OPPOSITION No B 3 052 680

Ebro Foods, S.A., Paseo de la Castellana, 20, plantas 3ª y 4ª, 28046 Madrid, Spain (opponent), represented by María José Garreta Rodríguez, Aribau, 155, bajos, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Lishizhen Pharmaceutical Group Co. Ltd., Bencaogangmu Biotechnology Park, Qichun County, Hubei Province, People’s Republic of China (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).

On 30/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 680 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 643 421 , namely against all the goods and services in Classes 5, 29, 30, 31, 32 and 35. The opposition is based on European Union trade mark registration No 11 822 319 (the earlier trade mark 1) and on European Union trade mark registration No 11 822 491 (the earlier trade mark 2). 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 and services

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

European Union trade mark No 11 822 319

Class 5: Food for babies.

Class 29: Meat, fish, poultry and game; ready-to-serve meals on meat basis, fish, not live, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; prepared meals based on vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; potato flakes.

Class 30: Rice, goods based on rice, prepared dishes in which rice is the main ingredient, rice cakes; tapioca, sago; flour for food, potato flour, prepared meals based on flour; cereal preparations; pasta; semolina, bread, breadcrumbs, garlic bread and parsley; edible ices; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

European Union trade mark No 11 822 491

Class 5: Sanitary preparations for medical purposes;  plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 29: Meat, fish, poultry and game; ready-to-serve meals on meat basis, fish, not live, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; prepared meals based on vegetables; jellies, jams, compotes; eggs; milk and milk products;  potato flakes.

Class 30: Rice, goods based on rice, prepared dishes in which rice is the main ingredient, rice cakes;  flour for food, potato flour, prepared meals based on flour; cereal preparations; pasta; semolina, bread, breadcrumbs, garlic bread; edible ices;  baking-powder;  ice.

The contested goods and services are the following:

Class 5: Chinese patent medicine; rolls of artemisize argyi folium; medicinal wine; dietetic beverages adapted for medical purposes; food for babies; depuratives; preparations for destroying noxious animals; animal washes [insecticides]; dressings, medical.

Class 29: Meat; foods made from fish; fruits, tinned; snacks, mainly of fruits or vegetables; vegetables, cooked; milk products; edible fats; fruit jellies; dried edible mushrooms.

Class 30: Coffee-based beverages; tea; pastries; confectionery; honey; cereal-based snack food; cereal preparations; instant noodles; cooking salt; condiments; instant rice.

Class 31: Grains [cereals]; pollen [raw material]; garden herbs, fresh; plants; live animals; fruit, fresh; vegetables, fresh; fresh flowers for food; plant seeds; animal foodstuffs; malt for brewing and distilling.

Class 32: Beer; aerated water; non-alcoholic beverages flavoured with tea; purified water (beverage); non-alcoholic carbonated drinks; plant beverages; beans beverages; ginger juice (beverage); rice-based beverages, other than milk substitutes; syrups for beverages.

Class 35: Publicity; presentation of goods on communication media, for retail purposes; business information; marketing; relocation services for businesses; systemization of information into computer databases; accounting; rental of vending machines; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; psychological testing for the selection of personnel.

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 5

Food for babies is identically contained in the lists of goods of the contested trade mark and of earlier trade mark 1).

The contested dressings, medical include, as a broader category the opponent’s plasters, materials for dressings of earlier trade mark 2). 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 preparations for destroying noxious animals; animal washes [insecticides] are identical to the opponent’s preparations for destroying vermin of earlier trade mark 2), because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested dietetic beverages adapted for medical purposes are identical to the opponent’s food for babies in earlier trade mark 1), because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested Chinese patent medicine; rolls of artemisize argyi folium; depuratives and the opponent’s disinfectants in earlier trade mark 2) target the same relevant public and can coincide in distribution channels. Therefore, they are similar to a low degree.

The contested medicinal wine has a different nature and purpose from the opponent’s goods in Classes 5, 29 and 30. They are produced by different producers, target different relevant public and are distributed through different channels. Furthermore, they are not complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 29

Meat; vegetables, cooked; milk products are identically contained in all the lists of goods.

The contested foods made from fish are identical to the opponent’s ready-to-serve meals on fish of the earlier trade mark 1), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested fruit jellies; fruits, tinned; snacks, mainly of vegetables are included in the broad category or overlap with the opponent’s jellies; preserved fruits; prepared meals based on vegetables; or ready-to-serve meals on fish, not live of the earlier trade marks 1) and 2). Therefore, they are identical.

