OPPOSITION No B 3 045 252

Bella Bulgaria AD, 101, Tsarigradsko shose Blvd., floor 8, 1113 Sofia, Bulgaria (opponent), represented by Kostadin Manev, 73, Patriarh Evtimii Blvd., fl.1, 1463 Sofia, Bulgaria (professional representative)

a g a i n s t

Mlinotest d.d., Tovarniška cesta 14, 5270 Ajdovščina, Slovenia (applicant), represented by Maja Bogataj, Jančič Inštitut za intelektualno lastnino IPI, Dalmatinova ulica 2, 1000 Ljubljana, Slovenia (professional representative).

On 25/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 045 252 is upheld for all the contested goods.

2. European Union trade mark application No 17 449 323 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 449 323 for the figurative mark . The opposition is based on, inter alia, Bulgarian trade mark registration No 100 042 for the word mark ‘BELLA’. 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.

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 Bulgarian trade mark registration No 100 042.

1. The goods

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

Class 30: Anise; star aniseed; coffee flavourings; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes; aromatic preparations for food; macaroons [pastry]; almond confectionery; almond paste; baking powder; allspice; beer vinegar; biscuits; malt biscuits; candy; flour for food; bean meal; cereal flour; tapioca flour; flour; nut flours; groats for human food; vanillin [vanilla substitute]; vanilla flavourings for culinary purposes; vareniki [stuffed dumplings]; waffles; cream of tartar for culinary purposes; high-protein cereal bars; culinary herbs; breadcrumbs; glaze for ham; cake frosting [icing]; gluten prepared as foodstuff; gluten additives for culinary purposes; glucose for culinary purposes; mustard; cooking salt; garden herbs, preserved [seasonings]; semolina; dessert mousses [confectionery]; ginger [spice]; gingerbread; tomato sauce; chewing gum; infusions, not medicinal; essences for foodstuffs, except etheric essences and essential oils; leaven; artificial coffee; frozen yoghurt [confectionery ices]; sugar; candy decorations for cakes; confectionery; cereal-based snack food; cereal bars; maize flakes; cereal preparations; nutmegs; cocoa; cocoa-based beverages; cocoa beverages with milk; cinnamon [spice]; capers; caramels [candy]; potato flour; coffee; unroasted coffee; grits; ketchup [sauce]; bread rolls; quiches; buns; crackers; creme caramel; crystallized sugar nebetsheker for food; turmeric; couscous [semolina]; curry [spice]; ice for refreshment; ice, natural or artificial; linseed for culinary purposes [seasoning]; spicy seasoning [of pickled vegetables]; mayonnaise; noodles; macaroni; maltose; malt for human consumption; malt extracts for food; stick liquorice [confectionery]; marinades; Chow-chow [condiment]; marzipan; sausage binding materials; yeast; yeast powder; honey; molasses for food; mint for confectionery; mints; sea water for cooking; coffee beverages with milk; coffee-based beverages; starch for food; farinaceous foods; husked oats; biscuits; oats (crushed -); oat flakes; oat-based food; flour of oats; food flavourings [other than essential oils]; rice; rice pie [cake]; rice pudding; rice breakfast; vinegar; pancakes; palm sugar; soya bean paste [condiment]; pelmeni [dumplings stuffed with meat]; pesto [sauce]; petits fours [cakes]; spices; pies with fillings [pie, pie] pies stuffed with meat; pizzas; fruit jellies [confectionery]; fruit bedspreads [sauces]; fruit cakes, pies; pies with pate; flat figures [spared] [confectionery]; flat figures diamonds [confectionery]; spices; natural sweeteners; pralines [candied sweets, mostly nuts]; powders for sweets; products giving tenderness of the meat for household purposes; spring rolls [Asian dish]; propolis for food; puddings; popcorn; royal jelly; wheaten loaf [anaphora, Communion Bread]; wheat flour; wheat germ for human consumption; ravioli; vegetal preparations for use as coffee substitutes; sago; sandwiches; light treacle; binding agents for ice cream [ice glazes for food]; thickener [gelling agents] for the preparation of foodstuffs; confectionery; confectionery for decorating Christmas trees; pastry dough; cakes; ice cream; ice cream powder for food; liquorice [confectionery]; cake mixes; muesli; baking soda [bicarbonate of soda for cooking]; soy sauce; soya flour; salt for preserving foodstuffs; sauces [condiments]; sauces for meat; sauces for pasta; salad dressings; minced garlic [spice]; spaghetti; stabilizers for the preparation of whipped cream; cold tea; flakes of chervil [sprinkle]; rusks; sushi; tabbouleh [Arab dish]; taco [Mexican dish]; tapioca [special groats from starch, trahana]; pastry; dough; cake batter; tortilla [Spanish and Mexican dish]; ferments for pastes; vermicelli strips; noodles [pasta]; fondant (soft aromatic sweets) [confectionery]; peanut confectionery; halva; bread; corn [milled]; corn [baked]; corn meal; corn husks; corn flour; flowers or leaves used as a substitute for tea; chicory [coffee substitute]; tea beverages; tea; black pepper; garlic cloves [spice]; cheeseburgers [sandwiches]; chips [cereal]; chutney [spices]; saffron [condiments]; sorbets, chilled [ice]; chocolate decorations for cakes; chocolate mousses; chocolate; chocolate drinks; chocolate beverages with milk; nuts with chocolate icing; dishes based on noodles (pasta grains).

