OPPOSITION No B 3 057 744

Cecílio, S.A., Polo Empresarial Cecílio, Zona Industrial do Monte da Barca, 2100-051 Coruche, Portugal (opponent), represented by Furtado - Marcas E Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)

a g a i n s t

Nestrading Lda, Rua Da Lavandeira, Nº 340, São João De Ver, 4520-612 São João De Ver, Portugal (applicant)

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 744 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 881 805 for the word mark ‘Biscoitos da Avó’. The opposition is based on Portuguese trade mark registrations No 279 826 and No 371 418 for the figurative marks and respectively. 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.

1. The goods

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

-Earlier trade mark registration No 371 418 (Earlier mark No 1):

Class 29: Marmalade

-Earlier trade mark registration No 279 826 (Earlier mark No 2):

Class 30: Rice

The contested goods, following the limitation requested by the applicant on 21/08/2018 and the partial rejection of the application on 09/09/2019, are the following:

Class 30: Foods consisting principally of bread; tortilla snacks; filled baguettes; baozi [stuffed buns]; chocolate-based ready-to-eat food bars; cereal-based meal replacement bars; chocolate-based meal replacement bars; pre-baked pizzas crusts; pizza bases; grain-based chips; bibimbap [rice mixed with vegetables and beef]; chinese stuffed dumplings (gyoza, cooked); shrimp dumplings; flapjacks; millet cakes; buns; steamed buns stuffed with minced meat (niku-manjuh); burritos; prepared hot dogs; calzones; canapes; chalupas; samosas; chimichanga; wonton chips; chow mein; chow mein [noodle-based dishes]; crepes; rice crusts; crumble; empanadas; pot pies; pies containing meat; pies containing poultry; pies containing game; pies containing vegetables; poultry and game meat pies; pork pies; meat pies [prepared]; pies [sweet or savoury]; enchiladas; chips [cereal products]; corn kernels being toasted; cheeseburgers [sandwiches]; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; jiaozi [stuffed dumplings]; kimchi pancakes (kimchijeon); snacks manufactured from muesli; fried corn; maize, roasted; nachos; stir-fried noodles with vegetables (japchae); okonomiyaki [japanese savory pancakes]; pancakes; green onion pancake [pajeon]; mung bean pancakes (bindaetteok); pumpkin porridge (hobak-juk); bean jam buns; filled bread rolls; prawn crackers; flaky pastry containing ham; pastries consisting of vegetables and poultry; pastries consisting of vegetables and fish; mincemeat pies; popcorn; caramel coated popcorn with candied nuts; candy coated popcorn; caramel coated popcorn; flavoured popcorn; microwave popcorn; processed unpopped popcorn; quiches; vegetable pies; egg rolls; cheese curls [snacks]; pineapple fritters; extruded wheat snacks; rice-based snack food; cereal-based snack food; banana fritters; vegetable flavoured corn chips; seaweed flavoured corn chips; corn chips; spring rolls; tortillas; taco chips; toasted cheese sandwich; toasted cheese sandwich with ham; wontons; cereal bars and energy bars; sweets (candy), candy bars and chewing gum; chocolate vermicelli; cotton candy; foodstuffs containing cocoa [as the main constituent]; foods with a cocoa base; almonds covered in chocolate; liquorice flavoured confectionery; chocolate flavourings; confectionery items coated with chocolate; candy; chocolate bark containing ground coffee beans; chocolate coated nougat bars; bars of sweet jellied bean paste (yohkan); sweet bean jam coated with sugared-bean based soft shell [nerikiri]; chocolate creams; chocolate with japanese horseradish; chocolate; aerated chocolate; chocolate with alcohol; non-medicated chocolate; chocolate for toppings; chocolate for confectionery and bread; chocolates; liqueur chocolates; chocolate topping; marshmallow topping; chocolate bunnies; confectionery; flavoured sugar confectionery; low-carbohydrate confectionery; chocolate-coated sugar confectionery; confectionery having wine fillings; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; chocolate flavoured confectionery; mint flavoured confectionery (non-medicated -); confectionery in frozen form; frozen confections on a stick; frozen confectionery containing ice cream; boiled confectionery; chocolate confectionery having a praline flavour; chocolate confectionery containing pralines; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated flour confectionery containing chocolate; peanut confectionery; almond confectionery; nut confectionery; ginseng confectionery; orange based confectionery; dairy confectionery; mousse confections; non-medicated flour confectionery; non-medicated mint confectionery; confectionery in liquid form; frozen dairy confections; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery containing chocolate; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery in the shape of eggs; non-mediated confectionery for use as part of a calorie-controlled diet; confectionery containing jam; confectionery containing jelly; custard; chocolate spreads; chocolate spreads for use on bread; custards [baked desserts]; cocoa based creams in the form of spreads; croissants; decorations [edible] for christmas trees; chocolate decorations for confectionery items; chocolate decorations for cakes; chocolate decorations for christmas trees; turkish delight; turkish delight coated in chocolate; confectionery for decorating christmas trees; panned sweets (non-medicated -); potato flour confectionery; floating islands; chocolate fondue; chocolate coated fruits; chocolate-coated nuts; coated nuts [confectionery]; confectionery ices; fruit jellies [confectionery]; chocolate waffles; sugar-coated coffee beans; halvah; imitation chocolate; cocoa-based ingredients for confectionery products; marzipan; chocolate marzipan; kheer mix (rice pudding); mousses (chocolate -); mousses (dessert -) [confectionery]; nougat; chocolate coated macadamia nuts; deep-fried dough sticks (youtiao); pandoro; panettone; poppadums; edible paper; herbal honey lozenges [confectionery]; pavlovas made with hazelnuts; butterscotch chips; preparations for making of sugar confectionery; non-medicated confectionery products; non-medicated chocolate confectionery; non-medicated flour confectionery coated with chocolate; ice confectionery; chocolate-based spreads; chocolate spreads containing nuts; eight-treasure rice pudding; bread pudding; semolina pudding; crème caramel; jam buns; puddings; yorkshire puddings; ready-to-eat puddings; cinnamon rolls; sandwich spread made from chocolate and nuts; fruited scones; instant dessert puddings; dessert souffles; apple fritters; sopapillas [fried bread]; sopapillas [fried pastries]; imitation custard; marzipan substitutes; meringues; tablet (confectionary); tiramisu; peanut brittle; truffles (rum -) [confectionery]; fried dough twists; truffles [confectionery]; vla [custard]; wafered pralines; waffles; waffles with a chocolate coating.

