OPPOSITION No B 3 055 750

Jesus Navarro, S.A., C/ Isaac Peral, 46, 03660 Novelda (Alicante), Spain (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative)

a g a i n s t

Fratelli d’Acunzi S.r.l., via Portaromana n.85, 84015 Nocera Inferiore (SA), Italy (applicant), represented by Giustino Sisto, Via Luigi Guercio n.26, 84134 Salerno, Italy (professional representative).

On 12/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 750 is upheld for all the contested goods.

2. European Union trade mark application No 17 871 300 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 871 300 for the figurative mark , namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 16 624 587 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 and the applicant requested proof of use of some of these earlier marks. Bearing this in mind, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 624 587, which has been registered for less than five years at the time of the filing of the contested application and therefore is not subject to proof of use.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 29: Meats; fish, not live; poultry, not live; game, not live; fruit, preserved; prepared fruits; bottled vegetables; dried pulses; vegetables, cooked; jellies for food; marmalade; compotes; eggs; milk; cheese; milk products; almonds, ground; prepared walnuts; peanuts, prepared; butter; meat extracts; broth concentrates; meat, preserved; fish, preserved; vegetables, preserved; oils and fats; yoghurt; tomato purée; liver pâté; processed pignoli; sultanas; raisins; processed almonds; processed tomatoes; vegetable puree; fruit purees; vegetable-based cream; prepared coconut; dried olives; cooked olives; olives, preserved; olives, [prepared]; preserved garlic; processed, edible seaweed; albumen for culinary purposes; stock [prepared]; vegetable juice concentrates for food.

Class 30: Spices; condiments; saffron [seasoning]; cloves [spice]; clove powder [spice]; cumin powder; dried cumin seeds; caraway seeds; ginger [spice]; nutmegs; pepper; peppers [seasonings]; cinnamon [spice]; aniseed; star aniseed; sauces [condiments]; seasonings; coffee; tea; artificial coffee; infusions, not medicinal; cocoa; salt; cooking salt; salt for preserving foodstuffs; royal jelly; curry [spice]; sugar; natural sweeteners; essences for foodstuffs, except etheric essences and essential oils; vanilla; vanillin [vanilla substitute]; rice; tapioca; sago; flour; cereals; bread; pastries; confectionery; crème caramel; custards [baked desserts]; honey; golden syrup; yeast; cake powder; edible ices; mustard; vinegar; ice for refreshment; baking soda [bicarbonate of soda for cooking purposes]; fruit jellies [confectionery]; sugar coated pine nuts; fruit cakes; rice puddings containing sultanas and nutmeg; flavourings of almond; garlic puree; ginger puree; starch for food; gluten additives for culinary purposes; chocolate flavoured coatings; frozen custards; custard powder; preparations made from cereals; spice preparations; herbal preparations for making beverages; preparations for making gateaux; preparations for making pizza bases; preparations for making up into sauces; preparations for use as rising agents in food.

Following a limitation requested by the applicant on 28/09/2018, the contested goods are the following:

Class 29: Peeled tomatoes; processed tomatoes; tomato preserves; condensed tomatoes; tinned tomatoes; tomato concentrates [puree]; tomato preserves; tomato paste; tomato extracts; tomato purée; tomato juice for cooking; dried pulses; vegetables, cooked; vegetable preserves; processed pulses; canned pulses; lentils, preserved; mousses (vegetable -); legume salads; vegetables, tinned [canned (Am.)]; vegetable-based cream; mushrooms and processed vegetables; beans; dried beans; refried beans; baked beans; canned beans; chilli beans; bean dip; processed chickpeas; lentils, preserved; dried lentils; gherkins; pickled radishes; pickled vegetables; cocktail onions; pickled onions; preserved vegetables (in oil); peas, processed; peas, processed; peas, preserved.

Class 30: Processed corn; dried pasta; fresh pasta; pasta containing stuffings; deep frozen pasta; farinaceous food pastes; sour dough; wholemeal pasta; cookie dough; pizza dough; sponge cake.

As a preliminary remark, the applicant’s arguments regarding the origin of its and the opponent’s signs and goods and services are not valid. Under Article 8 of the EUTMR, only signs as registered and goods and services as established in the wording should be taken into account, not goods and services and signs as actually used (17/01/2012, T‑249/10, Kico, EU:T:2012:7, § 23).

Contested goods in Class 29

Processed tomatoes; tomato purée; dried pulses; vegetables, cooked; vegetable-based cream are identically contained in both lists of goods.

