OPPOSITION No B 3 050 481

Mastronardi Produce Ltd., 2100 Road 4 East, N9Y 2E5 Kingsville, Canada (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968 Cologne, Germany (professional representative)

a g a i n s t

Alterbio France, Rue Levavasseur Zi Saint Charles, 66000 Perpignan, France (applicant).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 481 is partially upheld, namely for the following contested goods:

Class 29: All the goods for which protection is sought in this class, except croquettes.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; fungi; fresh champignons; unprocessed mushrooms; mushrooms, fresh, for food; forestry products; fresh fruits, nuts, vegetables and herbs; weeds for human or animal consumption; natural edible plants [unprocessed]; agricultural produce (unprocessed -).

2. European Union trade mark application No 17 577 611 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 17 577 611 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 14 415 798 ‘SUNSET’ (word 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.

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 European Union trade mark registration No 14 415 798.

1. The goods

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

Class 29: Canned, cooked or otherwise processed vegetables and fruits, especially tomatoes.

Class 30: Salsa.

Class 31: Fresh, raw and unprocessed fruits, especially strawberries; fresh, raw and unprocessed vegetables, especially tomatoes, peppers, cucumbers, herbs, carrots, lettuces and eggplants.

The contested goods are the following:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); jellies, jams, compotes, fruit and vegetable spreads; dried edible seaweed (hoshi-wakame); processed, edible seaweed; dried edible algae; algae prepared for human foods; snack foods based on nuts; berries, preserved; nut and seed-based snack bars; fruit- and nut-based snack bars; organic nut and seed-based snack bars; nut-based food bars; soy-based food bars; bombay mix; fruit chips; vegetable chips; arrangements of processed fruit; fruit purees; vegetable juice concentrates for food; mixed pickles; preserves, pickles; canned peanuts; fruits, tinned [canned (am)]; pickled fruits; canned sliced fruits; vegetables, tinned [canned (am)]; canned sliced vegetables; croquettes; fruit leathers; fruit desserts; snack mixes consisting of dehydrated fruit and processed nuts; fruit-based snack food; candied fruit snacks; dried fruit-based snacks; nut-based snack foods; vegetable-based snack foods; snacks of edible seaweed; fruit peel; seaweed extracts for food; extracts of vegetables [juices] for cooking; vegetable extracts for cooking; vegetable extracts for food; processed edible flowers; processed edible flowers in crystallized form; edible dried flowers; aromatized fruit; crystallized fruits; frozen fruits; fruit, preserved; fruit preserved in alcohol; cut fruits; cooked fruits; bottled fruits; fruit preserves; flavoured nuts; seasoned nuts; edible nuts; candied nuts; preserved nuts; nuts being cooked; roasted nuts; blanched nuts; nuts, prepared; salted nuts; dried nuts; processed nuts; shelled nuts; sliced fruit; sugar-coated fruits on a stick; fermented fruits; glazed fruits; prepared fruits; dried fruit; dried fruit products; mincemeat [preserved fruit]; mincemeat made from fruits; fruit pie fillings; fruit-based fillings for cakes and pies; fruit-based fillings for cobblers; fruit jellies; edible seeds; vegetable juices for cooking; fruit juices for cooking; vegetables, preserved; preserved vegetables (in oil); cut vegetables; vegetables, cooked; pickled vegetables; grilled vegetables; freeze-dried vegetables; vegetables pickled in soy sauce; bottled vegetables; pre-cut vegetables; pre-cut vegetables for salads; salted vegetables; dried pulses; canned pulses; frozen vegetables; vegetables, dried; processed legumes; peeled vegetables; processed pulses; vegetable mousses; mixed vegetables; mixtures of fruit and nuts; dried fruit mixes; spreads consisting of hazelnut paste; quick-frozen vegetable dishes; vegetable-based entrees; prepared meals consisting principally of vegetables; frozen prepared meals consisting principally of vegetables; prepared vegetable dishes; fruit Powders; vegetable powders; prepared vegetable products; fruit pulp; vegetable puree; mushrooms puree; fruit salads; vegetable salads; pre-cut vegetable salads; legume salads; prepared salads; fruit-based meal replacement bars; nut-based meal replacement bars; vegetable pate; bottled sliced fruits.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; fungi; fresh champignons; unprocessed mushrooms; mushrooms, fresh, for food; plants; trees and forestry products; flowers; fresh fruits, nuts, vegetables and herbs; living fruit plants; weeds for human or animal consumption; leguminous plants; house plants; nursery plants; potted plants; fresh plants; climbing plants; natural plants; natural edible plants [unprocessed]; live plants used as aquarium landscapes; dried plants; plants, dried, for decoration; foliage plants; flowering plants; seedlings; agricultural produce (unprocessed -).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term especially, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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

Processed fruits and vegetables are identically contained in both lists of goods.

