OPPOSITION No B 3 050 075

Arcor S.A.I.C., Av. Fulvio Pagani 487, Arroyito (Córdoba), Argentina (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative)

a g a i n s t

Lasu International B.V., Wolphaertsbocht 488, 3081KZ Rotterdam, Netherlands (applicant), represented by Intellectueeleigendom.nl, Savannahweg 17, 3542 AW Utrecht, Netherlands (professional representative).

On 06/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 075 is partially upheld, namely for the following contested goods:

Class 29: Oils for food; fruit pulps.

Class 30: Rice; flour and grain-based products; spices.

2. European Union trade mark application No 17 479 718 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 17 479 718 , namely against all the goods in Classes 29, 30 and 31. The opposition is based on European Union trade mark registration No 3 981 164 for the word mark ‘MOGUL’. 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.

a) The goods

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

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); spices; ice.

The contested goods are the following:

Class 29: Oils for food; fruit pulps.

Class 30: Rice; flour and grain-based products; spices.

Class 31: Agricultural, horticultural and forestry products and grains (seeds), not included in other classes, other than those of the botanical genera Fagopyrum, Hordeum, Solanum, Zea, Taxus.

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 goods oils for food and fruit pulps are considered to be similar to the opponent’s broad term sauces [condiments] (which includes fruit sauces, vegetable sauces and others). A sauce is a liquid or semi-solid food used on or for preparing other foods, normally not consumed by themselves. Oils for food and fruit pulps are similar to sauces as they are normally used together with other foods (for example, fruit pulps — consisting of processed fruits — are commonly used in ice creams). Therefore, the purpose and method of use of these goods are similar.

Furthermore, the distribution channels of these goods coincide as they can be found in similar retail stores. They are considered to be everyday products and target the same relevant public, who can choose between sauces and oils and fruit pulps, respectively, in order to prepare/flavour a dish. Consequently, oils for foods and fruit pulps are in competition with sauces [condiments].

Contested goods in Class 30

The contested rice and spices are identically contained in both lists of goods. Furthermore, the contested flour and grain-based products are identical to the opponent’s flour and preparations made from cereals as ‘grains’ and ‘cereals’ are synonyms (information extracted from Collins Dictionary on 03/05/2019 at https://www.collinsdictionary.com/dictionary/english/grain).

Contested goods in Class 31

The contested goods agricultural, horticultural and forestry products and grains (seeds), not included in other classes, other than those of botanical genera Fagopyrum, Hordeum, Solanum, Zea, Taxus are raw products that have not been subjected to any form of preparation for consumption, whereas the goods in Class 30 are mainly foodstuffs of plant origin prepared for consumption or conservation, as well as auxiliaries intended to improve the flavour of food (as also set out in the Explanatory Notes to the Nice Classification).

Even though they have the same nature in that they are foodstuffs or an ingredient required for the preparation of a foodstuff, this does not make these goods similar. They serve different purposes and are not complementary or in competition. In addition, the goods have different distribution channels. They can normally be found in different areas of supermarkets and are usually produced by different kinds of undertakings.

Based on the aforementioned, the goods are considered to be dissimilar.

For the sake of completeness, the Opposition Division clarifies that on 23/09/2016 the opponent submitted a declaration pursuant to Article 33(8) EUTMR (former Article 28(8) EUTMR, in force before 01/10/2017) indicating that its intention on the date of filing of the earlier mark had been to seek protection in respect of goods in Class 30 beyond those covered by the literal meaning of the heading of that class, for example sea water for cooking; capers; starch for food; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes.

However, the effects of amending the list of goods and services of EUTMs further to declarations under Article 33(8) EUTMR are laid down in Article 33(9) EUTMR (former Article 28(8) EUTMR and Article 28(9) EUTMR, in force before 01/10/2017). Accordingly, amending the list of goods and services of the earlier EU trade mark will not give the proprietor the right to prevent third parties from using any of the added goods or services, on the understanding that the use commenced before the register was amended and did not infringe the proprietor’s rights on the basis of the literal meaning of the goods and services in the register at that time.