The contested peeled tomatoes; tomato preserves (listed twice); condensed tomatoes; tinned tomatoes; tomato concentrates [puree]; tomato paste; tomato extracts; tomato juice for cooking; vegetable preserves; processed pulses; canned pulses; lentils, preserved (listed twice); mousses (vegetable -); legume salads; vegetables, tinned [canned (Am.)]; mushrooms and processed vegetables; beans; dried beans; refried beans; baked beans; canned beans; chilli beans; bean dip; processed chickpeas; dried lentils; gherkins; pickled radishes; pickled vegetables; cocktail onions; pickled onions; preserved vegetables (in oil); peas, processed (listed twice); peas, preserved are included in the broad categories of, or at least overlap with, the opponent’s vegetables, cooked; fruit, preserved; prepared fruits; vegetables, preserved; processed tomatoes, taking into account that ‘preserved’ means food treated in a particular way so that it can be kept for a long time without going bad, including in a frozen, dried or cooked state. Therefore, they are identical.

Contested goods in Class 30

The contested processed corn; dried pasta; fresh pasta; pasta containing stuffings; deep frozen pasta; wholemeal pasta are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested farinaceous food pastes; sour dough; cookie dough; pizza dough; sponge cake are included in the broad categories of the opponent’s preparations for making gateaux; preparations made from cereals; preparations for making pizza bases. Therefore, they are identical.

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.

The degree of attention will vary from low to average, as most of the relevant goods are basic products that will be bought frequently at a low price.

c) The signs

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).

Both marks are figurative marks having in common the depiction of a female person. The earlier mark is a red and white trade mark consisting of the depiction of a female wearing a hat and, below, the verbal element ‘Carmencita’. The contested sign is composed of the verbal element ‘la Carmela’ in red title-case letters and, below, the depiction of a smiling female on a yellow background with a red outline.

The figurative elements of females, depicted in both signs, are distinctive as their representations are particular. However, the red background of the earlier mark is non-distinctive. The verbal element ‘Carmencita’ will be perceived by at least part of the relevant public as referring to a female given name, bearing in mind the famous opera Carmen by Georges Bizet, and will therefore be perceived as a nickname. The verbal element of the contested sign, ‘la Carmela’, is either meaningless or will be perceived as a female given name, for instance by the Spanish-speaking part of the public.

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 words ‘Carmencita’ and ‘Carmela’ have similar roots and will be perceived as variants/nicknames of the name ‘Carmen’ by the Spanish-speaking part of the public (https://www.behindthename.com/name/carmela).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for which there is a conceptual link between these elements.

The words ‘Carmencita’ and ‘Carmela’ have no particular meaning in relation to the relevant goods, and therefore they have an average degree of distinctiveness. However, the word ‘la’ is a definite article individualising the word that follows. It is the Spanish equivalent of the word ‘the’. This element is weak as it will be seen as qualifying the following element, namely ‘Carmela’.

There is no element that can be considered more dominant (eye-catching) in the signs at issue.

Visually, the signs coincide in the sequence of letters ‘Carme’ and in the final letter ‘a’, as well as in the colour red and the depiction of a female, although the depictions themselves are different. The signs differ in their additional letters, namely the letters ‘ncit’ toward the end of the earlier mark versus the first element ‘la’ and the letter ‘l’ in the contested sign, as well as in their figurative aspects and elements.

The figurative elements of the signs, even though they share similarities, cannot be considered identical. Moreover, 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2010‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Furthermore, when the element placed in the initial part has a weak distinctive character in relation to the goods and services covered by the marks at issue, the relevant public will attach more importance to their final part, which is the most distinctive (27/02/2014, T‑225/12, LIDL express, EU:T:2014:94, § 73), that is, in the present case to the coinciding sequence of letters ‘Carme’.

Notwithstanding this, considering the number of differences they display, in particular as far as the graphical aspect is concerned, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘Carme’ and in the final letter ‘a’, present identically in both signs. The pronunciation differs in the sound of the respective differing letters ‘la’ and ‘l’ in the contested sign and ‘ncit’ in the earlier mark.

Considering what has been stated in the visual comparison section, namely that the beginning of the signs is the most significant (except if the sign’s beginning has a weaker distinctive character), the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As there is a depiction of a female in both marks and as ‘Carmencita’ and ‘Carmela’ may be seen as nicknames/variants of ‘Carmen’ or at least as coming from the same origin, the marks 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.

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.

