CANCELLATION No C 43 484 (INVALIDITY) 

 

Burhanettin Yilmaz, Lotosweg 38, 50999 Cologne, Germany (applicant), represented by Btb IP Bungartz | Baltzer Partnerschaft mbB Patentanwälte, Im Mediapark 6A, 50670 Cologne, Germany (professional representative)

 

a g a i n s t

 

Kardes Gida Ihtiyaç Maddeleri Tekstil Insaat Ve Tarim Ürünleri Sanayi Ticaret Limited Sirketi, Gaziantep Bulvari, No: 119/A, Islahiye, Gaziantep, Turkey  (EUTM proprietor), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 07/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 17 891 713 is declared invalid for all the contested goods and services, namely:

Class 29: Dried pulses; processed olives, olive paste; dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; tomato paste; prepared nuts and dried fruits as snacks; tahini (sesame seed paste).

Class 30: Coffee, cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, coffee-based beverages; chocolate based beverages; flavorings, other than essential oils, vanilla flavorings, sauces, tomato sauce, spices; yeast, baking powder; flour for food, semolina, starch for food; granulated sugar, cube sugar, powdered sugar, teas, iced tea; salt; rice molasses syrup for food; peppers [seasonings], pepper.

Class 35: The bringing together, for the benefit of others, of dried pulses, processed olives, olive paste, edible oils, dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, prepared nuts and dried fruits as snacks, hazelnut spreads, tahini (sesame seed paste), enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of coffee, cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, coffee-based beverages, chocolate based beverages, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of flavorings, other than essential oils, vanilla flavorings, sauces, tomato sauce, spices, yeast, baking powder, flour for food, semolina, starch for food, granulated sugar, cube sugar, powdered sugar, enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of teas, iced tea, salt, rice molasses syrup for food, peppers [seasonings], pepper enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

3. The European Union trade mark remains registered for all the uncontested goods and services, namely:

Class 29: Eggs and powdered eggs; potato chips.

Class 30: Noodles, macaroni, ravioli; bread, pastry and bakery products, namely, pies, cakes, donuts, muffins, tarts, pizzas, sandwiches, puddings, ready cake mixes, desserts, namely, bakery desserts, chocolate desserts, desserts being confectionery and desserts made of flour honey, royal jelly for human consumption, propolis for human consumption; confectionery, chocolates, candies, biscuits, chocolate wafers, crackers; chewing gums not for medical purposes; ice, ice creams, edible fruit ices; processed cereals and cereal products; snacks made of cereals, namely, corn flakes, oatmeal.

Class 35: Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering; the bringing together, for the benefit of others, of dried pulses, soups, bouillon, milk and milk products, butter, and peanut butter, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of eggs and powdered eggs, potato chips, noodles, macaroni, ravioli, bread, pastry and bakery products, namely, pies, cakes, donuts, muffins, tarts, pizzas, sandwiches, puddings, ready cake mixes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of desserts, namely, bakery desserts, chocolate desserts, desserts being confectionery and desserts made of flour honey, royal jelly for human consumption, propolis for human consumption, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of confectionery, chocolates, candies, biscuits, chocolate wafers, crackers, chewing gums not for medical purposes, ice, ice creams, edible fruit ices, processed cereals and cereal products, snacks made of cereals, namely, corn flakes, oatmeal, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

 

On 04/05/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 17 891 713 (figurative mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely against some of the goods and services in Classes 29, 30, 35. The application is based on EUTM registration No 16 291 692 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that most of the contested products are identically covered by the earlier EU trade mark. The other contested goods are highly similar or at least similar to the goods of the earlier EU trade mark. Furthermore, also the contested services of Class 35 are similar to the goods of the Classes 29 and 30 of the earlier trade mark. The contested services mainly bring together, for the benefit of others, the goods registered in Classes 29 and 30 of the contested trade mark, i.e. mainly retail services provided by retail stores as well as wholesale outlets. The applicant states that, as the goods and services of the EUTMs are partly identical and partly similar, at least to an average degree, that both signs are visually and phonetically highly similar, that the earlier EUTM is inherently distinctive to a normal degree and in particular distinctive by virtue of intensive use and reputation and that the degree of attention of the relevant public is low, it has to be concluded that a likelihood of confusion cannot be denied.

