OPPOSITION No B 3 070 356

Nu Science Corporation, 43102 Business Center Parkway, 93535 Lancaster, United States of America (opponent), represented by Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative)

a g a i n s t

Cereales Andinos Cerandina Cia. Ltda., Calle José Hernández s/n e Ingahuayco Barrio Llano Grande, Quito, Ecuador (applicant), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 356 is partially upheld, namely for the following contested goods:

Class 30: Confectionery.

2. European Union trade mark application No 17 926 900 is rejected for 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 17 926 900 for the figurative mark . The opposition is based on European Union trade mark registration No 14 367 122 for the word mark 'CELLFOOD' in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opposition was also initially based on Article 8(5) EUTMR invoked in relation to this earlier trade mark registration as well as on Article 8(4) EUTMR in relation to non-registered trade marks for 'CELLFOOD' throughout the European Union. However, in its observations of 09/07/2019 to substantiate the opposition, the opponent indicated that the opposition was based solely on Article 8(1)(b) EUTMR and the additional grounds and non-registered trade marks thus no longer form part of the basis of the opposition.

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 3: Soaps; perfumery; essential oils, cosmetics; cosmetics including skin care preparations; skin care preparations; lotions, gels, serums, creams and oils for use on the skin; cosmetic preparations for slimming purposes.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietary food supplements; dietary supplements; vitamin and mineral supplements; medical preparations for slimming purposes; dietetic substances adapted for medical use; non-medicated nutritional supplements.

Class 29: Prepared meals, soups, preparations for making soups, desserts and spreads; soup and soup products in powder or liquid form; vitamin or mineral enriched foodstuffs, being prepared meals, soups, soup products in powdered or liquid form, preparations for making soups, desserts and spreads; milk, dried milk, milk beverages; milkshakes; substitutes for milk products; dairy products.

The contested goods are the following:

Class 30: Confectionery; Flour; Farinaceous preparations; Preparations made with cereals; Cereals prepared for human consumption; Cereal bars; Cereal-based snack food.

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

The term ‘including’, 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.

Contested goods in Class 30

The contested confectionery includes frozen confectionery products that may be milk-based and intended to be consumed as desserts and the opponent’s dairy products in Class 29 include goods such as milk pudding which is also intended to be consumed as a dessert. Therefore, these goods can have the same purpose and be in competition and they have the same methods of use. Furthermore, they target the same relevant public and can be found in the same refrigerated sections of supermarkets. In addition, these goods can be produced by the same undertakings. Therefore, they are similar.

As regards the contested flour; farinaceous preparations, the opponent argues that they are similar to the prepared meals, soups, preparations for making soups, desserts and spreads; soup and soup products in powder or liquid form of the earlier mark in Class 29 since they are likely to contain flour or farinaceous/starch based preparations. In particular soup and soup products in powder form will contain such goods as an ingredient. However, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). Furthermore, even 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. In the present case, apart from the fact that flour cannot be considered to be the main ingredient of soup products in powder form, the contested flour; farinaceous preparations do not have the same nature as the opponent’s prepared meals, soups, preparations for making soups, desserts and spreads; soup and soup products in powder or liquid form in Class 29 and they are not usually produced by the same undertakings. Furthermore, these goods are not complementary to each other or in competition. The same considerations apply to the other goods of the earlier mark in Class 29 which are essentially the same but enriched with vitamins/minerals or otherwise concern substitutes for milk products and dairy products. Moreover, the contested flour; farinaceous preparations share no relevant points of contact with the opponent’s goods in Class 3 (essentially consisting of perfumery, essential oils and cosmetics) or Class 5 (essentially consisting of pharmaceutical preparations, sanitary preparations for medical purposes and dietary supplements). Therefore, these contested goods are dissimilar to all the opponent’s goods in Classes 3, 5 and 29.

As regards the contested preparations made with cereals; cereals prepared for human consumption; cereal bars; cereal-based snack food, the opponent argues that they are similar to the prepared meals, soups, preparations for making soups, desserts and spreads; soup and soup products in powder or liquid form of the earlier mark in Class 29 since, according to the opponent, they are broad enough to encompass those made with cereals. In particular, cereals are often used as the basis of snack foods/desserts — for example, cakes and bars made from cereal products which would be found side by side on supermarket shelves with cereals and would pass through the same channels of trade and target the same end consumer. However, contrary to the opponent’s claims, the goods of the earlier mark in Class 29 do not include those (primarily) made with cereals, since such goods would rather belong to Class 30. Therefore, even if it cannot be excluded that some of the opponent’s goods in Class 29 may include cereals as an ingredient, this is not sufficient on its own for a finding of a similarity with the contested goods in Class 30 for the reasons set out above. Furthermore, as regards the opponent’s argument that cakes and bars made from cereal products would be found side by side on supermarket shelves with cereals, the opponent’s goods in Class 29 do not consist of or include cakes and bars made from cereal products which, again, would rather be goods that belong to Class 30. Moreover, the contested preparations made with cereals; cereals prepared for human consumption; cereal bars; cereal-based snack food do not consist of or include goods such as sweet frozen desserts that could be found in the same refrigerated sections of supermarkets as the opponent’s dairy products or substitutes for milk products in Class 29 or the opponent’s desserts which are also dairy or fruit based. Therefore, even if these contested goods may concern biscuits and cereal-based snack food and some of the opponent’s goods concern desserts, this is not sufficient for a finding of similarity between them. The goods under comparison have different natures and are not in competition or complementary to the each other. In addition, in the absence of any evidence to the contrary, they are not likely to be produced by the same undertakings since their production processes are different. Moreover, the contested preparations made with cereals; cereals prepared for human consumption; cereal bars; cereal-based snack food share no relevant points of contact with the opponent’s goods in Classes 3 and 5 as set out above. Therefore, these contested goods are also dissimilar to all the opponent’s goods in Classes 3, 5 and 29.

