OPPOSITION No B 3 071 952

Kaufland Romania Societate in Comandita, Str. Barbu Văcărescu nr. 120-144, sector 2, Bucuresti, Romania (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Benknow, S.L.U., C/ Bélgica-Nave 27, 12006 Castellón, Spain (applicant), represented by Amesmarc Patentes y Marcas, S.L.U., C/ Hermosilla, 130-1º Ext. Izda., 28028 Madrid, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 952 is upheld for all the contested goods, namely:

Class 30: Flour and preparations made from cereals; Bread, pastry and confectionery; Edible ices; Sugar, Yeast, Baking powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Fresh, frozen, preserved, uncooked pizzas; Preparations for making pizzas; Pizza sauces, pizza dough, dried, fresh and filled pasta, food dressings, tinned pasta-based foodstuffs, savoury snacks based on flour and potato flour, flavourings for food, sweet and savoury tarts, sandwiches, filled bread rolls.

2. European Union trade mark application No 17 926 014 is rejected for all the contested goods. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 926 014 for the figurative mark , namely against all the goods in Class 30. The opposition is based on international trade mark registration No 1 188 394 designating the European Union for the word mark 'BENITA'. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

As part of its observations of 17/07/2019, the applicant requested proof of use of the earlier trade mark. However, the applicant did not submit the request for proof of use of the earlier mark on which the opposition is based by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

In any event, in the present case, the date of filing of the contested trade mark is 02/07/2018.

Earlier trade mark No 1 188 394 is an international registration designating the EU. Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 190(2) EUTMR for the earlier trade mark at issue is 06/11/2014. Therefore, since the earlier mark had not been registered for at least five years at the relevant date, the request for proof of use is inadmissible also for this reason.

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

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

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 30: Flour and preparations made from cereals; Bread, pastry and confectionery; Edible ices; Sugar, Yeast, Baking powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Fresh, frozen, preserved, uncooked pizzas; Preparations for making pizzas; Pizza sauces, pizza dough, dried, fresh and filled pasta, food dressings, tinned pasta-based foodstuffs, savoury snacks based on flour and potato flour, flavourings for food, sweet and savoury tarts, sandwiches, filled bread rolls.

As a preliminary remark, the Opposition Division notes that the applicant claims that the opponent’s goods are sold directly to consumers in a supermarket whereas the applicant will only be selling goods for wholesale to hotels, restaurants, etc. and that the relevant sectors are therefore different. However, the task of the Opposition Division is to compare the goods as registered and as applied for and not as actually used by either party, unless proof of use of the earlier mark has been submitted for particular goods. This is not the case here since the earlier mark on which the opposition is based was not subject to the use requirement at the relevant date and the applicant's request for proof of use was therefore inadmissible, inter alia, for this reason as set out above. Consequently, the comparison of the goods for the present proceedings must be made on the basis of the goods of the earlier mark on which the opposition is based as registered and the goods of the contested sign as applied for and against which the opposition has been directed. Furthermore, since the particular circumstances in which the goods in question have been marketed (or distributed) may vary in time and depending on the wishes of the proprietor of the opposing mark, it is in any event inappropriate to take such circumstances into account in the prospective analysis of the likelihood of confusion (15/03/2007, C-171/06 P, TIME ART (QUANTUM), EU:C:2007:171, § 59). The examination of the likelihood of confusion which the Opposition Division is called on to carry out is a prospective examination and it is the ‘usual’ circumstances in which the goods covered by the marks are marketed (or may be distributed) that must be taken as a benchmark, that is, those which it is usual to expect for the category of goods covered by the marks (12/01/2006, T-147/03, TIME ART (QUANTUM), EU:T:2006:10 § 103-104). Therefore, this argument of the applicant cannot change the findings reached below in the comparison of the goods concerned.

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 30

Flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices are identically contained in both lists of goods (including synonyms).

The contested sweet and savoury tarts are included in the broad category of the opponent’s pastry and confectionery. Therefore, they are identical.

The contested pizza sauces; food dressings are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested savoury snacks based on flour and potato flour and the opponent’s preparations made from cereals (which include savoury snacks based on cereal flour) are thus identical or otherwise at least highly similar since they can have the same purpose and method of use and be in competition. Furthermore, they can target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The contested sandwiches; filled bread rolls are similar to the opponent’s bread since they have the same nature being made of cereals. These goods are sold through the same channels to the same relevant public and it is not uncommon that they are produced by the same undertakings.

The contested fresh, frozen, preserved, uncooked pizzas; preparations for making pizzas; pizza dough are similar to the opponent’s pastry which includes savoury bakery goods that may have the same or a similar nature as the contested goods, target the same relevant public and share the same distribution channels. Furthermore, they can be produced by the same undertakings.

The contested flavourings for food are similar to the opponent’s spices since they have the same purpose and methods of use, target the same relevant public and can share the same distribution channels.

The contested dried, fresh and filled pasta; tinned pasta-based foodstuffs are similar to a low degree to the opponent’s rice since they have the same methods of use, target the same relevant public and share the same distribution channels.

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 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 (in particular as regards flavourings for food).

The degree of attention is considered to be average.

3. The signs

BENITA
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 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 ‘BENITA’ and the contested sign is a figurative mark consisting of the verbal elements ‘Bendita’, depicted as a capitalised word in slightly stylised bold black letters, and the much smaller verbal element ‘PASTA ITALIANA’, depicted underneath in standard black upper case letters. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that ‘BENITA’ of the earlier mark is depicted in upper case letters whereas the verbal element ‘Bendita’ in the contested sign is depicted as a capitalised word.

