OPPOSITION No B 3 055 759

Saki Masoud, Großmannstraße 88, 20539 Hamburg, Germany (opponent), represented by RGTH Patentanwälte PartGmbB, Neuer Wall 10, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Aram Abdullah, 145 Milton Walk, Doncaster DN1 3QL, United Kingdom, (applicant), represented by Trademark Eagle Limited, Unit 4, Valley Court Offices, Lower Road, Croydon SG8 0HF, United Kingdom (professional representative).

On 10/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 759 is partially upheld, namely for the following contested goods:

Class 29: Meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; prepared meals made from dried and cooked fruits, meat, fish, poultry, eggs and game; soups; potato crisps; dried fruit, mixtures of nuts and dried fruits, dried tropical fruits; food products made from dried fruits and nuts; prepared snacks for human consumption made from dried fruit; edible, prepared and processed nuts; edible, prepared and processed seeds; snack bars made of dried fruits, mixture of nuts and dried fruits, dried tropical fruits; snack foods made of dried fruits, cooked fruits, meat, fish, poultry, eggs and game; foodstuffs in the form of snacks made of dried fruits, cooked fruits, meat, fish, poultry eggs and game; dried foods made of nuts and dried fruits; snack bars containing nuts or dried fruits.

Class 30: Rice; preparations made from cereals, confectionery; sauces (condiments); fruit sauces; spices; prepared meals made of rice, cereals; cereal bars, energy bars, flapjack, flapjack bars containing fruits or nuts, seed bars, cereal breakfast foods; cereals and preparations made wholly or principally of cereals, all for human consumption; dried foods made of rice, cereals; prepared snack foods made of rice, cereals; constituents for prepared meals of rice, cereals; snack bars containing grains or seeds; food mixtures consisting of cereal flakes and dried fruits; nut confectionery.

2. European Union trade mark application No 17 393 018 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 393 018 for the figurative mark , namely against all the goods in Classes 29 and 30. The opposition is based on German trade mark registration No 30 457 344 and international trade mark registration No 847 615 designating the European Union, both for the figurative mark . 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 marks have been put to genuine use in the territories in which they are protected in connection with the goods or services for which they are registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier marks are subject to the use obligation if, at that date, they have been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely German trade mark registration No 30 457 344 and international trade mark registration No 847 615 designating the European Union. As these trade marks cover the same scope of protection, the Opposition Division will only analyse the evidence on proof of use in relation to German trade mark registration No 30 457 344.

The date of filing of the contested application is 27/10/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 27/10/2012 to 26/10/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 29: Preserved, dried and cooked fruits and vegetables.

Class 30: Rice.

The evidence concerning proof of use is as follows:

Annex No 1:

Three lists for the years 2013-2017, signed by the opponent, showing turnovers in euro achieved with the trade marks ‘Khanum Khanuma’, including German trade mark registration No 30 457 344. The list of the latter indicates the following goods: preserved, dried and cooked fruits and vegetables; rice. In its letter, the opponent explained that the prices were given in euro. According to the opponent, ‘in the past 5 years and also in the years before … the two opposition trade marks achieved annual turnovers of more than EUR 10 million’.

Annex No 2:

Several sale invoices for the years 2013-2017 issued by the opponent. These invoices show sale of various products labelled with the trade marks, mainly ‘Khanum Khanuma’, for example , or occasionally ‘Khanuma’, for example (these trade marks appear next to the vast majority of products). These invoices were issued for some clients, mainly in Germany, but also in Austria, Belgium, Hungary and the United Kingdom. They are in German (translations submitted afterwards by the opponent upon the applicant’s request). The prices are given in euro.

Bearing in mind the goods that are registered under the trade mark concerned, the invoices contain references to the following products:

- Pickled vegetables fine Khanum Khanuma, pickled vegetables Khanum Khanuma, pickled vegetables Lite Khanum Khanuma, pickled limes Khanum Khanuma, pickled garlic red Khanum Khanuma, rice Khanum Khanuma, pickled ghure Khanum Khanuma, pickled vegetables salted Khanum, pickled gherkins G2 Khanum Khanuma, rice golden Khanum Khanuma, salted gherkins G0 Khanum Khanuma, dried limes Khanum Khanuma, fried onion Khanum Khanuma, tomato paste Khanum Khanuma, barley soup Khanum Khanuma (these goods appear often in the invoices),

- Soup noodles Khanum Khanuma, dried orange peel Khanum Khanuma, pomegranate paste Khanum Khanuma, dried sour cherries Khanum Khanuma, dried date Khanum Khanuma, marmalade Khanum Khanuma (these goods appear rather occasionally in the invoices).

