OPPOSITION No B 3 060 141

Natsu Foods GmbH & Co. KG, Jagenbergstr. 4b, 41468 Neuss, Germany (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft MbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Sant Management BV, Ted Visserweg 38, 3951CE Maarn, Netherlands (applicant).

On 05/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 141 is upheld for all the contested services.

2. European Union trade mark application No 17 890 717 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all of the services (in Class 43) of European Union trade mark application No 17 890 717 for the word mark ‘NATSUN’. The opposition is based on, inter alia, German trade mark registration No 302 011 017 316 for the word mark ‘natsu’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s aforementioned German trade mark registration.

a) The services

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

Class 43: Accommodation and catering for guests; restaurant services; catering, restaurants, fast-food restaurants, selfservice restaurants, kiosks, cafeterias, snackbars, cafes, canteens; outside catering; takeaway food services; catering for guests in canteens; providing bars; delivery of food and drink to companies and private individuals within the framework of catering services; preparing and service of food and drink; public-house services; sushi bars, bistros.

The contested services are the following:

Class 43: Tourist home services; resort lodging services.

The applicant’s argument that the opponent’s earlier marks are used for goods and services that are of a different nature from its own, must be dismissed as irrelevant. The applicant argues that its business relates to a naturist holiday resort in the south-east of Spain, while the opponent’s is a company that prepares and sells food products. The Opposition Division remarks that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

The contested services are included in the broader category of the opponent’s accommodation for guests. 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 services found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

natsu	NATSUN
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the word mark is written in upper- or lower-case letters.

The earlier trade mark has no meaning for the relevant German public and is therefore distinctive.

The applicant argues that the contested sign is a combination of the two elements ‘NAT’ and ‘SUN’, which derive from the English words ‘naturism’ and ‘sun’. Notwithstanding the fact that the applicant did not submit any supporting evidence of ‘nat’ being a commonly perceived abbreviation for ‘naturism’ for the relevant public, it must be pointed out that the German expression for ‘naturism’ is die Freikörperkultur. As this equivalent differs substantially from ‘naturism’ and taking into account the fact that ‘naturism’ cannot be considered a basic English word that would be understood by the German public, the element ‘NAT’ on its own will not be associated with the meaning of ‘naturism’. The abbreviation ‘nat.’ in German is used as part of titles, for example, for doctoral degrees such as Dr. sc. nat. (Doktor der Naturwissenschaften), which is a degree of a Doctor of Natural Sciences. However, for the relevant services of accommodation of guests, the relevant public will most likely not make any such associations to the letters ‘NAT’. Consequently, it is highly unlikely that the contested sign will be dissected. Therefore, as a whole, ‘NATSUN’ has no meaning for the relevant public and is considered distinctive.

Visually and aurally, the signs differ only in the last letter of the contested sign, namely ‘N’, which has no counterpart in the earlier mark, whereas they coincide in the remaining letters of the signs, ‘NATSU’, identically present in both marks.

Furthermore, the coinciding elements constitute the entire earlier mark and the initial part of the contested sign. 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 addition, the fact that the earlier mark is entirely contained in the contested sign constitutes an indication of visual and aural similarity between the signs (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 27).

Despite the difference of the additional letter ‘N’ in the contested sign, it is clear that the signs have substantial similarities, and they are, therefore, considered visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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.

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, all the contested services are found identical to the ones of the opponent. The earlier mark enjoys an average degree of inherent distinctiveness. Furthermore, the relevant public consists of the public at large; whose degree of attentiveness is average.

The signs are visually and aurally highly similar, as they have the letters ‘NATSU’ in common. Importantly, these conclusions regarding the similarity between the signs take into account the facts that the earlier mark is entirely included at the beginning of the contested sign and that the difference is the last letter of the contested sign, which has no counterpart in the earlier mark. Since the consumers tend to focus on the beginning of the signs, the differing letter, which is placed at the very end of the contested sign, may be less noticed or even go unnoticed. 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).

For these reasons, it is considered that the difference between the signs is not sufficient to enable the relevant public to safely differentiate between the signs. In light of the abovementioned principle of interdependence, consideration must also be given to the fact that all the services are identical.

The applicant argues that its EUTM application has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTMA begins on the date when the EUTMA is filed and not before, and from that date on the EUTMA has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTMA falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTMA are irrelevant because the rights of the opponent, insofar as they predate the EUTMA, are earlier than the applicant’s EUTMA. Consequently, the applicant’s arguments in this regards must be set aside.

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

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 011 017 316 for the word mark ‘natsu’. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right mentioned leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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).

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

Claudia MARTINI

Tu Nhi VAN

Marta Maria CHYLIŃSKA

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.