OPPOSITION No B 3 028 894

Deoleo, S.A., Carretera N-IV, Kilómetro 388, 14610 Alcolea (Córdoba), Spain (opponent), represented by María José Garreta Rodríguez, Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Baia Curioni Stefano, Via Passione, 9, 20122 Milano, Italy (applicant), represented by Cuccia & Simino S.R.L., Corso di Porta Romana, 23, 20122 Milano, Italy (professional representative).

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 028 894 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 375 502 for the figurative mark . The opposition is based on European Union trade mark registrations No 11 843 026 for the figurative mark and No 11 842 572 for the figurative mark . 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 the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes, marmalade, gelatine for food; eggs, milk, yoghurt, cheese, butter, cream and milk products; edible oils and fats; prepared edible fats; olives, preserved, dressed, stuffed and in particular speciality forms thereof; pickles; salted meats; charcuterie; sausages; liver pâté; croquettes; broth; broth concentrates; soups; preparations for making soup; seaweed extracts for food; caviar; salad vegetables; fruit salads; crystallised fruits; preserved meat, fish, shellfish, molluscs, vegetables and garden herbs; frozen foods, prepared and precooked meals made from meat, fish, shellfish, mussels, fruits, vegetables, pulses and garden herbs; crisps (potato).

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; chocolate, chocolate-based beverages; rice, rice products and rice-based preparations not included in other classes; meal, flour-milling products, preparations made from cereals, roasted cereals, chips (cereal products), milled corn, crushed oats, oat-based food, barley meal, crushed barley, wheat flour, semolina for human food, couscous (semolina), buckwheat (black wheat) semolina, noodles, pasta, starch and starch for food; glucose and gluten for food; puddings; pizzas; sandwiches; bread, gingerbread, biscuits, cakes, cookies, crackers, waffles, crêpes, cake paste, pastry and confectionery; ice cream and frozen yoghurt; custard; honey, royal jelly for human consumption, golden syrup; yeast, baking-powder; mustard, sauces (condiments), mayonnaise, ketchup, tomato sauce, soya sauce, sauces for seasoning, fruit sauces and sauces or dressings for salad; condiments and spices; seasonings; spice mixes; salt, pepper, saffron, curry, chow-chow (condiment), capers, turmeric and aromatic preparations for food; vanilla (flavouring); vanillin (vanilla substitute); malt for food; sea water for cooking; thickening agents for cooking; vinegar of all kinds (including beer vinegar); ice.

The contested goods are the following:

Class 29: Olive oil; chilli oil; blended oil [for food]; extra virgin olive oil.

Class 30: Chili oil for use as a seasoning or condiment; condiments; sauces [condiments]; dressings for salad; dressings for food.

Contested goods in Class 29

The contested olive oil; chilli oil; blended oil [for food]; extra virgin olive oil are included in the broad category of the opponent’s edible oils and fats. Therefore, they are identical.

Contested goods in Class 30

Condiments; sauces [condiments]; dressings for salad are identically contained in both lists of goods.

The contested dressings for food include, as a broader category, the opponent’s dressings for salad. 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 chili oil for use as a seasoning and chili oil for use as condiment are included in the broad categories of the opponent’s seasonings and condiments, respectively. Therefore, they are identical.

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 are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade marks	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 element ‘OLIO’ is an Italian word meaning ‘oil’, and the element ‘OLEO’ is a Portuguese and Spanish word meaning ‘oil’. For the parts of the public (Italian-speaking, Spanish-speaking and Portuguese-speaking), these words may be singled out in the marks and both will be understood since they are very close to the equivalent word in the respective language. The elements ‘OLIO’ and ‘OLEO’ are non-distinctive for the relevant goods for this part of the public as they refer to the nature of the goods. However, for the remaining public the elements have no meaning and, therefore, a normal degree of distinctiveness.

The Opposition Division will first examine the opposition in relation to the part of the public for which the elements ‘OLEO’ and ‘OLIO’ have no meaning and have a normal degree of distinctiveness.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the above elements are distinctive for all the relevant goods and services.

Consequently, for this part of the public, there is no reason for the verbal elements of the marks to be broken down into parts; each mark will therefore be perceived as a whole.

The element ‘DEOLEO’ of the earlier marks and the element ‘EOLIO’ of the contested sign have no meaning for the relevant public under analysis and are therefore distinctive.

The figurative elements of the contested sign, depicting an exploding volcano in a frame and a small leaf above the letter ‘E’, have, as a whole, a normal degree of distinctiveness since they are not related to the goods in question.

The figurative element of the earlier marks, when used in relation to the relevant goods, will be perceived as a depiction of an olive. Therefore, this element is weak for the relevant goods (which are or may be made from olives).

Moreover, contrary to the opponent’s opinion, none of the elements of the contested sign or the earlier marks can be considered more dominant (eye-catching) than the others.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘E-O-L-*-O’, although they differ in the initial letter ‘D’ and the penultimate letter ‘E’ of the verbal element ‘DEOLEO’ in the earlier marks, and in the letter ‘I’ of the verbal element ‘EOLIO’ in the contested sign. The signs also differ in the additional figurative elements described above.

The similar length of the marks is not of any particular significance for the relevant public. Moreover, since the alphabet is made up of a limited number of letters, which are not all used with the same frequency, it is inevitable that many words will share some of them.

Bearing in mind that the beginnings of the signs are different, which has more impact on the consumers, and that they have different figurative elements, which, although less important than the verbal elements of the sign, will still play a relevant role in the visual impressions created by the marks, it is considered that the signs are 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 coincides in the sound of the letters ‘E-O-L-*-O’, present identically in both signs. The pronunciation differs in the sound of the first letter ‘D’ and the penultimate letter ‘E’ of the earlier mark, which have no counterparts in the contested mark, and in the sound of the letter ‘I’ of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, neither of the verbal elements has a meaning for the public under analysis. However, both signs have some figurative elements with different concepts, namely a depiction of an olive on the one hand and an exploding volcano in a frame and a small leaf on the other. As the signs will be associated with dissimilar concepts, the signs are conceptually not 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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of weak figurative elements 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).

In the present case, the goods are identical and directed at the public at large, whose degree of attentiveness is average. The distinctiveness of the earlier marks is normal for the part of the public under analysis, for whom it has no meaning in relation to the goods in question.

The signs are visually similar to a low degree, aurally similar to a below-average degree and conceptually not similar.

The goods themselves are fairly ordinary consumer products that 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).

The different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the beginnings of the verbal elements are different, which has more impact on the consumers, and the relevant goods are ordinary consumer products, for which the visual impact of the marks is more important.

Considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the verbal elements ‘OLEO’ and ‘OLIO’ (if dissected) are non-distinctive. This is because, as a result of the non-distinctive character of those elements, that part of the public will perceive the signs as being even less similar.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Boyana NAYDENOVA

Ali KÜÇÜKŞAHİN

Martin INGESSON

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.