It should be noted that the invoices also contain products that are not registered under the trade mark in question, for example tea, bread, coffee. The latter will not be taken into account.

Annex No 3:

Some purchase invoices for ‘tea’ and ‘rice’ issued for the opponent. They are mainly in English, are dated both within and outside the relevant period and the prices are given in euro and US dollar. The following marks appear on these invoices, for example and .

Annex No 4:

Some printouts from the magazine ‘PERSIA MAGAZIN EUROPA’ with examples of the opponent’s advertisements. These materials are bilingual as they are mainly in Persian/Arabic and, to some extent, in German (only some basic information is given in German). They are dated within the relevant period (mainly from 2015). Two of the advertisements show the mark and products offered by the opponent: , , and .

Annex No 5:

Some internet extracts (i.e. from the opponent’s Facebook and Instagram sites) showing some of the opponent’s advertising activities concerning the opposition trade mark ‘Khanum Khanuma’, for example . These materials are partly in German and partly in Persian/Arabic and relate to tea and rice. The evidence also contains some invoices issued to the opponent for advertising services.

Annex No 6:

A set of documents showing the opponent’s participation in three international food trade fairs in Cologne, Paris and Poznan. According to the opponent, ‘the compilation of documents includes an extract from the catalogue of the “Anuga” of 2017 (Cologne), in which the opponent is listed as exhibitor, invoices regarding the rent of the respective booth and pictures of the booth of the opponent’. An undated picture of some products with the mark in question is presented, namely .

Annex No 7:

A picture of a company car of the opponent which is labelled with some advertisements, namely . A corresponding invoice for the labelling of the car is also submitted (issued in May 2007). The documents are in German and the prices are given in euro.

In addition, the opponent referred to some videos available on Youtube (e.g. https://www.youtube.com/watch?v=hviZSujduUMas) and to its own website (www.khanumkhanuma.com). With regard to these latter materials, it should be explained that the Opposition Division is not obliged to open any links mentioned by the parties as the parties have to present the content in order to support their claims. Therefore, these materials will not be taken into account.

Assessment of evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence submitted as proof of use can include documents such as invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press cuttings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark has been genuinely used on the market. The opponent submitted some of the aforesaid documents, namely several invoices, three lists showing turnovers achieved with the trade mark concerned, some photographs of the opponent’s products (with labels) and some documents relating to advertisements, the opponent’s participation in trade fairs and the picture of the opponent’s car.

The applicant argues that the opponent did not submit translations of some of the evidence of use (e.g. invoices and magazines) and that, therefore, this evidence should not be taken into consideration. Upon request by the applicant, the opponent submitted translations of the invoices and some other documents. The magazines are in Arabic (or Persian) and contain some advertisements, both in Arabic (or Persian) and in the Latin alphabet. The verbal elements ‘KHANUM KHANUMA’ appear on these advertisements. It should be noted that the opponent is not under any obligation to translate the proof of use, unless specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of these untranslated documents that are considered relevant for the present proceedings, namely the magazines and their self-explanatory character, the Opposition Division considers there is no need to request a translation. Therefore, the applicant’s claim must be set aside.

Place of use

The evidence, predominantly the invoices (Annex No 2), confirms Germany as the place of use. This can be inferred from the addresses indicated in the invoices and the fact that the documents are in German and the prices are in euro. In addition, the opponent indicated that it participated in some trade fairs (including in Germany) and published some advertisements (in Germany). Some of the invoices also concern the opponent’s clients in Austria, Belgium, Hungary and the United Kingdom. Following the case-law, this should be seen as use in the relevant territory (by analogy, 14/07/2010, R 602/2009‑2, RED BARON). Regarding place of use, the Opposition Division also took into account the documents confirming the opponent’s participation in some trade fairs, inter alia, in Germany (Annex No 6) and some advertisements in the magazine ‘PERSIA MAGAZIN EUROPA’ (Annex No 4). Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant time period (e.g. most of the invoices in Annex No 2). Some of the evidence is undated or dated outside the relevant period but can still be taken into consideration in conjunction with the evidence that is dated within the relevant period, such as the invoices, as the undated evidence provides useful indications regarding the nature of use. The undated evidence submitted consists of pictures with samples of products and tags, demonstrating how the earlier mark was used. Therefore, the evidence refers to the relevant time period. Furthermore, the applicant’s arguments concerning undated documents must be set aside.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

A sufficient duration of use is clearly indicated by the fact that the opponent submitted at least one invoice for each year of the relevant period. The invoices leave no doubt that sales were made regularly throughout the relevant period under the ‘KHANUM KHANUMA’ trade mark. The Opposition Division admits that the volume of the goods shown in the invoices and sold under the mark ‘KHANUM KHANUMA’ was rather high. However, it should be noted that these invoices could be a sample of the total sales. In any case, the assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42). Furthermore, according to the opponent’s list of turnover, the volume achieved under German trade mark registration No 30 457 344 is also rather high (Annex No 1).

