OPPOSITION No B 3 070 546

Sociedad Agraria De Transformacion Ltda. Nº 4771 Grufesa, Cuesta de la Pila s/n, 21800, Moguer (Huelva), Spain (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Yasmin Azmi-Al-Obaidi handelende onder de naam Hanna Foods, Zevenbergseweg 33 B, 5351 PG, Berghem, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL, Breda, Netherlands (professional representative).

On 23/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 546 is partially upheld, namely for the following contested goods and services:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; milk products.

Class 35: Wholesaling in the field of preserved, frozen, dried and cooked fruits and vegetables, milk products.

2. European Union trade mark application No 17 929 324 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 17 929 324 for the figurative mark namely against all the goods in Class 29 and some services in class 35. The opposition is based on European Union trade mark application No  12 678 272 for the figurative mark .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: Meats; Fish, seafood and molluscs; Processed fruits, fungi and vegetables (including nuts and pulses); Edible oils and fats; Birds eggs and egg products; Dairy products and dairy substitutes; Soy-based snack foods; Stock [prepared]; Broth [soup]; Stewed apples; Soup mixes; Fruit desserts; Artificial milk based desserts; Desserts made from milk products; Yoghurt desserts; Condensed tomatoes.

Class 30 Fresh fruits in the nature of berries, forest fruits.

Class 32 Non-alcoholic beverages made with berries with the exception for cider and malt based beverages and any non-alcoholic or low-alcoholic aperitifs or spirits imitating beverages.

The contested goods and services are the following:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; milk products.

Class 35 Wholesaling in the field of preserved, frozen, dried and cooked fruits and vegetables, milk products, edible ices.

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 29

All of the contested goods in Class 29 are identical to the opponent’s goods in the same class, either because they overlap with the earlier processed fruits and vegetables (including nuts and pulses) or because milk products, as contained in the list of the contested goods is synonymous to the opponent’s dairy products.

Contested services in Class 35

The contested wholesaling in the field of preserved, frozen, dried and cooked fruits and vegetables, milk products are similar to a low degree to the earlier processed fruits and vegetables (including nuts and pulses) and dairy products because they are complementary, coincide in distribution channels and target the same end user. As seen from the comparison above, the goods subject to wholesaling are identical to the referred opponent’s goods in Class 29.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled for the contested Wholesaling in the field of edible ices, since the earlier goods are at most similar at different degrees to edible ices.

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 and similar to a low degree are directed at the public at large and professional public.

The degree of attention is considered to be average.

3. The signs

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 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.

The contested sign contains the verbal element ‘hannafoods’. The relevant public will break down the term into elements that suggest a concrete meaning or resemble known words. Consequently, it will identify the elements ‘hanna’ and ‘foods’.

The verbal elements ‘the healthy berry’ in the earlier sign and ‘food’ in the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The signs’ elements ‘Hannah’ and ‘hanna’ will be perceived by the relevant public as a female given name, where ‘hanna’ will only be seen as a variation of ‘Hannah’, if at all the additional ‘h’ in the end of the latter element is noticed. These elements are distinctive since their meaning is not related to the relevant goods and services.

The verbal elements ‘the healthy berry’ and ‘foods’ are English words and will be perceived by the relevant public with their respective meaning. These elements are at most weak, as they will be associated with the nature of the goods and services in question. With respect to ‘the healthy berry’ in particular, it is considered that it will have weak connotations including for the goods which are not fruit or fruit-related, because the element will still suggest associations with natural food products. Moreover, due to its position and size, this element is clearly secondary to the remaining elements.

The figurative element of the earlier sign will be perceived as a depiction of a berry, which perception is further prompted by the verbal elements of the signs (healthy berry’). Therefore, it is at most weak for the goods in question, including for those which are not fruit or fruit-related, because the element will still suggest associations with natural food products.

The figurative element of the contested sign is weak since it might be recognized as a representation of a tree, which can refer to the organic nature of the goods sold or traded.

Consequently, it is the elements ‘Hannah’and ‘hanna’ respectively that are the most distinctive elements of the signs, which consumers will see as the main origin identifiers.

Neither of the elements in the contested sign can be considered more dominant (eye-catching) than the other elements.

Taking into account all the above considerations and the distinctiveness of the signs’ elements, they are visually similar to an average degree on account of the nearly identical most distinctive elements and the different colours and arrangement of the respective figurative and verbal elements. Aurally and conceptually, the signs are similar at least to an average degree given the coincidences in the concept of their most distinctive elements, ‘‘Hannah’ / ‘hanna’. The differentiating elements are either at most weak for the reasons 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 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case the goods and services in question are partly identical, partly similar to a low degree and partially dissimilar. They target the public at large and professional public with an average degree of attention. The signs are visually similar to an average degree, and aurally and conceptually similar at least to an average degree. The 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).

Account is 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 case at issue, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

The signs coincide in the initial and most distinctive element ‘HANNA(H)’, where the addition of ‘H’ in the earlier mark may even easily go unnoticed.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the visual, aural and conceptual similarities between them. Consequently, the relevant public, when encountering the signs in relation to similar goods and services are likely to think that they come from the same undertaking or from economically linked undertakings

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration 12 678 272. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

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 services 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

Aldo BLASI

Matthias KLOPFER

Teodora Valentinova TSENOVA-PETROVA

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.