The applicant argues that ‘BENITA’ is a female name whereas ‘Bendita’ means 'blessed' and that the additional letter ‘d’ in the contested sign therefore completely changes the meaning of these two words. However, although part of the public in the relevant territory, such as the Spanish-speaking public, may perceive ‘BENITA’ and ‘Bendita’ as conveying the different meanings outlined above, part of the public in the relevant territory, such as the English-speaking public, will perceive no meaning in either of these words.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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 reject the contested application.

Bearing in mind that a conceptual difference between the signs, such as that which may exist for the Spanish-speaking part of the public as explained above, may help consumers to more easily distinguish between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the verbal element ‘BENITA’ of which the earlier mark consists and ‘Bendita’ in the contested sign, will have no meaning, such as the English-speaking public in the relevant territory.

For the part of the public under analysis, since both ‘BENITA’ and ‘Bendita’ will be perceived as fanciful words without any meaning, these elements of the earlier mark and the contested sign respectively are distinctive to a normal degree.

As regards the additional verbal element ‘PASTA ITALIANA’ in the contested sign, the equivalent expression in English is 'Italian pasta'. Therefore, bearing in mind that the corresponding expression in English is almost identical to ‘PASTA ITALIANA’, albeit in an inverted order, this verbal element of the contested sign will be understood by the part of the public under analysis as referring to 'Italian (origin/style) pasta'. In relation to most of the goods concerned (e.g. dried, fresh and filled pasta and food dressings etc.), it will thus be perceived as a merely informative message about the nature or intended purpose of the goods and is, therefore, non-distinctive. Moreover, even if the meaning of ‘PASTA ITALIANA’ may be distinctive as such in relation to some of the goods concerned, such as sugar or vinegar, in view of its much smaller size and position in the contested sign and the clear meaning it conveys, it will still be perceived as a secondary element referring to the main type of goods offered under the brand ‘Bendita’. Therefore, even if ‘PASTA ITALIANA’ may not as such be directly descriptive of some of the specific goods concerned, in the context of the contested sign it will still be perceived as a secondary element that is, at best, of weak distinctive character in relation to those goods.

The verbal element ‘Bendita’ is the dominant (visually most eye-catching) element of the contested sign in view of its much larger size and position at the top of the sign.

Visually, the signs coincide in the letters ‘Ben*ita’ in the only element of the earlier mark and in the dominant and most distinctive element of the contested sign. However, they differ in the additional ‘d’ letter in the middle of this verbal element in the contested sign and its stylisation, which will however not detract the consumers’ attention away from the verbal element as such. The signs also differ in the additional verbal element ‘PASTA ITALIANA’ in the contested sign, which is however non-distinctive or weak and is much smaller as explained above, and will therefore have much less impact in the overall impression produced by the sign.

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

Aurally, the earlier mark will be pronounced as 'be/ni/ta' and the contested sign as 'ben/di/ta'. Therefore, the only difference between the signs is the sound of the additional ‘d’ letter in the middle of the contested sign, which will not change the rhythm and intonation in the pronunciation of the word and will thus not have a significant impact in the overall aural impression produced by the signs. Moreover, as regards the additional verbal element 'PASTA ITALIANA', in view of its non-distinctive or weak character, and its much smaller size and position in the contested sign, and bearing in mind that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLRG5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), this additional verbal element is not likely to be pronounced by consumers when referring to the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole for the public under analysis in the relevant territory. However, the verbal element 'PASTA ITALIANA' in the contested sign evokes a concept whereas the earlier mark is meaningless, hence the signs are not conceptually similar. Nevertheless, this does not constitute a significant difference between the signs given the weak or non-distinctive character of the concept in question within the context of the contested sign as explained above.

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 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).

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.

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).

In the present case, the goods have been found identical or similar to varying degrees and the degree of attention of the relevant public is average.

The earlier mark has a normal distinctiveness and the signs have been found visually similar to an above average degree, aurally highly similar and, for the part of the public under analysis, there is no relevant conceptual difference between the signs that could otherwise help consumers to more easily distinguish between them.

Even if the contested sign includes an additional verbal element that is not present in the earlier mark, 'PASTA ITALIANA', it is a non-distinctive or weak element of a secondary nature which is not sufficient to outweigh the considerable similarities between the distinctive verbal element 'BENITA' of the earlier mark and the dominant and most distinctive element 'Bendita' of the contested sign, in particular bearing in mind that consumers will have to rely on their imperfect recollection of the signs. Therefore, the English-speaking consumers under analysis are likely to believe that the goods concerned, even those which are only similar to a low degree, offered under the signs in dispute originate from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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 reject the contested application.

For the sake of completeness, the Opposition Division notes that the applicant highlights that it holds several trade marks both in Spain and in the EU and expressly and exclusively refers to European Union trade mark registration No 18 011 802 for 'MUERDE LA PASTA'(fig) which, according to the applicant, is the name of an already quite well-known Italian restaurant. However, apart from the fact that the applicant did not submit any evidence to support these claims, it is unclear in what way that could possibly help to reduce a likelihood of confusion on the part of the relevant public in relation to the signs in dispute, which do not consist of or include the verbal element 'MUERDE LA PASTA'. Therefore, this argument of the applicant must, in any event, be set aside as irrelevant.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 188 394 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

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

The Opposition Division

Martin INGESSON

Silvia GRANGEL

Begoña URIARTE VALIENTE

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.