OPPOSITION No B 3 077 722

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen, Germany (professional representative)

a g a i n s t

Sovit Przedsiębiorstwo Handlowe Jarosław Buczkowski, Ul. Nowoursynowska 162 lok, 02-776 Warszawa, Poland (applicant), represented by Anna Piotrowska, ul. Korfantego 27, 01-496 Warszawa, Poland (professional representative).

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

DECISION:

1. Opposition No B 3 077 722 is partially upheld, namely for the following contested goods:

Class 29: Milk and dairy products.

Class 30: Coffee, coffee extracts, preparations and beverages based on coffee or iced coffee, coffee substitutes, extracts of coffee substitutes, chicory (coffee substitutes), tea, tea extracts; tea-based preparations and beverages; Iced tea; preparations and beverages based on cocoa and chocolate; chocolate products; beverages based on chocolate.

Class 32: Beverages, non-alcoholic beverages, preparations for making beverages, extracts for making beverages.

2. European Union trade mark application No 17 942 523 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 17 942 523 for the word mark ‘SOVIT’. The opposition is based on German trade mark registration No 1 052 077 for the word mark ‘Schovit’.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

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

Class 30: Cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages.

The contested goods are the following:

Class 1: Extracts for use in the food industry (in particular in the meat, dairy, confectionery, bakery, ice-cream, and fruit and vegetable industry), included in class 1; Edible ices; Emulsifiers for food; Pectin for use in the food industry; Lecithin for food; Preparations for extending the shelf-life of food; Food stabilisers.

Class 29: Meat and meat products, charcuterie, meat extracts, extracts for use in the meat industry, extracts for use in the food industry (the dairy, ice-cream and fruit and vegetable industries), included in class 29; milk and dairy products, food thickeners, binders for use in the food industry and protein for culinary purposes; vegetables processed; Processed fruit; Fruit, vegetable and fruit-and-vegetable preparations and concentrates; Non-dairy whitening agents for coffee and tea.

Class 30: Flour, flour-based preparations, baked goods, pastries, confectionery, food flavourings, spices, meat tenderisers for household purposes, starch for food, extracts for use in the food industry (in particular the confectionery and bakery industry), included in class 30, coffee, coffee extracts, preparations and beverages based on coffee or iced coffee, coffee substitutes, extracts of coffee substitutes, chicory (coffee substitutes), tea, tea extracts; tea-based preparations and beverages; Iced tea; malt-based preparations for food, preparations and beverages based on cocoa and chocolate; chocolate products; beverages based on chocolate, confectionery, pastries, sugar, sweets, natural sweeteners, chewing gum, not for medical purposes, baked goods, bread, yeast, pastries, biscuits, cakes, pastries, wafers, toffee, desserts included in this class, puddings, ice (frozen water), sorbets (ices), frozen confectionery, pastries and cakes, edible ices, frozen desserts, frozen yogurt, powders and binding agents for ice cream, sorbets (ices), frozen confectionery, frozen pastries, edible ices, frozen desserts and yoghurts; honey and substitutes therefor; breakfast cereals; muesli; maize flakes; cereal bars; ready-to-eat cereals and cereal preparations; rice; pasta; foodstuffs based on rice, flour and cereals, including in the form of prepared dishes; pizza; sandwiches; mixtures of pastes and ready-to-bake dough; sauces; soya sauce; catsup; seasoning preparations and flavour enhancers; spices

Class 32: Beverages, non-alcoholic beverages, aerated beverages, juices, nectars, preparations for making beverages, extracts for making beverages, water, beers.

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 and the applicant´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 1

Goods classified in Class 1 are mainly chemical products for use in industry, science and agriculture, including those aimed at manufacturing products belonging to other classes.

Even if the contested goods in Class 1 are intended for the food industry, they cannot be considered similar to the opponent’s goods in class 30 because they are in a different stage of processing (raw or semi-processed materials versus end consumer products), the goods in Class 1 are not considered consumer goods and are in many cases not even suitable for a direct consumption. Even if, admittedly, their nature might be similar, these goods have different end users and distribution channels. They are not in competition as one would not be used as a substitute of the other. The goods are not complementary either

Therefore, and contrary to the opponent´s arguments, the contested extracts for use in the food industry (in particular in the meat, dairy, confectionery, bakery, ice-cream, and fruit and vegetable industry), included in class 1; edible ices; emulsifiers for food; pectin for use in the food industry; lecithin for food; preparations for extending the shelf-life of food; food stabilisers are dissimilar to the opponent´s goods in Class 30.

