OPPOSITION No B 3 056 622

Xingu Fruit Polpas De Frutas Industria e Comercio Ltda, Rod Castanhal/Inhangapi Km 07 S/N, Caixa Postal: 133, 68746-899 Castanhal - PA, Brazil (opponent), represented by J. Pereira Da Cruza, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Xingu Advertising GmbH, Dachauer Straße 15 c, 80335 München, Germany (applicant), represented by Lexea Rechtsanwälte, Am Römerturm 1, 50667 Köln, Germany (professional representative).

On 28/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 622 is upheld for all the contested services.

2. European Union trade mark application No 17 890 217 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 890 217 for the word mark ‘XINGU’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 17 706 771 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 services

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

Class 35: Rental of automatic vending machines; presentation of goods on communication media, in relation to retail purposes; Commercial or industrial management assistance; Assistance with business management; Business management consultancy; Business organization consultancy; Professional business consultancy, Demonstration of goods; Sample distribution; Distribution of advertising material; Efficiency experts; Provision of business information; Marketing services; Organisation of exhibitions for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Negotiation of business contracts for others; Retailing of non-alcoholic beverages via electronic means and global computer networks; Business administration; Retailing of foodstuffs via electronic means and global computer networks; Distribution of gifts (advertising material); Market research; Negotiation and conclusion of commercial transactions for third parties.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; Business assistance, management and administrative services; Business analysis, research and information services; Advisory services relating to commercial transactions; Advisory and consultancy services relating to the procurement of goods for others; Consulting in sales techniques and sales programmes; Information about sales methods; Price analysis services; Sales management services; Arranging of commercial and business contacts.

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 advertising and promotional services are included in, or overlap with, the opponent’s marketing services. Therefore, they are identical.

Marketing services are identically contained in both lists of services.

The contested advisory services relating to commercial transactions; advisory and consultancy services relating to the procurement of goods for others; arranging of commercial and business contacts; sales management services overlap with the opponent’s negotiation and conclusion of commercial transactions for third parties. Therefore, they are identical.

The contested business analysis, research and information services are included in, or overlap with, the broad category of the opponent’s business management consultancy. Therefore, they are identical.

Business assistance, management and administrative services are identically contained in both lists of services (including synonyms) or include, as broader categories, the opponent´s assistance with business management; business management consultancy; business administration. Therefore, they are identical.

The contested consulting in sales techniques and sales programmes; information about sales methods; price analysis services are included in the broad category of the opponent’s professional business consultancy, and are therefore 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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the price, the specific nature, terms and conditions of the services purchased.

c) The signs

	XINGU
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 common element ‘XINGU’ does not convey any meaning and will not be understood by the relevant public. Therefore, as this element in both signs does not have any meaning, it is fully distinctive for the services in question.

As for the element ‘FRUIT’ present in the earlier mark, it will be understood by a part of the public, such as the English and French-speaking, as referring to the edible fruit of a plant. The rest of the relevant public will not associate this word with any meaning. Regardless of the part of the public, this element is considered to be distinctive as it does not present any connection with the services in question. It will also be perceived as secondary due to its smaller size and subordinate position within the sign.

The earlier mark is visually dominated by the figurative element and the word ‘Xingu’.

As for the figurative element of the earlier mark, it does not convey any obvious and concrete meaning and would be perceived as an elaborate abstract device of average distinctiveness. However, when signs consist of both verbal and figurative components, in principle, 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).

It follows that the relevant public will pay most attention to the verbal element ‘Xingu’ of the earlier sign rather than to its figurative element or the element ‘FRUIT’.

Visually, the signs coincide in verbal element ‘XINGU’, the most prominent verbal element of the earlier mark and the only element of the contested mark. They differ in the additional verbal element ‘FRUIT’ and the figurative element, both present only in the earlier mark. For the reasons explained above, both additional elements of the earlier mark, although not negligible, are less important and will make less impression on the consumers. Further differences between the signs are of little importance. In particular, the difference in the letter case is irrelevant as the contested mark is a word mark and is therefore protected as such (and not in a specific case) while the typeface used in the earlier figurative mark is rather standard and does not constitute any important visual difference between the signs.

Therefore, the signs are visually similar to an average 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 verbal element ‘XINGU’, present identically in both signs. The pronunciation differs in the additional element ‘FRUIT’, present only in the earlier sign. However, considering that it is not the dominant element, it is likely to make less impact.

Therefore, the signs are similar to an average degree.

Conceptually, for a part of the public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public. For another part of the public, namely the part that will perceive the concept of the word ‘FRUIT’, as the other sign lacks 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 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 services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the services have been found identical and the relevant public consists of business customers with specific professional knowledge or expertise and displaying a degree of attention that varies from average to higher than average.

If there is identity between the services, such a finding would imply, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high (13/11/2012, T 555/11, tesa TACK, EU:T:2012:594, § 53 and the case-law cited therein). This is certainly not the case here as the the signs have been found visually and aurally similar to an average degree, on account of their coincidence in the verbal element ‘XINGU’, which is the most prominent verbal element of the earlier mark and the only element of the contested sign. The conceptual aspect either does not influence the comparison or the marks are not conceptually similar. Furthermore, the earlier mark has a normal degree of distinctiveness in the relevant territory.

It is therefore apparent that the differences between the signs, namely the additional elements of the earlier mark, play a secondary role and are certainly not sufficient to exclude the likelihood of confusion in relation to identical services. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

All of this is considered having in mind that the public in question are professionals whose degree of attention that varies from average to higher than average as even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 17 706 771. It follows that the contested trade mark must be rejected for all the contested services.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Helen Louise MOSBACK

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.