The contested goods are the following:

Class 30: Pasta; foodstuffs made from cereals; corn flour; wheat flour; corn, milled; hominy grits.

Corn flour; wheat flour; corn, milled are identically contained in both lists of goods (including synonyms).

Foodstuffs made from cereals overlap with the opponent’s cereal preparations and are also identical.

The contested pasta includes, as a broader category, the opponent’s noodles [pasta]. 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 hominy grits is included in the opponent’s grits. 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 average.

3. The signs

BELLA
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 word mark ‘BELLA’ is entirely included in the contested sign in which it appears above its additional word ‘BIONDA’. The contested sign is comprised also of a bust depiction of a female with a few ears of grain collected in her hands. This figurative element is placed against a circle and is located just above the words ‘BELLA’ and ‘BIONDA’.

The contested sign has no element that could be considered clearly more dominant than other elements. All the components of the contested sign will be perceived in their graphical entirety and even though the figurative element is larger than the verbal elements it remains part of the circle, which will be perceived by consumers with all its components at once.

Regarding the earlier mark, 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 (T-254/06, RadioCom, EU:T:2008:165 § 43).

The word ‘BELLA’, present in both signs, will be understood by a part of the relevant public as a female first name of a foreign origin, although it is not very common in Bulgaria. The rest of the relevant public will perceive it as an invented word. In either case, the distinctiveness of this element is normal, since it has no meaning in relation to the goods at issue. It will not be perceived as meaning ‘beautiful’ from Italian, as it was argued by the applicant. Bulgarian consumers are not accustomed of using the word in that meaning and cannot be expected to have that perception as a common knowledge. Indeed, some Bulgarian speakers might have some basic comprehension of Italian, but that cannot be deemed the general case and the perception of an average Bulgarian consumer.

Likewise, the word element ‘BIONDA’ (of an Italian origin) has no meaning for the relevant public and is, therefore, distinctive.

The figurative element, except for the ears of grain, of the contested sign has no direct meaning for the goods in question, and is, therefore, distinctive. With regard to the ears of grain depicted in the contested sign, they are non-distinctive as they describe the characteristics of the goods in question.

Visually, the signs coincide in the word ‘BELLA’, introduced as an independent element in both signs. However, they differ in the second word ‘BIONDA’ of the contested sign and also in its figurative element described above. Account is taken of the fact that consumers generally tend to focus on the beginning 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. Furthermore, even though the applicant finds the additional figurative elements of its sign very striking, the Opposition Division notes that 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).

Given the findings above, the signs are considered visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BELLA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛BIONDA’ of the contested sign, which have no counterparts in the earlier mark. The figurative element will not be aurally referred to.

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

Conceptually, as the verbal element ‘BELLA’, contained in both signs, will be perceived by a part of the public as a female name, the signs are conceptually similar to at least an average degree for that part of the public. With regard to this part of the public who does not understand the word ‘BELLA’, while it will perceive the concepts of the figurative element of the contested sign, as explained above, the other sign will have no meaning in the relevant territory. In that case, since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and they target the general public, which has an average degree of attention. The signs are visually similar to a lower than average degree and aurally similar to an average degree. Conceptually, for a part of the relevant public they are similar to at least an average degree, since the word ‘BELLA’ may be perceived as a female name. For, the remaining part of the public the signs are not conceptually similar. Furthermore, the earlier mark has a normal degree of distinctiveness.

A significant part of the relevant public, when encountering identical goods under the marks in question, given that the marks coincide in the unusual first name or fanciful verbal element ‘BELLA’, is likely to believe that the goods come from the same undertaking or from economically linked undertakings. Indeed, consumers could perceive the contested sign as identifying a particular range of the opponent’s goods. Furthermore, as explained above, the first verbal elements are more memorable by the public. This makes the signs very similar. The differences between the signs cannot therefore outweigh their aforementioned visual, aural and conceptual similarities.

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).

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 Bulgarian trade mark registration No 100 042. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Bulgarian trade mark registration No 100 042 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Michal KRUK

Manuela RUSEVA

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.