OPPOSITION No B 3 062 638

Garmo AG, Ulmer Str. 181-191, 70188 Stuttgart, Germany (opponent), represented by Lichtenstein & Körner Rechtsanwälte Partnerschaft mbB, Heidehofstr. 9, 70184 Stuttgart, 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 (applicant), represented by Silex Ip, Poeta Joan Maragall 9, Esc., Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 638 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products, butter; edible oils; hazelnut spreads and peanut butter.

2. European Union trade mark application No 17 891 713 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 891 713 , namely against all the goods in Class 29. The opposition is based on German trade mark registration No 2 001 543 for the word mark ‘BAHAR’. 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 goods and services

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

Class 29: Milk and milk products, namely butter, cheese, cream, yoghurt; pre-mixed milk beverages, milk predominating.

The contested goods are the following:

Class 29: Meat, fish, poultry and game; processed meat products; dried pulses; soups, bouillon; processed olives, olive paste; milk and milk products, butter; edible oils; dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; tomato paste; prepared nuts and dried fruits as snacks; hazelnut spreads and peanut butter; tahini (sesame seed paste); eggs and powdered eggs; potato chips.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’ used in the opponent’s list of goods is to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 29

Milk and butter are identically contained in both lists of goods.

The contested milk products include, as a broader category, the opponent’s butter. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested hazelnut spreads and peanut butter are similar to the opponent’s butter. Peanut butter is a food paste made primarily from ground dry roasted peanuts and hazelnut spreads are made from crushed and blended hazelnuts. They are mainly used as a sandwich spread. Butter is a dairy product made by churning fresh or fermented cream or milk. It is generally used as a spread and a condiment. The nature and the purpose of use is the same, they share the same end users, distribution channels and are in competition, since consumers may choose between one and the other.

The contested edible oils are similar to the opponent’s butter, since they have the same purpose (can be used for cooking or as a condiment for other foodstuff) and usually target the same relevant public. Furthermore, they are in in competition.

The remaining contested goods in this class meat, fish, poultry and game and processed meat products; dried pulses; soups, boullion; processed olive, 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); eggs and powdered eggs; potato chips are not similar to any of the opponent´s goods which are milk and milk based goods. Even though they all fall within a general category of food products this fact does not automatically render the goods similar. They have different natures and they are not manufactured by the same companies. They are not in competition, nor do they complement each other. Moreover, they are found in very different sections of supermarkets. Consequently, these goods are dissimilar.

The opponent argues that the opponent’s goods and the contested dried pulses are of a complementary nature since studies (submitted by the opponent) show that there are positive effects in the levels of lactobacilli when yoghurt is supplemented with pulses. The opponent further argues that severe acute malnutrition can be treated by using pulses as bases instead of milk, and are therefore similar as they are substitutable. However, the mere fact that the goods can be combined and also that pulses can be used instead of milk is not sufficient to find similarity between them. The contested goods and those of the opponent differ in nature since the contested goods are dried edible seeds of plants in the legume family such as dry beans, dry broad beans, dry peas, chickpeas, cow peas, pigeon peas, lentils etc. and the opponent’s goods which are ordinary dairy products such as butter, cheese, cream, yoghurt; and beverages made of or containing milk as a principal ingredient. Even if the opponent’s goods and the contested goods can be used together, they do not have sufficient connection to each other and have different methods of use. They cannot be considered complementary (essential) to each other. Moreover, in supermarkets or in other grocery stores, they are to be found on different shelves and the producers are usually not the same. Therefore, the Opposition Division considers that the public will not think that the goods concerned come from the same or economically-linked undertakings.

The opponent also argues that the goods dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; tomato paste have to be deemed similar to the goods of the opposing mark since they are complementary as they can be composed to a meal or at least be consumed as dessert. To support its argument, the opponent refers to an earlier decision (Decision of the First Board of Appeal of 14/09/ 2009 in Case R 1623/2008-1). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). In any case, complementarity has to be clearly distinguished from use in combination where goods are merely used together, whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (decision of 16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). In cases like this, similarity can only be found on the basis of other factors, not on complementarity. Therefore, although the goods can be sold in the same outlets, such as supermarkets, they differ in nature and are normally not distributed through the same distribution channels to the same end users. Furthermore, they are not interchangeable. The fact that all are foodstuffs is not sufficient to find them similar either. Therefore, these goods are dissimilar to all the opponent’s goods.