The contested snacks, mainly of fruits; dried edible mushrooms and the opponent’s prepared meals based on vegetables; dried vegetables in earlier trade marks 1) and 2) have the same purpose, target the same relevant public, can coincide in producer and distribution channels. Furthermore, they are in competition. Therefore, they are similar to a high degree.

The contested edible fats and the opponent’s milk products in earlier trade marks 1) and 2) have the same purpose. They target the same relevant public and can be in competition. Therefore, they are similar.

Contested goods in Class 30

The contested condiments; cooking salt; instant rice; instant noodles; pastries; cereal-based snack food; cereal preparations are identical to the opponent’s sauces (condiments); salt; rice; pasta; prepared meals based on flour; or cereal preparations either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with the contested goods.

The contested confectionery and the opponent’s cereal preparations in earlier trade marks 1) and 2) can coincide in producers, they target the same relevant public and are distributed through the same channels. Furthermore, they are in competition. Therefore, they are similar.

The contested honey and the opponent’s jams of the earlier trade marks 1) and 2) have the same purpose. They usually coincide in relevant public, distribution channels and method of use. Furthermore, they are in competition. Therefore, they are similar.

The contested coffee-based beverages may contain milk or milk products. The contested coffee-based beverages, tea and the opponent’s milk products in Class 29 target the same relevant public, they can coincide in producer and are distributed through the same channels. Furthermore, they are in competition. Therefore, they are similar.

Contested goods in Class 31

The contested live animals and the opponent’s fish in Class 29 in earlier trade marks 1) and 2) can coincide in producer and distribution channels. Therefore, they are similar to a low degree.

The contested fruit, fresh; vegetables, fresh; and the opponent’s dried fruits and vegetables in Class 29 in earlier trade marks 1) and 2) target the same relevant public and are distributed through the same channels. Furthermore, they are in competition. Therefore, they are similar to a low degree.

The contested grains [cereals]; pollen [raw material]; garden herbs, fresh; plants; fresh flowers for food; plant seeds; animal foodstuffs; malt for brewing and distilling are specific goods that have no sufficient connection with any of the opponent’s goods in Classes 5, 29 and 30. These goods have a different nature, purpose and method of use. They usually do not coincide in producers and distribution channels. They are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages flavored with tea; plant beverages; beans beverages; ginger juice (beverage); non-alcoholic carbonated drinks; rice-based beverages, other than milk substitutes and the opponent’s milk products in Class 29 in earlier trade marks 1) which could be milk based or mixed drinks. and 2) have similar purpose ( to quench the thirst). They target the same relevant public and coincide in distribution channels. Furthermore, they may be in competition. Therefore, they are similar at least to a low degree.

The contested syrups for beverages and the opponent’s preserved fruits in Class 29 in earlier trade marks 1) and 2) can coincide in producer and they target the same relevant public. Therefore, they are similar to a low degree.

The contested beer; aerated water; purified water (beverage) are considered dissimilar to all the opponent’s goods in Classes 5, 29 and 30. These goods have a different nature and purposes they are neither in competition nor complementary. They also have different origins.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested retail or wholesale services for sanitary preparations and medical supplies are similar to a low degree to the opponent’s plasters, materials for dressings of earlier trade mark 2).

Retail or wholesale services for pharmaceutical, veterinary preparations and the opponent’s goods are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are either only similar or even dissimilar.

The contested publicity; presentation of goods on communication media, for retail purposes consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring a competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. The contested publicity; presentation of goods on communication media, for retail purposes are advertising services and they are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. The contested marketing services focus on creating relationship and satisfying customers. Marketing is one of the components of business management. The contested business information belong to the category of business analyses, research and information services. The contested relocation services for businesses; systemization of information into computer databases; accounting; psychological testing for the selection of personnel belong to the category of business assistance, management and administrative services. These services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The contested rental of vending machines are related to commercial trading. The aforementioned contested services have a different nature and purpose fromall the opponent’s goods. They do not coincide in producer/provider, target different relevant public, are distributed through different distribution channels and are not complementary nor in competition. Therefore, the aforementioned contested publicity; presentation of goods on communication media, for retail purposes; business information; marketing; relocation services for businesses; systemization of information into computer databases; accounting; rental of vending machines; psychological testing for the selection of personnel are dissimilar to all of the opponent’s goods.