The contested processed fungi (including nuts and pulses); jellies, jams, compotes, fruit and vegetable spreads; dried edible seaweed (hoshi-wakame); processed, edible seaweed; dried edible algae; algae prepared for human foods; snack foods based on nuts; berries, preserved; nut and seed-based snack bars; fruit- and nut-based snack bars; organic nut and seed-based snack bars; nut-based food bars; soy-based food bars; bombay mix; fruit chips; vegetable chips; arrangements of processed fruit; fruit purees; vegetable juice concentrates for food; mixed pickles; preserves, pickles; canned peanuts; fruits, tinned [canned (am)]; pickled fruits; canned sliced fruits; vegetables, tinned [canned (am)]; canned sliced vegetables; fruit leathers; fruit desserts; snack mixes consisting of dehydrated fruit and processed nuts; fruit-based snack food; candied fruit snacks; dried fruit-based snacks; nut-based snack foods; vegetable-based snack foods; snacks of edible seaweed; fruit peel; seaweed extracts for food; extracts of vegetables [juices] for cooking; vegetable extracts for cooking; vegetable extracts for food; aromatized fruit; crystallized fruits; frozen fruits; fruit, preserved; fruit preserved in alcohol; cut fruits; cooked fruits; bottled fruits; fruit preserves; flavoured nuts; seasoned nuts; edible nuts; candied nuts; preserved nuts; nuts being cooked; roasted nuts; blanched nuts; nuts, prepared; salted nuts; dried nuts; processed nuts; shelled nuts; sliced fruit; sugar-coated fruits on a stick; fermented fruits; glazed fruits; prepared fruits; dried fruit; dried fruit products; mincemeat [preserved fruit]; mincemeat made from fruits; fruit pie fillings; fruit-based fillings for cakes and pies; fruit-based fillings for cobblers; fruit jellies; edible seeds; vegetable juices for cooking; fruit juices for cooking; vegetables, preserved; preserved vegetables (in oil); cut vegetables; vegetables, cooked; pickled vegetables; grilled vegetables; freeze-dried vegetables; vegetables pickled in soy sauce; bottled vegetables; pre-cut vegetables; pre-cut vegetables for salads; salted vegetables; dried pulses; canned pulses; frozen vegetables; vegetables, dried; processed legumes; peeled vegetables; processed pulses; vegetable mousses; mixed vegetables; mixtures of fruit and nuts; dried fruit mixes; spreads consisting of hazelnut paste; quick-frozen vegetable dishes; vegetable-based entrees; prepared meals consisting principally of vegetables; frozen prepared meals consisting principally of vegetables; prepared vegetable dishes; fruit powders; vegetable powders; prepared vegetable products; fruit pulp; vegetable puree; mushrooms puree; fruit salads; vegetable salads; pre-cut vegetable salads; legume salads; prepared salads; fruit-based meal replacement bars; nut-based meal replacement bars; vegetable pate; bottled sliced fruits are if not identical then at least similar to the opponent’s canned, cooked or otherwise processed vegetables and fruits, especially tomatoes. The opponent’s goods are the main ingredients of these contested goods, which are processed in a certain way and offered in different forms, and all of these goods have the same purpose and target the same end consumers. Furthermore, the majority of these goods are in competition and are sold in the same outlets.

The contested processed edible flowers; processed edible flowers in crystallized form; edible dried flowers are similar to a low degree to the opponent’s canned, cooked or otherwise processed vegetables and fruits. Edible flowers, processed in various ways, are often used in salads or other vegetable dishes. They are found in the same outlets or markets sections, have the same purpose and target the same public.

The contested croquettes are dissimilar to all of the opponent’s goods in Classes 29, 30 and 31. These goods, even if they are also foodstuff, are prepared meals that can have different ingredients. Their providers and target public are different. Furthermore, they are sold through different distribution channels or in different sections of supermarkets.

Contested goods in Class 31

Fresh fruits; fresh vegetables are identically contained in both lists of goods.

The contested fungi; fresh champignons; unprocessed mushrooms; mushrooms, fresh, for food; fresh nuts, weeds for human or animal consumption are included in the broad categories of, or overlap with, the opponent’s fresh, raw and unprocessed vegetables. Therefore, they are identical.

