OPPOSITION No B 3 064 543

Roster S.R.L., Corso Vittorio Emanuele II, 68, 10121 Torino, Italy (opponent), represented by Interpatent, Via Caboto, 35, 10129 Torino, Italy (professional representative)

a g a i n s t

Gastivo portal GmbH, Flughafenallee 15, 28199 Bremen, Germany (applicant), represented by Görg Partnerschaft von Rechtsanwälten mbB, Upper West Kantstraße 164, 10623 Berlin, Germany (professional representative).

On 17/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 543 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 17 786 823 for the figurative mark , namely against all the goods in Classes 29 and 30 and some of the services in Class 35. The opposition is based on Italian trade mark registration No 1 101 620 for the figurative 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.

a) The goods and services

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

Class 29: Meat, fish, poultry, game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk, dairy products; oils and edible fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; yeast and baking powder; salt; mustard; vinegar; sauces [condiments]; spices; ice.

Class 31: Agricultural, horticultural, forestry produces and grains, not included in other classes; live animals; fresh fruits and vegetables; crop seeds, natural plants and flowers; foodstuffs for animals, malt.

The contested goods and services are the following:

Class 29: Meat; fish; poultry; game; meat extracts; preserved, dried and cooked fruits and vegetables; including all the aforesaid goods in the form of extracts; jellies; jams; compotes; eggs; milk; milk products; dairy product substitutes; yoghurt: soya preparations; edible oils and fats; soup and soup products in powder or liquid form; enriched soup and soup products in powder or liquid form; preparations for making soup in powder or liquid form; dietetic foodstuffs for non-medical purposes based on proteins, fats with added fatty acids, vitamins, minerals, trace elements, secondary plant materials, either singly or in combination, included in Class 29; edible seeds; fruit-based snack food; milk shakes; processed seeds; dried fruit; including all of the aforesaid goods in dietetic form, other than for medical purposes.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 35: Retailing and wholesaling, in particular via the internet, in the fields of goods for restaurants and hotels, foodstuffs; wholesaling and retailing in the field of foodstuffs; retailing, wholesaling and/or mail order, including via the internet and/or teleshopping channels, in fields of foodstuffs; retailing and wholesaling of meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jams, compotes, eggs, milk and milk products, oils and fats for food; retailing and wholesaling of coffee, tea, cocoa and artificial coffee, sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice for refreshment; retailing and wholesaling of agricultural and horticultural products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, in particular holders for flowers and plants, foodstuffs for animals, malt; mail order retailing and wholesaling of meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jams, compotes, eggs, milk and milk products, oils and fats for food; mail order retailing and wholesaling of coffee, tea, cocoa and artificial coffee, sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice for refreshment; mail order retailing and wholesaling of agricultural and horticultural products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, in particular holders for flowers and plants, foodstuffs for animals, malt; retailing and wholesaling via the internet of meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jams, compotes, eggs, milk and milk products, oils and fats for food; retailing and wholesaling via the internet of coffee, tea, cocoa and artificial coffee, sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice for refreshment; retailing and wholesaling via the internet of agricultural and horticultural products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, in particular holders for flowers and plants, foodstuffs for animals, malt.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and business customers (e.g. wholesaling services in Class 35). The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 sign depicts the letter ‘G’ in a bold, rounded typeface, with a device resembling a bird’s leg extending downwards. The whole figurative element has a dark outline. Both the letter and its stylisation are distinctive.

The contested sign is formed by a highly stylised letter ‘G’, which alludes to an inverted drop or a localisation pin of the kind often used to mark places on digital maps. Nevertheless, the latter allusion does not alter the distinctiveness of the stylisation itself, as the sign as a whole can well serve origin identifying functions, when put on goods or in the context of providing services.

Visually, the signs coincide in the fact that both are made up of a stylised letter ‘G’. However, they differ in the particular stylisations of these letters.

In the earlier sign the letter ‘G’ is highly stylised. It is bold and is standing on a bird’s foot. Nevertheless, the letter itself is clearly perceptible.

The contested sign is also highly stylised, as it is composed of a drop/localisation pin formed upon the letter ‘G’. It is reasonable to assume that most consumers will directly recognise the letter, but it also cannot be excluded that some might need a few seconds to recognise it within the figurative element.

Moreover, it must also be borne in mind that the length of signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In this case, both marks are formed by one particularly stylised letter. Therefore, in the Opposition Division’s view, the clearly perceptible differences between the signs outweigh the similarities and, consequently, the signs are visually similar only to at most a low degree.

Aurally, at least for part of the public, the pronunciation of the signs coincides in the sound of the letter ‘G’. Therefore, the signs are identical.

However, the General Court has held that mere letters featuring a very specific graphic appearance are generally not pronounced but, rather, tend to be described (22/09/2011, T‑174/10, A, EU:T:2011:519, § 32; 10/10/2012, C‑611/11 P, A, EU:C:2012:626). Therefore, it cannot be excluded that due to the high stylisation of the signs they will not be pronounced and, therefore, the signs will not be aurally similar.

Conceptually, the earlier sign will be associated with a letter on a bird’s leg. This concept is quite unique and will attract attention. The contested sign could be perceived as a drop or a location pin. Although both signs contain the letter G, the additional figurative elements/stylisation dominate the letters hidden within the signs.

Therefore, despite the overlap in the letter ‘G’, the signs are conceptually similar to a low degree.

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

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).

It follows from the case-law of the Court that in the assessment of likelihood of confusion between signs comprising the same single letter, the visual comparison is, in principle, decisive. The aural and conceptual identity may be overridden, in the assessment of likelihood of confusion, by sufficient visual differences between the signs.

In the present case, the similarities between the signs are limited to the fact that each sign contains the letter ‘G’. Nevertheless, as argued above in detail, the letters are represented in sufficiently different ways for the consumers not to associate them with each other.

The opponent’s arguments, referring to the way the signs are used on the market, are not relevant, as it is the way in which the marks are registered and applied for that is assessed under Article 8(1)(b) EUTMR.

Therefore, considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. 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

Tu Nhi VAN

Marta Maria CHYLINSKA

Gonzalo BILBAO TEJADA

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.