OPPOSITION No B 3 064 520

Dunekacke & Wilms Nachf. GmbH & Co. KG, Hinschenfelder Stieg 12, 22041 Hamburg, Germany (opponent), represented by Raffay & Fleck, Grosse Bleichen 8, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Barilla G. e R. Fratelli - Societá per Azioni, Via Mantova 166, 43100 Parma, Italy (applicant), represented by Porta & Consulenti Associati S.p.A., Via Vittoria Colonna 4, 20149 Milano, Italy (professional representative).

On 17/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 520 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, bread substitutes and other bread products; cereal-based snack food; biscuits, pastry and confectionery; chocolate and chocolate-based products or products containing chocolate; bakery goods; rice-based snack food; rice cake snacks; fruit cake snacks; snack bars containing a mixture of cereals, nuts and dried fruit; cake mixes; pizzas and preparations for pizzas; edible ices; honey, treacle; salt, mustard; vinegar, sauces (condiments); spices.

2. European Union trade mark application No 17 896 311 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 all the goods of European Union trade mark application No 17 896 311 for the word mark ‘PANDIYO'’. The opposition is based on German trade mark registration No 30 417 253 for the word mark ‘PANTIO’. 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

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

Class 29: Meat, fish, poultry, game, shellfish and non-living molluscs, snails prepared for human consumption, also preserved, boiled, deep-frozen and freeze-dried; preserved, dried, boiled, deep-frozen and freeze-dried fruits and vegetables; preserved capers, preserved quail eggs and preserved olives; meat and fish fond, soups and soup products; jams, marmalades, fruit preparations, maple syrup, milk products and cheese; edible oils and fats; meat, fish and poultry pies.

Class 30: Products made of sugar, rice and rice products; cereal products and pasta; honey; creams in the form of spreads (aliphatic), in particular peanut butter; nut-based spread and chocolate spread; salt, mustard, vinegar, sauces, spices, mixed spices and spice pastries.

The contested goods are the following:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, bread substitutes and other bread products; cereal-based snack food; biscuits, pastry and confectionery; chocolate and chocolate-based products or products containing chocolate; bakery goods; rice-based snack food; rice cake snacks; fruit cake snacks; snack bars containing a mixture of cereals, nuts and dried fruit; cake mixes; pizzas and preparations for pizzas; edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Rice; honey; salt, mustard; vinegar, sauces (condiments) and spices are identically contained in both lists of goods (including synonyms).

The contested chocolate and chocolate-based products or products containing chocolate include, as broader categories of, or overlap with, the opponent’s chocolate spread. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested preparations made from cereals, bread, bread substitutes and other bread products; cereal-based snack food; bakery goods are included in the broad category of, or overlap with, the opponent’s cereal products. Therefore, they are identical.

The contested rice-based snack food; rice cake snacks are included in the broad category of the opponent’s rice products. Therefore, they are identical.

The contested biscuits and snack bars containing a mixture of cereals, nuts and dried fruit overlap with the opponent’s cereal products; therefore they are identical.

The contested confectionery overlaps with the opponent’s chocolate spread; therefore they are identical.

The contested pizzas and preparations for pizzas are highly similar to the opponent’s pasta. These goods have the same purpose and method of use and are in competition with each other. Furthermore, they target the same consumers using the same distribution channels and are often provided by the same entities.

The contested edible ices are highly similar to the opponent’s milk products of Class 29. These goods have the same purpose and nature and are in competition with each other. They also target the same consumers using the same distribution channels and are often provided by the same entities.

The contested coffee, tea, cocoa, artificial coffee are widely used refreshing drinks which are similar to the opponent’s milk products of Class 29. These goods are in competition with each other and target the same relevant public via the same distribution channels. Furthermore, they may have the same origin.

The contested flour is similar to the opponent’s cereal products. These goods may be produced by the same manufacturers, target the same relevant public and are sold in the same establishments. Furthermore, they are in competition with each other.

The contested sugar is similar to the opponent’s honey. These goods are in competition with each other and target the same relevant public via the same distribution channels.

The contested fruit cake snacks are similar to the opponent’s cereal products as they often originate from the same entity and target the same public using the same sales outlets. Furthermore, they are in competition with each other.

The contested treacle is similar to the opponent’s jams. These goods have the same purpose and method of use and are in competition with each other. They are also aimed at the same end users via the same distribution channels.

The contested cake mixes are at least similar to the opponent’s cereal products. These goods have the same manufacturers and distribution channels and they target the same public.

The contested tapioca and sago are lowly similar to the opponent’s cereal products. They are aimed at the same end user and use the same distribution channels. Furthermore, they can coincide in the manufacturers.

The contested pastry is lowly similar to the opponent’s cereal products as they target the same public using the same sales outlets. Furthermore, they are in competition with each other.

Yeast, baking-powder are substances used to leaven dough and batter. The opponent’s goods are foodstuffs and spices such as meat, fish, poultry, processed fruit and vegetables, eggs, milk and cereal products, jams, honey, spreads and spices. Therefore, these goods have different nature, purpose and method of use. Furthermore, they are neither in competition with each other nor complementary. Finally, usually they are not produced by the same manufacturers. Therefore, they are dissimilar.

The contested ice is to be understood as ‘cooling ice’. The opponent’s goods are various foodstuffs, sauces and spices. Their purpose and distribution channels are different, as is their nature. Furthermore, they are neither in competition nor complementary with the contested goods. Therefore, they are dissimilar.

b) Relevant public — degree of attention

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large whose degree of attention is considered to be average.

c) The signs

PANTIO	PANDIYO'
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 elements ‘PANTIO’ of the earlier mark and ‘PANDIYO’ ’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters and their positions within them ‘PAN*I(*)O’. They differ only in the letter ‘T’ of the earlier mark used in the same position as the letter ‘D’ in the contested sign, as well as the letter ‘Y’ preceding the coinciding letter ‘O’ and an apostrophe present at the end of the contested sign only.

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. As the differentiating letters are in the middle of the signs they will have less impact in the overall perception of the signs.

Furthermore, the apostrophe at the end will not be paid much attention as German consumers will not be familiar with the use of an apostrophe in such conditions.

Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation differs only in the sound of the letter ‛T’ of the earlier mark, replaced by a ‘D’ in the contested sign. Moreover, in some parts of Germany ‘T’ and ‘D’ will be pronounced in a very similar way. Furthermore, the combination of the sounds of the letters ‘IYO’ will be similar to that of the sound of the letters ‘IO’.

Therefore, the signs are 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 two aspects of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

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 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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-51/95, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. They are directed at the public at large whose degree of attention is considered average.

The signs are visually similar to at least an average degree and aurally similar to a high degree. The signs do not convey any concept that would help consumer to distinguish them.

The degree of distinctiveness of the earlier mark is normal.

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). Actually, the differences in the two signs are only in a letter placed in the middle of each sign and an additional letter at the end of the contested sign, which is not sufficient to exclude likelihood of conclusion.

Considering all the 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 30 417 253.

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. Taking into account the interdependence principle mentioned above, in relation to the goods found to be similar to a low degree, the Opposition Division considers that the marks are close enough to produce confusion in the mind of the consumers regarding the origin of these goods as well.

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

Manuela RUSEVA

Tzvetelina IANTCHEVA

María Clara IBÁÑEZ FIORILLO

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.