In the context of the global assessment of whether the earlier mark has been genuinely used, these circumstances indicate that the mark’s extent of use was indeed sufficient. However, this only applies in relation to some of the registered goods in Class 29, as it will be shown in the following section ‘Nature of use – use in relation to the registered goods’. The mark was used in relation to the goods covered in Class 30.

Nature of use

With regards to the use of a trade mark and the use of the mark as registered, the evidence, in particular the invoices and the photographs, show that the earlier sign was used to establish a clear link between the goods and the company responsible for their manufacturing and marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the goods in question.

The applicant argues that ‘the invoices submitted do not unequivocally show that the brand on sale is the combination of the words KHANUM KHANUMA and the stylised logo … the opponent has failed to show or provide photographs of the products that the invoices refer to’. In this regard, it should be explained that the earlier mark is registered as a figurative mark and is used by the opponent either as such or in a written form (e.g. in the invoices together with some descriptive elements, namely and ). Use of a registered mark together with such descriptive indications (e.g. ‘Reis’, ‘Plastik’ and ‘4x5 kg’) does not generally constitute use of a variant but rather use of the mark itself. On the market, there is a practice of only writing the distinctive verbal part of the mark on invoices (sometimes with descriptive product names and their quantity as explained above). Furthermore, although the opponent was not obliged to submit photographs, it sent some photographs showing how the mark was used on the market. As it will be explained below, they show that the distinctive verbal element was presented on packaging. Therefore, the applicant’s claim must be set aside.

The applicant also argues that ‘it is clear that the mark is not used as registered. Some documents show for example the logo independently from the words or the words independently from the logo and therefore, the evidence does not show use of the mark as registered’. In this regard, it should be noted that, according to Article 18 EUTMR, use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. The purpose of this provision is to allow its proprietor to make variations in the sign that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50). With regard to some of the documents, it can be seen that the earlier mark is used in an altered manner (e.g. , and ), either without the figurative element or with a different figurative element. Furthermore, the verbal elements ‘KHANUM KHANUMA’ are used either in different proportions/positions or in a different font. As will be explained below, these verbal elements play a more important role in the comparison and the public will focus its attention on these elements. Furthermore, the earlier mark only contains two elements (without any additional figurative or verbal elements), namely and . These two elements, especially the verbal element ‘KHANUM KHANUMA’, are clearly perceptible on the packaging and serve as a badge of origin. Therefore, the applicant’s argument must be set aside.

The Opposition Division is of the opinion that the distinctiveness of the mark is largely dominated by the wording ‘KHANUM KHANUMA’ and only marginally influenced by the figurative elements used to represent the letters and the small monogram underneath’ (by analogy 21/03/2012, R 2379/2010‑1, LIDL express (fig.)/LÍDL MUSIC (fig.), § 19).

Therefore, it is considered that the opponent’s trade mark ‘KHANUM KHANUMA’ has been used as registered.

Nature of use - use in relation to the registered goods

Taking into account all the evidence submitted by the opponent, although not particularly exhaustive, it does at least reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

The opponent only shows use with regard to some of the goods as they appear in the opponent’s evidence, mainly the invoices (translations of the names of these products submitted by the opponent), namely: pickled vegetables, pickled limes, pickled garlic, pickled gherkins, dried limes, fried onion, tomato paste, barley soup in Class 29 and rice in Class 30 (as it was explained above these goods often appear in the invoices).

Bearing in mind the above, the evidence submitted by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.).

In the present case, the evidence proves use only for pickled vegetables, pickled limes, pickled garlic, pickled gherkins, dried limes, fried onion, tomato paste, barley soup in Class 29. These goods can be considered to form an objective subcategory of preserved, dried and cooked fruits and vegetables. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the aforesaid goods as far as the goods in Class 29 are concerned. Furthermore, it should be noted that the opponent did not submit any evidence concerning other goods in Class 29 (invoked in the notice of opposition). As far as the goods in Class 30 are concerned, the opponent proved used in relation to all goods invoked, namely rice.

Conclusion

Therefore, the Opposition Division considers that the evidence only shows genuine use of the trade mark for pickled vegetables, pickled limes, pickled garlic, pickled gherkins, dried limes, fried onion, tomato paste, barley soup in Class 29 and rice in Class 30.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 457 344.

a) The goods

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

Class 29: Pickled vegetables, pickled limes, pickled garlic, pickled gherkins, dried limes, fried onion, tomato paste, barley soup.

