OPPOSITION No B 3 064 268

Egetürk Wurst- und Fleischwarenfabrikation GmbH & Co. KG, Feldkasseler Weg 5, 50769 Köln, Germany (opponent), represented by Siebeke - Lange - Wilbert, Cecilienallee 42, 40474 Düsseldorf, 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 07/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 268 is partially upheld, namely for the following contested goods and services:

Class 29: Meat, fish, poultry and game; processed meat products; soups, bouillon.

Class 35: The bringing together, for the benefit of others, of meat, poultry and game and processed meat products, enabling customers to conveniently view and purchase those goods.

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

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 for the figurative mark , namely against some of the goods and services in Classes 29 and 35. The opposition is based on European Union trade mark registration No 13 805 916 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.

1. The goods and services

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

Class 29: Meat and sausage products of beef and/or veal and/or lamb and/or poultry.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; processed meat products; soups, bouillon.

Class 35: The bringing together, for the benefit of others, of meat, fish, poultry and game, processed meat products, enabling customers to conveniently view and purchase those goods.

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.

Contested goods in Class 29

The contested meat is identically contained in both lists of goods.

The contested poultry; game are included in the opponent’s meat. Therefore they are identical.

The contested processed meat products include, as a broader category, or overlap with, the opponent’s sausage products of beef. Therefore, they are identical.

The contested soups, bouillon are at least similar to the opponent’s meat since they can have the same purpose, namely to allay hunger and also have the same method of use and are addressed to the same public. The opponent’s meat can also be the main ingredient of soups and bouillon. (04/05/2011, T-129/09, Apetito, EU:T:2011:193, § 12 & 29).

The contested fish are similar to the opponent’s meat since they usually coincide in relevant public and method of use. Furthermore they are in competition since consumers may choose between one or the other to satisfy the same need.

Contested services in Class 35

The contested bringing together, for the benefit of others, of meat, fish, poultry and game, processed meat products, enabling customers to conveniently view and purchase those good are sale services, such as retail and wholesale services of various goods.

The opponent argues that those services are similar to a certain degree to the opponent’s goods, since the contested services in Class 35 belong to the retail sale of those categories of goods to which opponent’s goods belong and that they complement each other, are indispensable to or, at very least important for the provision of the contested services. The opponent further argues that there is a close connection between the services and the goods concerned which induces consumer to think that these goods and services lies under the same undertaking and that they usually are rendered at the same sales/shops and target the same consumer group.

The Opposition Division agrees to that extent that sales services concerning the sale of particular goods are similar to a low degree to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). 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. However, the goods covered by the sale services and the specific goods covered by the other mark have to be identical in order to find such similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. Therefore the contested the bringing together, for the benefit of others, of meat, poultry and game, enabling customers to conveniently view and purchase those goods are similar to a low degree to the opponent’s meat.

The same reasoning applies to the contested the bringing together, for the benefit of others, of processed meat products, enabling customers to conveniently view and purchase those goods which are similar to a low degree to the opponent’s sausage products of beef (which fall in under the natural and usual meaning of, or overlap with the processed meat products being sold).

However, the contested the bringing together, for the benefit of others of fish are considered dissimilar to all the opponent’s goods. These services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

2. 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 varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

BAHAR
Earlier trade mark	Contested sign

The relevant territory is 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 earlier mark is the word mark ‘BAHAR’ which, due to its similarity to the Maltese word ‘BAĦAR’ (meaning ‘sea’), may be understood as such at least by the Maltese part of the relevant public (information extracted from http://www.maltesedictionary.org.mt/#eyJTZWFyY2hUZXh0IjoiYmHEp2FyIiwiTGV4ZW1lSWQiOm51bGwsIlNlYXJjaEluTGVtbWEiOm51bGwsIlNlYXJjaEluV29yZGZvcm1zIjpudWxsLCJSZWdleFNlYXJjaFdvcmRmb3JtcyI6bnVsbCwiU2VhcmNoRW5nbGlzaEdsb3NzZXMiOiIwIiwiUG9zIjpudWxsLCJTb3VyY2UiOm51bGwsIlNlYXJjaFR5cGUiOiJzZWFyY2hyZXN1bHRzIiwiTGFuZ3VhZ2VJZCI6MX0%3d on 04/10/2019). In addition, a part of the public may refer it to a name since it is a person’s name in Muslim countries. For another, substantial part of the public (e.g., a substantial part of the English- Swedish- and German-speaking public, etc.) the term is meaningless. In either case, ‘BAHAR’ does not have a direct meaning for the relevant goods. Therefore, it is 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 services 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. In any event it is a negligible element given that it is barely legible. 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.

The Opposition Division notes that a conceptual difference between the signs, such as that existing for a part of the public as referred to above, could help consumers to more easily distinguish between them. However, for the vast majority of consumers in the European Union the verbal elements in both signs will be perceived as having no meaning. Therefore, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that will not perceive any meaning in either of the signs.

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, as has been stated above. Therefore, the beginnings of signs have greater impact. 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, irrespective of the different pronunciation rules in different parts of the relevant territory, 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 has no counterpart 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 under analysis 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.

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

5. 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 and services have been found partly identical, partly similar to varying degrees 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. Furthermore, there is no conceptual difference between them that could otherwise help consumers to more easily distinguish between the signs and the earlier mark has a normal degree of distinctiveness for the relevant public under analysis.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the relevant territory where the signs have no meaning and even for the services that have been found to be similar to only a low degree. The differences between the signs are not sufficient to outweigh the visual and aural similarities. As stated above in section c) of this decision, a likelihood of confusion for only a part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 805 916. It follows that the contested trade mark must be rejected for all the goods and services that have been found identical and similar to varying degrees.

The rest of the contested services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña VALIENTE URIARTE

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.