both signs are rather short words, ‘Knick’ and ‘Kwik’, the considerable and striking visual differences caused by their middle letters, as well as the presence of the ampersand in the earlier trade mark, which also creates a perceptible difference in structure of the signs, will definitely be noticed by the relevant consumers and are particularly relevant when assessing the likelihood of confusion between them.

The presence of the common element ‘Mix’ in both signs does not have much of an impact and is insufficient to lead to a likelihood of confusion (including likelihood of association), since this element, as explained above, is commonly used in the relevant market when referring to characteristics of the goods in question and is very weak at most, if not non-distinctive. Therefore, this coincidence will not be attributed any decisive importance by the relevant consumers, since the word ‘Mix’ may be used by any undertaking in the relevant market and has no capacity to serve as an indication of commercial origin of the goods in question. Moreover, due to the meaninglessness of the signs’ most distinctive verbal elements, they do not have any conceptual link that would lead the relevant public to associate them with each other.

The Opposition Division agrees with the opponent 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). However, the similarities between the signs (especially between their most distinctive verbal elements) are clearly insufficient to allow the assumption that the relevant consumers, seeing the contested sign in the absence of the earlier mark, in view of only their general recollection of marks, would be liable to be confused and think that the contested sign was the same as or related to the earlier mark.

Considering the above and weighting all the relevant factors, it can be concluded that the differences between the signs are striking enough to clearly outweigh their commonalities. Therefore, a likelihood of confusion, including a likelihood of association, on the part of the relevant public can be safely excluded, even in relation to identical goods.

The opponent refers to previous decisions of the Office to support its arguments, namely:

• 27/09/2017, B 2 060 385, Free Soul / Red Soul

• 12/06/2012, B 1 874 380, Hood Star / Hot Star

• 27/02/2007, B 757 874, CAR SHOE / KART-SHOE.

However, in the decisions referred to by the opponent, the signs either fully coincided in their distinctive elements or had a clear conceptual link from the perspective of the relevant public in relation to which the assessment was made. Neither of these scenarios is fully applicable to the present case. It follows that the decisions referred to by the opponent cannot be considered comparable to the present case and the outcome will not necessarily be the same. Furthermore, two decisions referred to are about or even more than ten years old and cannot be considered as reflecting the Office’s present practice.

Moreover, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

For the sake of completeness, the Opposition Division points out that there is no need to compare the signs from the perspective of the part of the public that perceives the abovementioned meanings of the words ‘Knick’ of the earlier mark and/or the word ‘Kwik’ of the contested sign. If there is no likelihood of confusion for those consumers who do not perceive any meaning in these words, a fortiori there is no likelihood of confusion for those consumers who perceive them as meaningful, since the coinciding element ‘Mix’ will be still weak or even non-distinctive in relation to the goods in question and the initial elements will convey completely different meanings. Since these two factors would make confusion even less likely, the outcome of the present decision would not be different.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irina SOTIROVA

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.