The EUTM proprietor argues that relating to the goods and services, the visual impact is very decisive, and visually the marks are different mainly on account of the different vowels at the end of the words, and also due to the very different figurative elements. It argues, also, that conceptually the marks are different in Turkish, which is an official language in Cyprus and it is widely spoken in Germany. Therefore, on account of the different signs, it is irrelevant whether the goods and services are similar.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH 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 and services

 

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 goods on which the application is based are the following: 

 

Class 29: Dried fruits; dried vegetables; coconut, desiccated; fruit, preserved; maize oil; processed almonds; processed nuts; olives, preserved; olive oil for food; fruit snacks; candied fruit snacks; dried fruit-based snacks; hazelnuts, prepared; processed pumpkin seeds; sunflower seeds, prepared; prepared pistachio.

Class 30: Aniseed; baking powder; curry [spice]; spices; condiments; cloves [spice]; ginger [spice]; cooking salt; coffee; salt; garden herbs, preserved [seasonings]; turmeric for food; nutmegs; peppers [seasonings]; breadcrumbs; pepper; saffron [seasoning]; dressings for salad; sauces [condiments]; allspice; mustard meal; baking soda; starch for food; star aniseed; vanilla flavourings for culinary purposes; seasonings; aromatic preparations for food; cinnamon [spice]; sugar.

Class 31: Hazelnuts, fresh; almonds [fruits]; nuts [fruits]; olives, fresh; edible sesame, unprocessed.

The contested goods and services are the following: 

 

Class 29: Dried pulses; processed olives, olive paste; dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; tomato paste; prepared nuts and dried fruits as snacks; tahini (sesame seed paste).

Class 30: Coffee, cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, coffee-based beverages; chocolate based beverages; flavorings, other than essential oils, vanilla flavorings, sauces, tomato sauce, spices; yeast, baking powder; flour for food, semolina, starch for food; granulated sugar, cube sugar, powdered sugar, teas, iced tea; salt; rice molasses syrup for food; peppers [seasonings], pepper.

Class 35: The bringing together, for the benefit of others, of dried pulses, processed olives, olive paste, edible oils, dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, prepared nuts and dried fruits as snacks, hazelnut spreads tahini (sesame seed paste), enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of coffee, cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, coffee-based beverages, chocolate based beverages, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of flavorings, other than essential oils, vanilla flavorings, sauces, tomato sauce, spices, yeast, baking powder, flour for food, semolina, starch for food, granulated sugar, cube sugar, powdered sugar, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of teas, iced tea, salt, rice molasses syrup for food, peppers [seasonings], pepper enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

Contested goods in Class 29 

 

The following goods are identical either because they are identically contained in both lists (including synonyms: dried fruits and vegetables), or because the applicant’s goods include the contested goods (dried fruits vs. dried fruit-based snacks) or because the contested goods include, as a general category, the earlier goods (prepared nuts vs. prepared pistachio).

The rest of the goods are at least highly similar as they have the same nature and they usually coincide in producer, relevant public and distribution channels and, furthermore they are in competition.

Contested goods in Class 30 

 

The following goods are identical either because they appear in both lists or because the ones include or are included in the others, or overlap: coffee, coffee-based beverages; flavorings, other than essential oils, vanilla flavorings; sauces, tomato sauce, spices; baking powder; starch for food; granulated sugar, cube sugar, powdered sugar; salt; peppers [seasonings], pepper.

The contested artificial coffee and vegetal preparations for use as coffee substitutes are highly similar to the applicant’s coffee as the goods usually coincide in producer, relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested cocoa is similar to the applicant’s coffee given that the goods usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested yeast is highly similar to the applicant’s baking powder as they have the same nature, they usually coincide in distribution channels. Furthermore they are in competition.

The contested cocoa-based beverages and chocolate based beverages are similar to the applicant’s coffee as the goods  usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested flour for food is similar to the applicant’s starch for food as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

 

The contested semolina and the applicant’s breadcrumbs are similar given that they might have the same purpose, the same distribution channels and they are in competition.

The contested teas and ice tea are similar to the applicant’s coffee as they usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested rice molasses syrup for food is similar to the applicant’s sugar as they usually coincide in relevant public and distribution channels. Furthermore they are in competition.

Contested services in Class 35

 

The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

All the goods in relation to which the contested retail is made have been found above either identical or similar (either to an average or to a high degree).