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 and services found to be identical or similar (in various degrees) are directed at both the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same provisions can be applied to some of the contested goods in Class 5 such as chinese patent medicine or dietetic beverages adapted for medical purposes since these goods also affect a person’s health.

Therefore, the public’s degree of attentiveness may vary from lower than average for some of the goods (everyday non-expensive goods) such as cooking salt in Class 30 to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

1) European Union trade mark

No 11 822 319

2) European Union trade mark No 11 822 491
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 trade marks 1) and 2) contain the verbal element ‘HERBA’ depicted in green upper case letters and the figurative element depicting a wheat sheaf. Below the verbal element ‘HERBA’ the earlier trade mark 1) contains the additional verbal element ‘RICEMILLS’ and the earlier trade mark 2) contains the additional verbal element ‘FOODS’ with a horizontal green line below them. The verbal elements ‘RICEMILLS’ and ‘FOODS’ are depicted in slightly smaller size letters than the verbal element ‘HERBA’ above them.

The verbal element ‘HERBA’ will be perceived by part of the relevant public as similar to an equivalent English word ‘herb’ or the French word ‘herbe’ or the Italian word ‘erba’ or Spanish word ‘hierba’ which mean any plant with leaves, seeds, or flowers used for flavouring, food, medicine, or perfume (information extracted from Oxford Dictionaries on 22/08/2019 at https://www.lexico.com/en/definition/herb ). Taking into account that some of the opponent’s goods can contain herbs as ingredients for adding a flavour, such as mustard, vinegar, sauces; spices in Class 30 for the part of the public which understands its meaning, the verbal element ‘HERBA’ is weak. However, it is not related to other goods such as fish in Class 29 or ice in Class 30 and thus has a normal degree of distinctiveness. For the part of the relevant public which does not attribute any particular meaning to the verbal element ‘HERBA’, it has an average degree of distinctiveness.

The verbal element ‘RICEMILLS’ in the earlier trade mark 1) is meaningless as such and therefore inherently distinctive for part of the relevant public which does not attribute any particular meaning to it. However, part of the relevant pubic, such as the English-speaking part of the public will perceive this verbal element as composed of two English words, namely ‘RICE’ and ‘MILLS’. The word ‘rice’ refers to grains used as food and it is non-distinctive for some of the opponents goods such as opponent’s rice, goods based on rice, prepared dishes in which rice is the main ingredient, rice cakes in Class 30. However, it has a normal degree of distinctiveness in relation to the opponent’s goods which are not related to rice or cereals which could contain rice or flour which could be made from rice. The word ‘MILLS’ will be perceived as the plural form of the word ‘MILL’ which means ‘a building equipped with machinery for grinding grain into flour’ (information extracted form Oxford Dictionaries on 22/08/2019 at https://www.lexico.com/en/definition/mill). It is weak in relation to some of the opponent’s goods such as flour for food in Class 30 as it alludes to the place or machinery where the flour is made; however it has no relationship with the majority of the opponent’s goods and its distinctiveness is average. As combination of words ‘RICE’ and ‘MILLS’ alludes to the place or machinery where rice is milled, it is weak in relation to opponents goods related to rice and rice flower such as rice, goods based on rice, prepared dishes in which rice is the main ingredient, rice cakes;  flour for food, potato flour, prepared meals based on flour in Class 30.

The verbal element ‘FOODS’ in the earlier mark 2) is an English word which refers to what people or animals eat. It directly describes the nature of the goods which are foodstuffs, namely the goods in Classes 29 and 30 of the earlier mark 2) and it is non-distinctive for the part of the relevant public which understands its meaning. However, it has no relationship with some of the goods in Class 5 such as plasters and it has an average degree of distinctiveness even for the part of the public which understands its meaning. For the part of the public which perceives the word ‘FOODS’ as meaningless, it has normal degree of distinctiveness in relation to all the goods in the earlier mark 2).

The figurative element of the wheat sheaf present in both earlier trade marks for some of the contested goods such as cereal-based snack food; cereal preparations in Class 30 is weak as it alludes that the goods are made from wheat; however, it is not related in any way with the majority of the opponent’s goods and it is normally distinctive for those goods.

The horizontal line at the bottom of both earlier trade marks is a basic shape and it has no trade mark significance.

Contrary to the opponent’s argument, in the Opposition Division’s view the earlier marks have no element that could be considered clearly more dominant than other elements.

The contested sign is a figurative trade mark containing a verbal element ‘HERBALPEDIA’, some figurative elements, namely an arch and an image of a man and the number ‘1518’ to the right of that image. Below the aforementioned elements, there are four Chinese or Japanese characters depicted in white on a black colour rectangular shape background.