According to the opponent, the earlier trade mark has a reputation among the relevant public in the European Union in connection with some of the goods for which it is registered, namely spices; condiments; saffron [seasoning]; cloves [spice]; clove powder [spice]; cumin powder; dried cumin seeds; caraway seeds; ginger [spice]; nutmegs; pepper; peppers [seasonings]; cinnamon [spice]; aniseed; star aniseed; sauces [condiments]; seasonings; infusions, not medicinal; salt; cooking salt; salt for preserving foodstuffs; royal jelly; curry [spice]; sugar; natural sweeteners; essences for foodstuffs, except etheric essences and essential oils; vanilla; vanillin [vanilla substitute]; mustard; vinegar; flavourings of almond; garlic puree; ginger puree; starch for food; gluten additives for culinary purposes; spice preparations; herbal preparations for making beverages; preparations for making up into sauces; preparations for use as rising agents in food. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The documents provided are all in Spanish and no translation has been requested by the Office. As the applicant replied to the opponent’s observations and submissions without requesting a translation of the documents, it must be understood that the applicant acknowledged that the evidence is understandable without translation.

The opponent submitted, in particular, the following evidence:

 Annexes 1, 2 and 3: press review containing articles published in the Spanish press showing both advertisements and articles referring to the opponent’s mark. In particular, there are articles referring to the commercial success of the mark ‘CARMENCITA’, especially the fact that the opponent’s mark is the leader in the spices sector. An article published in February 2017 ranked ‘CARMENCITA’ as No 2 in the Spanish spices market. Annex 3 also contains screenshots showing products sold under the ‘CARMENCITA’ brand and available for sale in different countries, including the UK.

 Annex 4: 225-page document, described by the opponent as being the ‘CARMENCITA’ book. At the end of the document, Spanish personalities, such as Manolo Blahnik and Vicente del Bosque, and various chefs promote the opponent’s mark.

 Annex 5: printouts of Facebook and Twitter, showing the presence on social medias of the opponent’s brand.

 Annex 6: printouts showing the ‘CARMENCITA’ gastronomic studies workshop, organised together with the University of Alicante, which took place on 22/10/2018.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

It is clear from the evidence that the opponent’s earlier trade mark has been subject to intensive use within the relevant territory, where it is generally known in the product sector concerned. The press articles submitted under annexes 1-3 refer to the success of the opponent’s spices. Furthermore, while the articles are not translated into the language of the procedure, the very existence of articles taken from a scientific publication or the general-interest press constitutes a relevant factor in establishing the reputation of the products marketed under the trade mark ‘Carmencita’ with the general public, irrespective of the positive or negative content of those articles (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 54; confirmed in 10/05/2012, C‑100/11 P, Botolist / Botocyl, EU:C:2012:285). The press review is impressive, both in terms of the number and quality of the publications.

The applicant argued that the claim of enhanced distinctiveness should be set aside as the geographical scope was limited to the province of Alicante in Spain. First, the General Court has already considered that the United Kingdom is a substantial part of the European Union and that the territory of a Member State may be considered to constitute a substantial part of the territory of the European Union (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 44). Second, the rankings where the opponent’s mark is No 2 in terms of sales of spices concern the whole of Spain and not only a particular region. Therefore, this argument must be set aside.

The evidence submitted demonstrates that the earlier mark has been used long and intensively enough to have acquired an enhanced distinctive character in relation to spices.

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 signs are visually similar to a low degree, aurally similar to an average degree and conceptually highly similar, insofar as both signs contain a depiction of a female and a verbal element, ‘Carmencita’/‘la Carmela’, which elements are two variations/nicknames for the given name ‘Carmen’.

The goods are identical. According to case-law, when the goods covered by the signs at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

The earlier mark targets the general public displaying a degree of attention varying from low to average. Moreover, 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 relevant consumers are likely to remember that the marks contain the depiction of a female but would not remember the details that constitute the differences between the signs. Therefore, contrary to what is pointed out by the applicant, it is unlikely that consumers will remember/notice that the woman in the earlier mark is wearing a big sombrero from which a tuft of hair emerges that falls on her forehead, whereas the woman in the contested sign is smiling with her head slightly tilted, with brown hair at the sides of her face to beneath her ears, and wearing a green blouse.

Furthermore, the earlier mark enjoys an enhanced degree of distinctiveness, albeit not for all the relevant goods, but, in any case, for goods belonging to the same market sector as the contested goods.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, considering that the marks display similar structures, namely the depiction of a female and a verbal element that comes from the same root, the consumers that notice the differences between the signs may legitimately believe that the contested sign denotes a new brand line of goods provided under the opponent’s mark.

The applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 624 587. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier abovementioned right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Marine DARTEYRE

Birgit FILTENBORG

Loreto URRACA LUQUE

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.