The contested agricultural and aquacultural crops, horticulture and forestry products; agricultural produce (unprocessed -) include, as broader categories, the opponent’s fresh, raw and unprocessed fruits, especially strawberries; fresh, raw and unprocessed vegetables, especially tomatoes, peppers, cucumbers, herbs, carrots, lettuces and eggplants. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested fresh herbs; natural edible plants [unprocessed] are similar to the opponent’s fresh, raw and unprocessed vegetables. These goods have the same purpose and nature, target the same public and are sold in the same outlets or sections of food stores.

The contested plants; trees; flowers; living fruit plants; leguminous plants; house plants; nursery plants; potted plants; fresh plants; climbing plants; natural plants; live plants used as aquarium landscapes; dried plants; plants, dried, for decoration; foliage plants; flowering plants; seedlings are dissimilar to all of the opponent’s goods in Classes 29, 30 and 31. The opponent’s goods essentially are fruit and vegetables, whether preserved, dried, cooked or fresh. It is clear that the opponent’s foodstuffs and the contested goods have nothing in common, none of which are types of food for consumption. The goods at issue do not come from the same producers, they do not target the same consumers and have different distribution channels. In addition, they are neither complementary nor in competition.

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 are directed at the public at large. Some of the goods (e.g. fresh fruits) can be related to habitual buying behaviour. Purchase decisions in this area relate to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T‑547/08, Strumpf, EU:T:2010:235, § 43). Therefore, the degree of attention when purchasing the relevant goods will be average.

3. The signs

SUNSET
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SUNSET’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘SUNSET’, which will be understood by the relevant public as ‘the time in the evening when the sun disappears or daylight fades’ (information extracted from Oxford Lexico Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/sunset). It is meaningless in relation to the relevant goods and has, therefore, an average degree of distinctiveness.

The contested sign is a figurative mark composed of the word ‘BioSunset’ and the word ‘exotic’ in small size under it. The word ‘BioSunset’ is the dominant element of the sign due to its size and central position. It will be dissected by the public as two verbal elements ‘Bio’ and ‘Sunset’, this latter element having the meaning explained above. The contested sign has additional figurative elements, a colourful bird at the end of the word ‘BioSunset’ and a yellow sun behind its first letter ‘S’. The depiction of the sun reinforces the meaning of sunset, and the word ‘exotic’, meaning ‘originating in or characteristic of a distant foreign country’ (information extracted from Oxford Lexico Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/exotic), is reinforced by the depiction of the bird, and it has an average degree of distinctiveness. 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).

The verbal element ‘Bio’ of the contested sign will be associated with the word ‘organic’, which means ‘produced or involving production without the use of chemical fertilizers, pesticides, or other artificial chemicals’ (information extracted from Oxford Lexico Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/organic). Bearing in mind that the relevant goods are ‘foodstuffs’, it is considered that this element is non-distinctive for these goods, namely for the relevant goods in Classes 29 and 31. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other more distinctive elements of the marks. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

Visually, the signs coincide in the word ‘SUNSET’, which is the earlier mark’s sole element and the dominant and distinctive word of the contested sign. They differ in the figurative elements described above and in the words ‘Bio’, which is non-distinctive and ‘exotic’ of the contested sign, which due to its position and size has less impact and may even go unnoticed.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SUNSET’, which is the sole earlier mark’s element and a dominant and distinctive element of the contested sign, present identically in both signs. The pronunciation differs in the sound of the words ‘Bio’ (non-distinctive element, which means that the impact of this element is limited) and ‘exotic’ (non-dominant element and, due to its size, may go unnoticed) of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually highly 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical or similar to varying degrees and partly dissimilar. The public’s degree of attention is average.

The signs are visually similar to an average degree and aurally and conceptually highly similar. The earlier mark’s sole element is included in the contested sign as a dominant and distinctive element, and the first part, ‘Bio’, of the contested sign’s dominant element is non-distinctive. The importance of the visual, aural and conceptual dissimilarities may be diminished by 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). In this case, as mentioned above, the purchase decisions relate to inexpensive goods purchased on a daily basis.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 415 798 for the word mark ‘SUNSET’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark. The opposition is successful insofar as the goods that are similar to a low degree are concerned due to the important similarities of the signs.

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:

• European Union trade mark registration No 12 776 662 for the figurative mark for the following goods in Class 31: fresh fruits and vegetables, namely tomatoes, peppers, cucumbers, eggplants.

The other earlier right invoked by the opponent covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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

Andrea VALISA

Aurelia PEREZ BARBER

Arkadiusz GÓRNY

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.