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 goods can all be grouped in one of the following two categories:

1. Confectionery, candies, chocolate and desserts which include the contested chocolate-based ready-to-eat food bars; chocolate-based meal replacement bars; ; sweets (candy), candy bars and chewing gum; candy marshmallow topping; chocolate vermicelli; foodstuffs containing cocoa [as the main constituent]; foods with a cocoa base; almonds covered in chocolate; liquorice flavoured confectionery; chocolate flavourings; confectionery items coated with chocolate; candy; chocolate bark containing ground coffee beans; chocolate coated nougat bars; bars of sweet jellied bean paste (yohkan); sweet bean jam coated with sugared-bean based soft shell [nerikiri]; chocolate creams; chocolate with japanese horseradish; chocolate; aerated chocolate; chocolate with alcohol; non-medicated chocolate; chocolate for toppings; chocolate for confectionery and bread; chocolates; liqueur chocolates; chocolate toppingchocolate bunnies; confectionery; flavoured sugar confectionery; low-carbohydrate confectionery; chocolate-coated sugar confectionery; confectionery having wine fillings; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; chocolate flavoured confectionery; mint flavoured confectionery (non-medicated -); confectionery in frozen form; frozen confections on a stick; frozen confectionery containing ice cream; boiled confectionery; chocolate confectionery having a praline flavour; chocolate confectionery containing pralines; peanut confectionery; almond confectionery; nut confectionery; ginseng confectionery; orange based confectionery; dairy confectionery; mousse confections; non-medicated mint confectionery; confectionery in liquid form; frozen dairy confections; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery containing chocolate; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery in the shape of eggs; non-mediated confectionery for use as part of a calorie-controlled diet; confectionery containing jam; confectionery containing jelly; custard; chocolate spreads; chocolate spreads for use on bread; custards [baked desserts]; cocoa based creams in the form of spreads; croissants; decorations [edible] for christmas trees; chocolate decorations for confectionery items; chocolate decorations for cakes; chocolate decorations for christmas trees; turkish delight; turkish delight coated in chocolate; confectionery for decorating christmas trees; panned sweets (non-medicated -); floating islands; chocolate fondue; chocolate coated fruits; chocolate-coated nuts; coated nuts [confectionery]; confectionery ices; fruit jellies [confectionery]; chocolate waffles; sugar-coated coffee beans; halvah; imitation chocolate; cocoa-based ingredients for confectionery products; marzipan; chocolate marzipan; kheer mix (rice pudding); mousses (chocolate -); mousses (dessert -) [confectionery]; nougat; chocolate coated macadamia nuts; deep-fried dough sticks (youtiao); pandoro; panettone; poppadums; edible paper; herbal honey lozenges [confectionery]; pavlovas made with hazelnuts; butterscotch chips; preparations for making of sugar confectionery; non-medicated confectionery products; non-medicated chocolate confectionery; ice confectionery; chocolate-based spreads; chocolate spreads containing nuts; eight-treasure rice pudding; bread pudding; semolina pudding; crème caramel; jam buns; puddings; yorkshire puddings; ready-to-eat puddings; cinnamon rolls; sandwich spread made from chocolate and nuts; fruited scones; instant dessert puddings; dessert souffles; apple fritters; sopapillas [fried bread]; sopapillas [fried pastries]; imitation custard; marzipan substitutes; meringues; tablet (confectionary); tiramisu; peanut brittle; truffles (rum -) [confectionery]; fried dough twists; truffles [confectionery]; vla [custard]; wafered pralines; waffles; waffles with a chocolate coating; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated flour confectionery containing chocolate; non-medicated flour confectionery; potato flour confectionery; non-medicated flour confectionery coated with chocolate.