The opponent also argues that the goods of the opposing mark are similar to the contested goods meat, fish, poultry and game and processed meat products and refers to an earlier decision taken by the Office in which eggs, milk and milk products were considered remotely similar to meat poultry and game (decision of the First Board of Appeal of 02/08/07 in Case R 1517/2006-1 and Opposition Division decision No B 8 290 079). However, as mentioned above, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities, and the compared goods are, in the view of the Opposition Division, not considered similar to any of the opponent’s goods, for the reasons explained above.

As regards the contested processed olive, olive paste; soups, boullion the opponent claims that olives are a typical ingredient of Greek yoghurt and there is a similarity between these goods due to this typical combination of olives and yoghurt. The opponent also argues that since the contested cheese is the main ingredient of cheese soups, the goods are of a complementary nature. However, the Opposition Division notes that there is no sufficient complementarity simply because one ingredient is needed for the production/preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40 and decision of 11/12/2012, R 2571/2011-2, FRUITINI, § 18). Consequently, even if cheese can be used as an ingredient in soups, and olives an ingredient in Greek yoghurt, as argued by the opponent, when the ingredient can 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. This does not happen in the present case as explained above.

As regards the contested eggs and powdered eggs the opponent argues that they are similar to the goods of the opponent since eggs, as well as cheeses and butter, are sold in butcher shops, and since the combination of dairy products and eggs not only forms a complete meal but also share the same sales outlets and target the same relevant consumers. However, the contested goods differ in nature and, moreover, dairy products and eggs usually do not coincide in producers. Even if they happen to be sold in the same outlets, such as supermarkets, butcher shops etc., they satisfy different consumers’ needs and, in line with the reasoning above, they are not considered complementary or essential to each other merely because they may be used together, i.e., to form a meal etc. (decision of 16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20).

Finally, the opponent also argues that the contested potato chips have to be deemed similar to the goods of the opponent’s mark since it is common practice to eat potato chips with a cream dip. However, the Opposition Division disagrees with the opponent’s opinion and does not find similarity. The goods have different natures (snacks versus dairy products and/or mainly consisting of milk products), they satisfy different needs and have different methods of use. Furthermore, contrary to the opponent’s claims, they are not complementary in the sense that they are essential for each other and they are not in competition to each other either. Although they can be sold in the same outlets, such as supermarkets, they are normally not distributed through the same distribution channels and do not usually target the same end users.

1. 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

2. The signs

BAHAR
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).

The earlier mark is the word mark ‘BAHAR’ which has no meaning for the relevant public in relation to the relevant goods and is, therefore, distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘BAHARIUM’ depicted in white, relatively standard upper case letters inside a figurative element consisting of a green rectangle with three rather basic shapes in green and orange colour on top. The verbal element ‘BAHARIUM’ of the contested sign has no meaning for the relevant public in relation to the relevant goods and is, therefore, distinctive.

As regards the figurative element of the contested sign, since it is of a rather abstract shape and has no direct connection to the relevant goods, it is distinctive to a normal degree. 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).

The contested sign also 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.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

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.

Visually, the earlier mark ‘BAHAR’ is fully contained in the verbal element of the contested sign and the verbal elements of the signs only differ in the contested sign’s additional last three letters ‘-IUM’. The fact that the verbal elements of the signs coincide in the beginnings is significant, as consumers read from left to right. Therefore, the beginnings of signs have greater impact. The verbal difference is only in three letters in both signs and placed last in the contested sign. The signs also differ in the figurative element and graphic features which have less impact on consumers as explained above. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BAHAR’ present identically in the beginning of both signs. The pronunciation only differs in the sound of the letters ‘-IUM’, placed last in the contested sign, and which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an above average degree.

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.

3. 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

4. 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).

Account should also be 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).

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 goods have been found partly identical, partly similar and partly dissimilar and the level of attention of the relevant public is average. The signs are visually similar to an average degree, aurally similar to an above average degree and there is no conceptual difference between them that could otherwise help consumers to more easily distinguish between the signs. Furthermore, the earlier mark has a normal degree of distinctiveness.

Considering all the above, and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 2 001 543.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña URIARTE VALIENTE

Martin INGESSON

Kieran HENEGHAN

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.