Class 30: Rice.

The contested goods are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; prepared meals made from dried and cooked fruits, meat, fish, poultry, eggs and game; soups; potato crisps; dried fruit, mixtures of nuts and dried fruits, dried tropical fruits; mixtures of processed seeds; food products made from dried fruits and nuts; prepared snacks for human consumption made from dried fruit; edible, prepared and processed nuts; edible, prepared and processed seeds; snack bars made of dried fruits, mixture of nuts and dried fruits, dried tropical fruits; snack foods made of dried fruits, cooked fruits, meat, fish, poultry, eggs and game; foodstuffs in the form of snacks made of dried fruits, cooked fruits, meat, fish, poultry eggs and game; dried foods made of nuts and dried fruits; snack bars containing nuts or dried fruits.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); fruit sauces; spices; ice; sandwiches; prepared meals made of rice, tapioca, cereals, pastry and pasta; pizzas, pies and pasta dishes; cereal bars, energy bars, flapjack, flapjack bars containing fruits or nuts, seed bars, cereal breakfast foods; cereals and preparations made wholly or principally of cereals, all for human consumption; dried foods made of pasta, rice, tapioca, cereals, seeds, pastry and pasta; prepared snack foods made of rice, tapioca, cereals, pastry and pasta; constituents for prepared meals of rice, tapioca, cereals, pastry and pasta; bread, biscuits (other than biscuits for animals), cakes; snack bars containing grains or seeds; food mixtures consisting of cereal flakes and dried fruits; nut confectionery.

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 soups include, as a broader category, the opponent’s barley soup. 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 meat extracts are highly similar to the opponent’s barley soup. They have the same nature. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested preserved, frozen, dried and cooked fruits are at least similar to the opponent’s pickled limes and dried limes. They not only have the same nature and purpose, but also the same distribution channels and producers. Furthermore, they can be complementary.

The contested preserved, frozen, dried and cooked vegetables are at least similar to the opponent’s pickled vegetables. They not only have the same nature and purpose, but also the same distribution channels and producers. Furthermore, they can be complementary.

The contested jellies, jams, compotes; prepared meals made from dried and cooked fruits, meat, fish, poultry, eggs and game; dried fruit, mixtures of nuts and dried fruits, dried tropical fruits; food products made from dried fruits and nuts; prepared snacks for human consumption made from dried fruit; edible, prepared and processed nuts; edible, prepared and processed seeds; snack bars made of dried fruits, mixture of nuts and dried fruits, dried tropical fruits; snack foods made of dried fruits, cooked fruits, meat, fish, poultry, eggs and game; foodstuffs in the form of snacks made of dried fruits, cooked fruits, meat, fish, poultry eggs and game; dried foods made of nuts and dried fruits; snack bars containing nuts or dried fruits are similar at least to a low degree to the opponent’s dried limes. They usually have the same distribution and can have the same producers. They also target the same public.

The contested potato crisps are similar to a low degree to the opponent’s fried onions. They usually have the same distribution and can have the same producers. They also target the same public.

The contested meat, fish, poultry and game; mixtures of processed seeds; eggs, milk and milk products; edible oils and fats are dissimilar to the opponent’s goods in Classes 29 and 30. They differ not only in their nature, but also in their distribution channels, producers and method of use. Furthermore, they are neither in competition nor necessarily complementary. Although all these goods are foodstuffs and target the public at large, this is not sufficient for finding similarity.

Contested goods in Class 30

Rice is identically included in both lists of goods.

The contested sauces (condiments); fruit sauces; are highly similar to the opponent’s pickled vegetables or dried limes. They have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested preparations made from cereals; prepared meals made of rice, cereals; cereals and preparations made wholly or principally of cereals, all for human consumption; dried foods made of rice, cereals; prepared snack foods made of rice, cereals; constituents for prepared meals of rice, cereals; cereal breakfast foods are similar to the opponent’s rice. They have the same nature. They usually coincide in producer and relevant public.

The contested food mixtures consisting of cereal flakes and dried fruits; confectionery; snack bars containing grains or seeds; nut confectionery; cereal bars, energy bars, flapjack, flapjack bars containing fruits or nuts, seed bars are similar to a low degree to the opponent’s dried limes. They usually coincide in producer, relevant public and distribution channels.