The contested retail services regarding identical goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. These services are: the bringing together, for the benefit of others, of dried, fruits and vegetables, prepared nuts and dried fruits as snacks, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of coffee, coffee-based beverages, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of flavorings, other than essential oils, vanilla flavorings, sauces, tomato sauce, spices, yeast, baking powder, starch for food, granulated sugar, cube sugar, powdered sugar; the bringing together, for the benefit of others, of peppers [seasonings], pepper enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

The contested retail services regarding similar goods have a low degree of similarity because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer. These services are: the bringing together, for the benefit of others, of dried pulses, processed olives, olive paste, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, tahini (sesame seed paste), enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, chocolate based beverages, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of yeast, , flour for food, semolina, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of teas, iced tea, salt, rice molasses syrup for food enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

The contested mark has in Class 35 services of retail that are carried out in relation to edible oils and hazelnut spreads, which are goods that have not been compared above.

Edible oils are similar to sauces protected by the earlier mark as the goods have the same purpose, they usually coincide in relevant public and method of use. Furthermore they are in competition. Hazelnut spreads are similar to the prepared hazelnuts protected by the earlier mark given that they might have the same commercial origins and be distributed by the same channels of trade to the same public and they might be complementary.

Consequently, the bringing together, for the benefit of others, of edible oils and hazelnut spreads, enabling customers to conveniently view and purchase those goods also has a low degree of similarity vis-à-vis the goods covered by the earlier registration.

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 and services found to be identical or similar to various degrees are directed at the public at large and the degree of attention relating to the goods varies from low to average depending on depending on type, price, and frequency of purchase, for example.

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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The EUTM proprietor argues that both ‘BAHARIM’ and ‘BAHARIUM’ have a meaning in Turkish language and such meaning is different. In the case of ‘Baharim’ it can be translated as ‘I bet’ and in the case of ‘Baharium’ it can be translated as ‘My spring’. Turkish is an official language in some territories of the European Union, namely, Cyprus. It is also widely spoken in countries like Germany, where the Turkish population represents an important part of the consumers in this territory. Furthermore, it is generally known that Turkish is also the native language of many European citizens in Greece and Bulgaria. As a result, it is expectable that such different meaning to be understood by an important part of the population within the European Union (13/06/2012, T-534/10, HALLOUMI, EU:T:2012:292).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.

None of the two denominations found in the marks are meaningful in Spanish, French, Italian and Romanian and, therefore, the Cancellation Division finds it appropriate to focus the comparison of the signs on this part of the relevant public. Given that the denominations have no meaning, they are distinctive for the goods and services at issue.

None of the marks have dominant (visually outstanding) elements and they are composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature (the stylization of the letters and the colours). Furthermore, the element in the shape of a leaf in the earlier mark and what seems to be a flower (or perhaps a fruit or some kind of berry) in the contested mark are not distinctive for some of the goods, for example fruits and vegetables, or retail services having for object said goods’; at any rate, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

Therefore, the most relevant and distinctive elements in the marks are the denominations.

The EUTM proprietor argues that the denominations in the signs are stylized in a very different way and therefore produce a different global impression. However, the denominations, that are the distinctive elements, share seven out of eight letters ‘BAHARI*M’ and differ only in the penultimate letter ‘U’ of the contested sign and, as reflected above, the rest of the elements are either less distinctive or less relevant; consequently, visually the marks are similar to an average degree.

Aurally, as the marks share seven out of eight sounds and the figurative elements are not pronounced, the marks are similar to a high degree.

Conceptually, the marks are not similar given that the concepts or the flower/fruit/berry and the leaf differ.

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 applicant claimed that the earlier mark has a strong presence on the European market for the registered goods, so it is in particular distinctive by virtue of intensive use and reputation, but did not filed any evidence to prove this claim.

 

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 goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of non-distinctive elements in the mark 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 (eighth recital 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).

Moreover, although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The marks are visually similar to an average degree and aurally similar to a high degree. The fact that they are not similar conceptually has to be assessed in the context of this being the situation as regards two elements (leaf versus fruit/berry/flower) that are non-distinctive for some goods and services and, therefore, their impact on the likelihood of confusion is very limited. Hence, in the presence of goods and services that are identical or similar (to various degrees) the consumers might think they originate from the same companies or companies with economic ties.

Considering all the above, there is a likelihood of confusion on the part of the Spanish, French Romanian and Italian-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 declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s EUTM registration No 16 291 692. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

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

 

The Cancellation Division

 

Oana-Alina STURZA

Maria Belen IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.