OPPOSITION No B 3 058 046

Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5°1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Salumificio Santoro, Via Isonzo C.Da Martinelli, 72014 Cisternino, Italy (applicant).

On 10/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 046 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 798 001 . The opposition is based on European Union trade mark registrations No 13 269 386 and No 13 269 451 . 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:

EUTM No 13 269 386

Class 29: Cheese products; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products.

EUTM No 13 269 451

Class 29: Cheese of Spanish origin; olives; Iberian ham; Iberian loin; products made of Iberian pork; prepared nuts.

The contested goods are the following:

Class 29: Meats; sausage skins and imitations thereof; pastrami; smoked meats; meat spreads; beef; ham; prosciutto; salami; pepperoni; sausages; smoked sausages; cured sausages.

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.

The contested meats; pastrami; smoked meats; meat spreads; beef; ham; prosciutto; salami; pepperoni; sausages; smoked sausages; cured sausages are identical to the opponent’s meat either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested sausage skins and imitations thereof are natural or artificial casings that enclose the sausage filling. They are usually made from animal intestines. These goods target professionals, such as butchers, who will purchase these at the same points of sale as the opponent’s meat. Consequently, these goods are considered to be similar to a low degree.

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 are directed at the public at large; goods found to be similar to a low degree are directed at the professional public.

The degree of attention is considered to vary from average to high.

c) The signs

a) EUTM registration No 13 269 386 b) EUTM registration No 13 269 451
Earlier trade marks	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).

Earlier mark a) is a figurative mark consisting of two elements: a black bull’s head facing forward and on it the words ‘TORO OSBORNE’, written in two lines. The word ‘TORO’ is in a slightly stylised bold white upper-case typeface and the word ‘OSBORNE’ is in a smaller standard white typeface.

Earlier mark b) is a figurative mark consisting of two elements: a depiction of a bull and below it the words ‘TORO OSBORNE’, written in two lines. The word ‘TORO’ is in a slightly stylised bold white upper-case typeface and the word ‘OSBORNE’ is in a smaller standard white typeface. All the elements are placed on a round black background with no distinctive value.

The verbal element ‘TORO’ of the earlier marks will be perceived by the Italian- and Spanish-speaking part of the public as referring to ‘bull, male, bovine animal’. Bearing in mind that the relevant goods are foodstuffs, this element is non-distinctive for some of these goods, namely for meat and meat extracts, since the public will perceive this element as the animal from which these goods originate. The same reasoning applies to the figurative elements of the bulls in the earlier marks. The verbal element ‘OSBORNE’ of the earlier marks will be perceived by the Spanish-speaking part of the public as referring to a surname and is therefore distinctive to an average degree. For the rest of the public, the words ‘TORO’ and ‘OSBORNE’ are meaningless and, therefore, distinctive to an average degree.

The words ‘TORO’ and the figurative elements of the bull overshadow the remaining verbal element of the earlier marks by virtue of their central position and size.

The contested sign is a figurative mark consisting of three elements: on top, a figurative element consisting of two golden curved lines; below it, the word ‘SANTORO’ in a standard black upper-case typeface; and underneath this word the expression ‘SALUMI D’ECCELLENZA’ in a smaller standard black typeface.

The verbal element ‘SANTORO’ will be perceived by the Italian-speaking part of the public as a surname. For the rest of the public, this word is meaningless. In any case, as this element is meaningless or not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree. Due to the lack of any connection with the relevant goods, the figurative element is also distinctive to an average degree.

The opponent claims that the relevant public will perceive the word ‘SAN’ as a mere complement to the word ‘TORO’ with the meaning of ‘someone who has died and been officially recognized and honoured by the Christian church because his or her life was a perfect example of the way Christians should live’ (information extracted from Collins Dictionary on 24/04/2019 at https://www.collinsdictionary.com/dictionary/english/saint). However, the word ‘SAN’ cannot serve as a complement to the word ‘TORO, since it is always followed by a name of a person (such as San Francisco and San Paolo). Therefore, the Opposition Division considers that the relevant public will not split the trade mark into two meaningful elements but will perceive the trade mark as a single unit.

The expression ‘SALUMI D’ ECCELLENZA’ will be perceived by the Italian-speaking part of the public as ‘high-quality cured meats that are sliced and served as an appetiser in an Italian meal’. It is not distinctive in relation to the goods at issue, as it indicates the quality and nature of the goods (high-quality salami). For the rest of the public, these words are meaningless and therefore distinctive to an average degree.

The verbal element ‘SANTORO’ and the figurative element overshadow the other verbal element of the mark by virtue of their central position and size.

Visually and aurally the signs are similar on account of the element ‘TORO’. However, the signs differ in all the other elements as described above, most importantly in the first three letters of the dominant verbal element of the contested sign, ‘SAN’.

In the present case, it is of particular importance to note that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In these circumstances, the different beginning, ‘SAN’, of the contested sign will be noted by the consumers. For the reasons described above in this section, this beginning part does not play a separate role and consequently gives the sign a very different visual and aural pattern and intonation.

Consequently, the signs are considered visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by the Italian-speaking part of the public with a dissimilar meaning, the signs are conceptually not similar.

For the rest of the public that will perceive the meaning of the figurative elements of the earlier marks as explained above, and for the Spanish-speaking part of the public that will also understand the meaning of the words ‘TORO’ and ‘OSBORNE’ of the earlier marks, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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 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 elements in the marks, as stated above in section c) of this decision.

e) 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 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 have been found to be identical or similar to a low degree, and the level of attention is considered to vary from average to high. The marks have been found to be visually and aurally similar to a low degree. It is true that the verbal element ‘TORO’ of the earlier marks is also present at the end of one of the verbal elements of the contested mark, ‘SANTORO’. However, despite the identical letters in the signs, the signs differ in the initial letters, to which consumers pay the most attention. In addition, the marks have a number of additional figurative and word elements that have no counterparts in the other mark and lead to different overall impressions of the signs. Furthermore, regarding the conceptual comparison, the marks have no concept in common that would lead the public to associate one with the other.

Consequently, the Opposition Division finds that the differences between the signs will enable the relevant consumers to safely distinguish between them and will not lead consumers to associate the goods, even those that are identical and even considering that the public’s degree of attention will vary from average to high, with the same undertaking or economically linked undertakings, let alone confuse the signs.

Considering all the above, 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Cynthia DEN DEKKER

Birgit FILTENBORG

Erkki MÜNTER

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.