2. Ready to eat food and snacks, which includes the contested foods consisting principally of bread; filled baguettes; baozi [stuffed buns]; pre-baked pizzas crusts; pizza bases; bibimbap [rice mixed with vegetables and beef]; chinese stuffed dumplings (gyoza, cooked); shrimp dumplings; millet cakes; buns; steamed buns stuffed with minced meat (niku-manjuh); burritos; prepared hot dogs; calzones; canapes; chalupas; samosas; chimichanga; wonton chips; chow mein; chow mein [noodle-based dishes]; crepes; rice crusts; crumble; empanadas; pot pies; pies containing meat; pies containing poultry; pies containing game; pies containing vegetables; poultry and game meat pies; pork pies; meat pies [prepared]; pies [sweet or savoury]; enchiladas;; cheeseburgers [sandwiches]; hamburgers being cooked and contained in a bread roll; hamburgers contained in bread rolls; jiaozi [stuffed dumplings]; kimchi pancakes (kimchijeon); stir-fried noodles with vegetables (japchae); okonomiyaki [japanese savory pancakes]; pancakes; green onion pancake [pajeon]; mung bean pancakes (bindaetteok); pumpkin porridge (hobak-juk); bean jam buns; filled bread rolls; prawn crackers; flaky pastry containing ham; pastries consisting of vegetables and poultry; pastries consisting of vegetables and fish; mincemeat pies;; quiches; vegetable pies; egg rolls; cheese curls [snacks]; pineapple fritters; extruded wheat snacks; rice-based snack food; cereal-based snack food; banana fritters; spring rolls; tortillas; toasted cheese sandwich; toasted cheese sandwich with ham; wontons; tortilla snacks; cereal-based meal replacement bars; grain-based chips; flapjacks; chips [cereal products]; corn kernels being toasted; snacks manufactured from muesli; fried corn; maize, roasted; nachos; popcorn; caramel coated popcorn with candied nuts; candy coated popcorn; caramel coated popcorn; flavoured popcorn; microwave popcorn; processed unpopped popcorn; flavoured corn chips; seaweed flavoured corn chips; corn chips; taco chips; cereal bars and energy bars.

All these goods are dissimilar to the opponent’ s goods in Class 29 and 30 as they differ in their natures, specific purposes, distribution channels, sales outlets, producers and methods of use. Furthermore, they are not complementary to each other. The mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). A similarity will, therefore, exist only if the goods have some other relevant criterion or criteria in common, in particular their usual origin, nature, purpose or method of use.

In the case at hand, the fact that some of the contested goods may contain marmalade or rice, which are the opponent´s goods does not lead to the finding of any relevant degree of similarity, because the latter are mere ingredients that do not define the nature of the contested goods. Even if the ingredient could be considered as being the main ingredient of the prepared dish, a similarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use, which is not the case here, as mentioned above. For example, The opponent’s rice has to be boiled and prepared for consumption, whereas most of the contested goods are ready-to-eat products. The prepared meals contained I the contested list are usually not produced by the companies that produce and sell rice. In retail stores, both may be available but they would then be displayed in different departments/sections of such stores. Therefore, the goods in question differ in their natures, purposes, distribution channels, sales outlets, producers and methods of use. Furthermore, they are not complementary

Admittedly, both the opponent´s goods and the contested goods can be found for sale in large supermarkets. However, in such points of sale, the goods at issue are sold in different sectors, and are not usually placed on the same shelves, nor are they distributed through the same commercial channels.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

Helen Louise MOSBACK

Claudia SCHLIE

Saida CRABBE

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.