The verbal element ‘HERBALPEDIA’ as such is meaningless and has an average degree of distinctiveness. However, the English-speaking part of the relevant public will perceive the component ‘HERBAL’ as something ‘relating to or made from herbs, especially those used in cooking and medicine’ (information extracted from Oxford Dictionaries on 22/08/2019 at https://www.lexico.com/en/definition/herbal). Furthermore, the other part of the relevant public such as French-, Italian- or Spanish-speaking part of the public will associate the component ‘HERBAL’ with a similar word in corresponding languages such as ‘herbe’ in French, ‘erba’ in Italian or ‘hierba’ in Spanish and will also perceive as relating to plants. Taking into account that some of the contested goods can be made from herbs or contain them as ingredients such as chinese patent medicine in Class 5 or plant beverages in Class 32, this component is weak for the part of the public which perceives such meaning in the verbal element ‘HERBALPEDIA’. It is also not excluded, as the opponent argues, that the relevant public may associate the suffix ‘-PEDIA’ with the word encyclopaedia, such as Wikipedia however it is not related to the relevant goods and services and it is normally distinctive.

The opponent argues that an image of a man in the contested sign makes a reference to a Chinese acupuncturist of the Ming Dynasty Li Shinzen. Although some relevant consumers might have knowledge of this character, it is not possible to assume that they will associate the image in the contested sign with this person. Furthermore, the majority of the relevant consumers will not be aware of the name of the Chinese acupuncturist to make a link between him and the image in the contested sign. Therefore, the figurative element will be perceived as an image of a man not related to the relevant goods and services and as such normally distinctive. The number ‘1518’ will be perceived as a year indicating a long running tradition or history of manufacturing the goods or providing services and thus its distinctiveness is low.

The Chinese or Japanese characters do not convey any meaning to the relevant consumers, they are not related in any way with the relevant goods and services and their distinctiveness is average.

The black rectangular shape is a simple background on which the Chinese or Japanese characters are depicted. Furthermore, it is a basic geometrical shape and is non-distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘HERBA’ present in all the signs. However, they differ in that in the earlier marks these letters constitute an independent verbal element whilst in the contested sign they form part of the verbal element ‘HERBALPEDIA’. The signs differ in that the earlier trade marks contain additional verbal element ‘RICEMILLS’ (earlier trade mark 1)) and ‘FOODS’ (earlier trade mark 2)) which have no counterpart in the contested sign. On the other hand, the contested sign contains the letters ‘PEDIA’ which follow the coinciding letters ‘HERBA’. Furthermore, the colours and the overall graphic depiction of the signs are also quite different. The earlier trade marks contain an image of wheat sheaf placed above verbal elements, whilst the contested sign contains an image of a man placed almost in the centre of it. Moreover, the Chinese or Japanese characters at the bottom of the contested sign contribute also to the overall visual perception of the contested sign while they do not have counterparts in the earlier trade marks.

In its observations the opponent argues that the primacy of the verbal element over the figurative element should be taken into account. Although in principle when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. However, the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (judgment of 23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). Furthermore, in the present case none of the signs has any element that could be considered clearly more dominant than other elements. The figurative elements in the earlier trade marks and in the contested sign are completely different and do contribute in the overall visual perception of the signs.

Therefore, taking into account all the above described differences between the signs and that they coincide in letters ‘HERBA’ only, the signs are visually similar at most to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛HERBA’, present identically in all the signs. The pronunciation differs in the sound of the letters ‛RICEMILLS’ in the earlier mark 1) and in the sound of the letters ‘FOODS’ in the earlier mark 2) versus the sound of the letters ‘PEDIA’ of the contested sign. The figurative elements, the number ‘1518’ and the Chinese or Japanese characters will not be pronounced when referring to the signs aurally and they are not subject to a phonetic assessment.

Although the pronunciation of the signs coincides in their first five letters, the remaining letters will be pronounced completely differently and therefore the signs are aurally similar at most to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public which perceives the meanings of the words ‘HERBA’/’HERBAL’, ‘RICEMILLS’, ‘FOODS’ and the meaning of the suffix ‘PEDIA’, the signs will be associated with the similar meaning of herb/herbal as described above. However, the differing verbal elements in the earlier marks ‘RICEMILLS’ and ‘FOODS’ versus suffix ‘PEDIA’ in the contested sign convey different meanings. Moreover, the figurative elements in the signs also convey different concepts. Therefore, the signs conceptually are similar to a low degree.