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 similar are directed at the public at large whose degree of attention is considered to be average.

3. The signs

CELLFOOD
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 'CELLFOOD' and the contested sign is a figurative mark consisting of the verbal element 'CELIFOOD' depicted in standard white upper case letters above which there is a smaller figurative device resembling a llama (a domesticated South American camelid), both depicted on a ribbon-shaped pink background with a white inner border line and which resembles a typical food product label.

The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

In this respect, even if the verbal elements 'CELLFOOD' of the earlier mark and 'CELIFOOD' of the contested sign are depicted as one verbal element, their ending, 'FOOD', will be associated by a significant part of the public in the relevant territory with the meaning of ‘any nutritious substance that people or animals eat or drink in order to maintain life and growth’ taking into account that it is a basic English word and given its widespread use in relation to foodstuffs in expressions such as ‘green food’ and ‘fast food’. Furthermore, part of the public, such as the English-speaking public in the relevant territory, will perceive the beginning of the earlier mark, 'CELL', as meaning, inter alia, 'the basic structural and functional unit of living organisms'. However, part of the public, such as the Spanish, Italian and French-speaking public in the relevant territory, will perceive no specific meaning in this word.

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 existing for the English-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 beginning of the earlier mark, 'CELL', and the beginning of the contested sign, 'CELI', will have no meaning, such as the Spanish, Italian and French-speaking public in the relevant territory.

For the part of the public under analysis, even if the average consumer is likely to perceive the ending of the verbal elements 'CELLFOOD' of the earlier mark and 'CELIFOOD' of the contested sign as a reference to a nutritious substance and thus only as weakly distinctive in relation to the goods concerned, both 'CELLFOOD' of the earlier mark and 'CELIFOOD' of the contested sign, when considered as a whole, will not be perceived as having any specific meaning. Therefore, these verbal elements are distinctive to a normal degree as a whole.

As regards the ribbon-shaped pink background of the contested sign, it will merely be perceived as a decorative element since it resembles a typical food product label, and it is, therefore, non-distinctive as such. However, the figurative device resembling a llama has no direct meaning in relation to the goods concerned (confectionery) and this figurative element of the contested sign is therefore distinctive. Nevertheless, 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 has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘CEL*FOOD’ in the only element of the earlier mark and in the only verbal element of the contested sign. They differ in the respective letter 'L' and 'I' which are however also visually similar. Moreover, even if the signs also differ in the additional figurative device, which is distinctive, and the ribbon-shaped pink background, which is non-distinctive, of the contested sign, they are elements to which consumers will pay less attention as explained above.

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

Aurally, irrespective of the different pronunciation rules used by the part of the public under analysis, the pronunciation of the signs coincides in the sound of the letters ‘CEL*FOOD’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‛I’ of the contested sign and to the extent that the double ‘L’ letter in the earlier mark may produce a slightly different sound than the single ‘L’ letter in the contested sign, if at all. In this respect and for the sake of clarity, even if a double ‘L’ letter in Spanish normally produces a different sound to that of a single ‘L’ letter, this will not be the case when the double ‘L’ letter is followed by a consonant, such as in the case at hand.

Therefore, the signs are aurally highly similar.

Conceptually, the figurative device of the contested sign will be associated with the concept of a llama, which is not present in the earlier mark. The verbal elements of the signs, when considered as a whole, do not have any meaning for the public under analysis in the relevant territory but the element ‘FOOD’, included in both signs, will be associated with the meaning explained above. However, this concept is weak in relation to the goods concerned and to that extent the signs are therefore conceptually similar only to a low degree.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

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 partly similar and partly dissimilar and the degree of attention of the relevant public is average.

For the part of the public under analysis, the signs are visually similar to at least an average degree, phonetically highly similar and conceptually similar to a low degree.

Therefore, even if the contested sign includes some non-distinctive and even distinctive figurative elements that are not present in the earlier mark, in view of the considerable similarities between the verbal element 'CELLFOOD' of the earlier mark and 'CELIFOOD' of the contested sign, which are distinctive to a normal degree when considered as a whole, and bearing in mind the principle of interdependence, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish, Italian and French-speaking public in the relevant territory. Indeed, it is highly conceivable that the relevant consumers, in their imperfect recollection of the signs, will perceive the contested figurative mark as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). 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

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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)(b) 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

María del Carmen COBOS PALOMO

Sam GYLLING

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.