The contested spices are similar to the opponent’s pickled vegetables. They have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested ice; bread (listed twice), pastry and, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; sandwiches; pizzas, pies and pasta dishes; prepared meals made of tapioca, pastry and pasta; dried foods made of pasta, tapioca, seeds, pastry and pasta; prepared snack foods made of tapioca, pastry and pasta; constituents for prepared meals of tapioca, pastry and pasta; biscuits (other than biscuits for animals), cakes; coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; flour are dissimilar to the opponent’s goods in Classes 29 and 30. They differ not only in their nature, but also in their producers and method of use. They can be found in different sectors of supermarkets or shops. Furthermore, they are neither in competition nor necessarily complementary. Although all these goods are foodstuffs and target the public at large, this is not sufficient for finding similarity.

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

c) The signs

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 earlier mark is a black and white figurative mark consisting of two verbal elements ‘KHANUM KHANUMA’ and some inscriptions in Arabic (or Persian).

The contested sign is a figurative mark depicted in shades of gold. It contains a verbal element ‘KHANEM’ and some inscriptions in Arabic (or Persian).

The verbal elements of the signs in conflict have no meaning for the relevant public and are, therefore, distinctive.

The elements in both marks that resemble Arabic (or Persian) script are also meaningless for the relevant public, the majority of whom are not familiar with the Arabic (or Persian) language. These elements will be perceived as figurative elements (as the public is unaware how to pronounce them) without a clear meaning in relation to the relevant goods; therefore, they are distinctive.

However, it should be noted that the verbal elements ‘KHANUM KHANUMA’ in the earlier trade mark and ‘Khanem’ in the contested sign will attract the public’s attention. This is because when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the impact of the figurative elements, despite their co-dominant role to the verbal elements ‘KHANUM KHANUMA’ and ‘Khanem’, will be reduced. As the opponent has rightly pointed out, the public will very likely perceive the verbal elements ‘KHANUM KHANUMA’ as a translation of the Arabic (or Persian) script. It should be noted that the Persian verbal elements, just like the verbal elements in Latin, are depicted one above the other. Therefore, the role of the latter will be even less important in the comparison.

The stylisation used in the signs is commonplace and has no trade mark significance. Therefore, it will not be taken into account. The colours used in the marks have a marginal role in the comparison.

Furthermore, the second verbal element of the earlier mark, namely ‘KHANUMA’, is practically a repetition of its first verbal element, namely ‘KHANUM’. The only difference is the last letter ‘A’. Therefore, the public might not even notice this slight difference.

Visually, the signs coincide in the letters ‘KHAN*M’ of the first verbal element/‘KHAN*M*’ of the second verbal element in the earlier mark and the letters ‘Khan*m’ of the contested sign. However, they differ in the letters ‘U’ (‘KHANUM’) and ‘U’ and ‘A’ (‘KHANUMA’) of the earlier mark and the letter ‘e’ (‘Khanem’) of the contested sign. They also differ in their figurative elements and the colours of the contested sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘KHAN*M’ of the first verbal element/‘KHAN*M*’ of the second verbal element in the earlier mark and the letters ‘Khan*m’ of the contested sign. However, they differ in the letters ‘U’ (‘KHANUM’) and ‘U’ and ‘A’ (‘KHANUMA’) of the earlier mark and the letter ‘e’ (‘Khanem’) of the contested sign. The letters ‛KHANUM KHANUMA’ of the earlier mark are pronounced in a very similar manner and the second verbal element ‛KHANUMA’ can be seen as a repetition of the first verbal element ‛KHANUM’.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public 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.

d) 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.

e) Global assessment, other arguments and conclusion

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 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.

The goods are partly identical, partly similar (to varying degrees) and partly dissimilar. They target the public at large whose degree of attention is average. The signs are visually similar to an above average degree and aurally similar to a high degree. The conceptual comparison remains neutral. The earlier mark’s distinctiveness is normal.

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).

The signs in conflict coincide in the fact that they both contain almost the same verbal element ‘KHANUM’ of the earlier mark and ‘Khanem’ of the contested sign. Furthermore, they have figurative elements that seem to be Arabic (or Persian) script in common. It should be noted that the earlier mark also contains an additional word ‘KHANUMA’ which is almost a repetition of its first verbal element and is very similar to the sole verbal element of the contested sign, that is, ‘Khanem’. Furthermore, the signs differ in the global perception of their figurative elements and colours.

Bearing in mind the consumer’s imperfect recollection, the differences between the signs are not sufficient to outweigh the overall similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 457 344 for the figurative mark .

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade mark, namely international trade mark registration No 847 615 for the figurative mark designating the European Union.

Since this mark is identical to the one which has been compared and covers the same scope of goods (as the proof of use evidence concerns the same products), the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vít MAHELKA

Michal KRUK

Victoria DAFAUCE MENÉNDEZ

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.