For the part of the public which only perceives the meaning of the words ‘HERBA’/’HERBAL’ such as Spanish-, Italian- or French-speaking part of the public, and will perceive the meaning of the suffix ‘PEDIA’ in the contested sign, the remaining elements ‘RICEMILLS’ and ‘FOODS’ are meaningless however the figurative elements convey different concepts (wheat sheaf in the earlier marks versus an image of a man in the contested sign). Therefore, for this part of the public the signs are similar at most to an average degree.

For the part of the public which does not perceive the meanings of the verbal elements ‘HERBA’/’HERBAL’, ‘RICEMILLS’ and ‘FOODS’ but will perceive the meaning of the suffix ‘PEDIA’ in the contested sign as described above and the figurative elements convey different meanings as explained above, the signs are conceptually not similar.

For the part of the public for which none of the verbal elements have a meaning, since the figurative elements in the signs introduce different concepts, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non‑distinctive or weak elements in the marks depending on their perception by the public and the relationship with the goods, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods and services are found to be identical or similar to varying degrees or dissimilar. They are directed towards both the public at large and business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from lower than average to high. The signs are visually similar at most to a low degree and aurally similar to an average degree. Conceptually, depending on the public’s perception of the verbal elements of the signs, the signs are either similar to a low or to at most an average degree or not similar.

Account must be taken of the fact that the relevant goods and services mainly are chosen visually. Furthermore, the relevant goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore, the visual perception of the marks in question will generally take place prior to purchase. Consequently, the visual aspect plays a greater role in the global assessment of the likelihood of confusion and the differences between the signs described in section c) of this decision, are particularly relevant when assessing the likelihood of confusion between them.

As explained above in section c) of this decision, the similarity between the signs lies in that they all contain the letters ‘HERBA’. However, in the earlier trade marks these letters form an independent verbal element whilst in the contested sign they appear as part of a clearly longer verbal element (HERBALPEDIA). Furthermore, the signs contain other verbal and figurative elements which have nothing in common. Namely, the differing verbal elements ‘RICEMILLS’ and ‘FOODS’ and the figurative element (the wheat sheaf) have no similarities whatsoever with the figurative element (image of a man) and the Chinese or Japanese characters in the contested sign. Furthermore, the signs differ in their colours and graphic depiction. In the earlier marks the figurative elements (the wheat sheaf) appears in the upper part whilst in the contested sign the image of a man and the Chinese or Japanese characters appear at the bottom. Moreover, the verbal elements in the earlier marks are two words placed one above the other whilst in the contested sign the verbal element appears as one word and in a semi-circular layout. Therefore, the aforementioned differences between the signs along with the difference in the colours and overall composition of the signs, is sufficient, in the Opposition Division’s view, to dispel a likelihood of confusion. Consequently, the fact that the contested sign contains the letters ‘HERBA’ in its verbal element does not by itself lead to a finding of likelihood of confusion, including likelihood of association and the Opposition Division considers that the consumer will be able to safely distinguish the signs.

The opponent refers to previous decisions of the Office to support its arguments, namely to Opposition Division decisions in oppositions No 2 627 928, No 2 220 906, No 461 162, No 2 495 961, No 1 264 987, No 1 295 536, No 1 156 001. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the signs at issue are not comparable. In the cases referred to by the opponent the signs either coincided in an independent verbal element ‘HERBA’ and did not contain further verbal and/or figurative elements significantly contributing to their overall perception as in the present case or the contested sign was a word mark with only one additional letter at the end (‘HERBAI’).

Furthermore, the opponent also referred to 12/12/2006 Decision of the Boards of Appeal in case R 13/2006 ( GALLO vs CARA DE GALLO ) and to 16/05/2007 decision of the Court in case T-137/05 (LA PERLA VS NIMEI LA PERLA MODERN CLASSIC). The Opposition Division notes that the previous cases referred to by the opponent are not relevant to the present proceedings as they involve other factors that have been taken into account upon concluding on the likelihood of confusion, in particular that the verbal element of the earlier mark is incorporated in its entirety as an independent verbal element in the contested sign and that the differing verbal or figurative elements are secondary; thus, given all the above, their findings cannot be transferred or considered in a different manner under the circumstances of the present case. In that sense, the opponent’s references to those case have to be disregarded.

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

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irina SOTIROVA

Birute SATAITE-GONZALEZ

Rosario GURRIERI

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.