Furthermore, the proprietor will not have the right to oppose a later trade mark if that later trade mark was in use or had been applied for prior to the register being amended and the use in relation to those goods or services did not infringe, or would not have infringed, the proprietor’s rights based on the literal meaning of the goods or services recorded in the register at that time.

Consequently, the Opposition Division will proceed the examination of the present opposition only on the basis of the above indicated goods in Class 30, without taking into account the goods added (or subject to appeal proceedings) pursuant to the declaration under Article 33(8) EUTMR.

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

MOGUL
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 verbal element ‘MOGUL’, which the signs have in common, may be associated with a meaning by a part of the public (for example, part of the English- and German-speaking public may see it as referring to ‘[a]n important or powerful person, especially in the film or media industry [or a] bump on a ski slope’ or ‘a member of the Muslim dynasty of Mongol origin’ (information extracted from Oxford Dictionary and Duden on 03/05/2019 at https://en.oxforddictionaries.com/definition/mogul and https://www.duden.de/suchen/dudenonline/mogul, respectively). However, for a relevant part of the public this word will be seen as a meaningless term. Even if understood, the meanings mentioned above are not related to the relevant goods. Therefore, the verbal element ‘MOGUL’ is considered to be distinctive to an average degree.

The contested sign is composed of three elements, namely the words ‘MOGUL’ and ‘BRAND’ and a figurative depiction of a man. The dominant (visually outstanding) element is the figurative depiction of a man, which may also be linked by a part of the public to the concept of ‘Mogul’ in the sense of a member of the Muslim dynasty. Although the figurative element is distinctive (as it has no relation to the relevant goods) and dominant, 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, in the overall impression created by the contested sign, the verbal and distinctive element ‘MOGUL’ will be the one which will have a greater impact and be memorised by the relevant public.

As regards the element ‘BRAND’, which is widely used in trade and will be understood by a large part of the public throughout the relevant territory, the Opposition Division concurs with the opponent that it must be deemed to be non-distinctive as it merely indicates that ‘MOGUL’ is to be the name given to the protected goods or to identify a particular product.

Visually, the signs coincide in the element ‘MOGUL’, which constitutes the entire earlier sign and the first verbal element of the contested sign, and is distinctive.

Although the difference is the figurative depiction of a man, which is dominant, as explained above, the consumers will focus their attention on the first and distinctive word element ‘MOGUL’.

Another difference between the signs is the word element ‘BRAND’, which is, however, non-distinctive and, consequently, of very limited impact (if any).

Therefore, the signs are visually similar to an average 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 word ‘MOGUL’, present identically in both signs.

The pronunciation differs in the second word of the contested sign, ‘BRAND’. However, as this is a non-distinctive element, its impact on the comparison (if any) is very limited.

Therefore, the signs are aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public who will associate ‘MOGUL’ with a meaning (which is reinforced for a part of the public by the figurative depiction in the contested sign) the signs are conceptually similar to at least an average degree.

For the part of the public who will not associate ‘MOGUL’ with a meaning, as only the contested sign will convey a concept (mostly on account of the figurative depiction as the non-distinctive element ‘BRAND’ will barely have any trade mark significance, if (at all) the signs are 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.

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 come from the same undertaking or, as the case may be, from economically linked undertakings. If a significant part of the relevant public for the goods may be confused as to the origin of the goods, this is sufficient.

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 Opposition Division has established that the contested goods are identical in Class 30, similar in Class 29, and dissimilar for the goods in Class 31. These goods found to be identical or similar are intended for the average consumer, who will have an average degree of attention.

Based on the interdependence between the relevant factors, the identity and similarity between the goods, the fact that the earlier mark enjoys an average distinctive character and the visual and aural (and, for a part of the public, also conceptual) similarities between the signs, the Opposition Division considers that there is a likelihood of confusion between the signs.

Although the dominant element of the opposed mark is the figurative depiction of a man, due to the identical and distinctive word element ‘MOGUL’ in the signs (which retains an independent, distinctive role in the contested sign), the average consumer might consider that the goods come from an economically linked undertaking or are a second line of production from the same undertaking.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

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

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Martin EBERL

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.