OPPOSITION No B 3 059 671

Catalina Bauza Morey, Can Valent 17, 07141 Marratxi (Illes Balears), Spain (opponent), represented by Consulpi Propiedad Industrial, S.L., Rambla Badal, 137-139-Esc B-Ent.1, 08028 Barcelona, Spain (professional representative)

a g a i n s t

Gustoneo, 33 rue de la République, 69002 Lyon, France (applicant).

On 10/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 671 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 893 720 ‘Choconette’. The opposition is based on, inter alia, Spanish trade mark registration No 1 905 010 . 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 Spanish trade mark registration No 1 905 010.

1. The goods

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

Class 30: Frozen yogurt.

The contested goods are the following:

Class 30: Chocolate; Non-medicated chocolate confectionery; Cocoa based creams in the form of spreads; Prepared desserts [chocolate based]; Chocolate desserts; Chocolate creams; Chocolate fondue; Sandwich spread made from chocolate and nuts; Chocolate spreads; Chocolate spreads containing nuts; Chocolate-based spreads; Sweet bean jam coated with sugared-bean based soft shell [nerikiri]; Sweet pounded rice cakes (mochi-gashi); Imitation chocolate; Chocolate based products; Preparations for making of sugar confectionery; Bakery goods; Cocoa-based ingredients for confectionery products; Dessert mousses [confectionery]; Chocolate decorations for cakes; Chocolate decorations for confectionery items; Non-medicated confectionery having toffee fillings; Confectionery in liquid form; Almond confectionery; Orange based confectionery; Dairy confectionery; Non-medicated chocolate.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large for which the degree of attention is average.

3. The signs

	Choconette
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 consists of the verbal element ‘Colonette’ presented in a fancy stylised script in which the letters are in the colour black with touches of white colouring used to convey the idea of a reflection. The horizontal bar of the letters ‘t’ extends across the upper part of the verbal element along with a figurative device in the nature of a flourish extending from the end of the letter ‘e’ looping back underneath most of the length of the verbal element. These figurative elements are visually striking and so will play a relevant role in the visual impact of the earlier mark.

The verbal element will be perceived by the relevant Spanish consumers as meaningless and, as it bears no relation to the relevant goods, it is distinctive to a normal degree.

The contested sign consists of the verbal element ‘Choconette’. Although it is true that this verbal element as a whole has no concrete meaning, in the context of the relevant goods (which are all chocolate, confectionery, bakery goods and preparations and ingredients for confectionery products), the relevant Spanish public will perceive the contested sign as being a chocolate-based confection. This is because the prefix ‘Choco’ will be perceived immediately as a reference to chocolate. Moreover, the letter string ‘conette’ is closely similar to the Spanish word ‘cornete’ which, in the context of ice-cream, denotes an ice-cream cone.

It follows that the element ‘Choco’ is weakly distinctive of the relevant goods. To the extent that the overlapping letter string ‘conette’ is allusive of confectionery by a part of the public, it will possess slightly below-average distinctive character.

Visually, the signs coincide in the letter sequence ‘onette’ coming at the end of both signs and in the first letter ‘C’ and a letter ‘O’ albeit the latter in a different position. Nevertheless, it is inevitable that many words will share some letters and in the present case the marks contain additional differences lying in the remaining letters at their beginnings.

The signs differ in their beginnings (‘Col’ and ‘Choc’) and in the stylisation of the earlier mark. 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. It follows that, despite the fact that the element ‘Choco’ of the contested sign is weakly distinctive of the relevant goods, this difference will not go unnoticed by the Spanish consumer.

Moreover, as stated above, the stylisation of the earlier mark, which is absent from the contested sign, will have an impact on the visual impression made by the earlier mark.

Taking the above into account, and contrary to the contention of the opponent that the marks are visually highly similar, it is considered that the marks at issue are visually similar to a below-average degree.

Aurally, the signs coincide in the sound of the letters ‘onette’ coming at the end of both signs. The signs differ significantly in their beginnings: /col/ of the earlier mark and /choc/ of the contested sign and this is the case notwithstanding the descriptive nature of the element ‘CHOC’.

Taking into account also the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, and contrary to the contention of the opponent that the marks are phonetically highly similar, it is considered that the marks are aurally similar to a below-average degree.

Conceptually, although the signs as a whole do not have any meaning for the Spanish public, only the contested sign contains a clearly meaningful element ‘Choco’ which, despite being weakly distinctive, makes the signs conceptually not similar.

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 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).

The signs are visually and aurally similar to a below-average degree and semantically not similar. The earlier mark possesses normal inherent distinctive character and the degree of attention of the Spanish public is average.

The assessment takes into account the fact that the element ‘Choco’ is weakly distinctive. The fact remains that the letter string ‘onette’ – which in the contested sign is preceded by a letter ‘C’ and, together with that letter, alludes to ice-cream/confectionery for part of the public and so is allusive of the relevant goods - pertains to the respective endings, whereas the beginnings differ significantly.

An examination of the similarity between the signs must take account the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details. The way in which the letters that the signs have in common, ‘C*O*ONETTE’, appear and are combined in the contested sign (part of them as part of the meaningful, although weak, element ‘CHOCO’) is a relevant factor. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words share some of them, but they cannot, for that reason alone, render the marks sufficiently similar for a likelihood of confusion to arise. The graphical depiction of the earlier mark introduces an additional visual difference between the marks.

Furthermore, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 56). This principle is applicable in the present case, where the beginning of the contested sign conveys a clear meaning for the relevant consumers (which meaning refers to the goods at issue), who will immediately grasp it and distinguish the word constituting that sign from the earlier mark.

Given the importance attached by consumers to the beginnings of signs, as referred to above, the Opposition Division considers that the similarities in this case are not sufficient to induce a likelihood of confusion bearing in mind the concept in the contested sign and the differences in the respective beginnings and in the figurative elements of the earlier mark which are not negligible.

Considering all the above, notwithstanding that the relevant goods are assumed to be identical, there is no likelihood of confusion on the part of the public. Therefore the opposition must be rejected.

The other earlier right invoked by the opponent, Spanish trade mark registration No 3 029 856 is less similar to the contested mark. This is because it contains, inter alia, an additional distinctive figurative element of a penguin wearing a bow-tie. Therefore, as the above assessment has been made on the basis that the relevant goods are deemed to be identical, the outcome cannot be different with respect to Spanish trade mark registration No 3 029 856. Therefore, no likelihood of confusion exists with respect to that earlier mark either.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Boyana NAYDENOVA

Kieran HENEGHAN

Martin INGESSON

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.