Contested goods in Class 29

The contested milk and dairy products may serve the same purpose as the opponent’s cocoa powder in that milk is a kind of drink and cocoa powder is intended to be mixed with milk or water to prepare another drink. Moreover, they can be in competition or complementary to each other. On the other hand, milk products can encompass a large range of goods, such as a mixture of cocoa and milk. Nowadays, these kinds of products are common in the marketplace and are in competition with both milk and cocoa powder. Indeed such products precisely offer consumers a ready-made beverage and, thus, an opportunity to avoid mixing the ingredients themselves. Therefore, these products could be in competition with the opponent’s cocoa powder. Moreover, it is not unusual for cocoa powder producers to offer such products, so they may have the same producers. Finally, they may also have the same end users and distribution channels. It follows from the above that the similarity between these two ranges of goods cannot be denied. These goods are similar.

The rest of the contested goods in Class 29 are dissimilar to the opponent´s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages. The applicant´s goods in Class 29 are foodstuffs or ingredients for preparing food, however, the mere fact that all of these goods have a nutritional purpose is not sufficient to render them similar (see by analogy 26/11/2011, T-72/10, Naty‟s, EU:T:2011:635, § 35-36) . The goods in question have different natures and are not likely to be manufactured by the same producers, sold through the same outlets or placed on the same shelves in supermarkets. They are neither complementary nor in competition. Consequently, these goods are dissimilar.

Contested goods in Class 30

The contested preparations and beverages based on cocoa and chocolate; chocolate products; beverages based on chocolate are identical to the opponent´s cocoa powder either because they overlap or because the opponent´s goods constitutes a broader category.

The contested coffee, coffee extracts, preparations and beverages based on coffee or iced coffee, coffee substitutes, extracts of coffee substitutes, chicory (coffee substitutes), tea, tea extracts; tea-based preparations and beverages; Iced tea are similar to the opponent´s cocoa powder as both sets of goods are intended to be mixed with water and/or milk to make a beverage. To this extent, these goods have the same method of use. In addition, they can have the same end users and distribution channels. Furthermore, since they are interchangeable, they are in competition.

The rest of the contested goods, namely, flour, flour-based preparations, baked goods, pastries, confectionery, food flavourings, spices, meat tenderisers for household purposes, starch for food, extracts for use in the food industry (in particular the confectionery and bakery industry), included in class 30malt-based preparations for food, confectionery, pastries, sugar, sweets, natural sweeteners, chewing gum, not for medical purposes, baked goods, bread, yeast, pastries, biscuits, cakes, pastries, wafers, toffee, desserts included in this class, puddings, ice (frozen water), sorbets (ices), frozen confectionery, pastries and cakes, edible ices, frozen desserts, frozen yogurt, powders and binding agents for ice cream, sorbets are dissimilar to all the opponent´s goods as yoghurts; honey and substitutes therefor; breakfast cereals; muesli; maize flakes; cereal bars; ready-to-eat cereals and cereal preparations; rice; pasta; foodstuffs based on rice, flour and cereals, including in the form of prepared dishes; pizza; sandwiches; mixtures of pastes and ready-to-bake dough; sauces; soya sauce; catsup; seasoning preparations and flavour enhancers; spices are dissimilar to the opponent´s goods in Class 30. These goods have different natures and purposes. Moreover, they are not found on the same or even nearby shelves of general outlets and they usually have different manufacturers. Finally, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 32

The contested beverages, non-alcoholic beverages, , preparations for making beverages, extracts for making beverages, are at least lowly similar to the opponent´s cocoa powder, in particular fast dissolvable powder, for making non-alcoholic beverages as they are likely to have the same end users, distribution channels and producers. Furthermore, they could also be complementary or in competition with each other.

The contested aerated beverages, juices, nectars and water are dissimilar to the opponent´s cocoa powder. These goods have different natures and purposes. Moreover, they are not found on the same or even nearby shelves of general outlets and they usually have different manufacturers. Finally, they are neither in competition nor complementary.

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. Some of them consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may thus vary from low to average (see, to this effect, 12/04/2016, T‑361/15, Choice chocolate & ice cream, EU:T:2016:214, § 17-18; 26/02/2016, T‑210/14, Gummi Bear-Rings, EU:T:2016:105, § 28; 23/01/2014, T‑221/12, SUN FRESH, EU:T:2014:25, § 64, confirmed by order of 03/06/2015, C‑142/14 P, SUN FRESH, EU:C:2015:371).

3. The signs

Schovit	SOVIT
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).

As the comparison affects two word marks, it is worth reminding that in case of word marks it is the word as such that is protected and not its written form, being irrelevant whether they are represented in upper or lower case letters when these depictions do not depart from the usual way of writing.

Both ‘Shovit’ and ‘SOVIT’ are meaningless in the context of the relevant language and, therefore, distinctive to an average degree.

Visually and aurally the signs coincide in the string of letters ‘S*OVIT’, which constitutes the entire contested sign and five out of seven letters of the earlier mark. However, they differ in the additional letters ‘*ch*’ of the earlier mark, which has no counterpart in the contested sign. As rightly pointed out by the opponent, in the context of the relevant language, the sound of the earlier /Sch*/ will be pronounced in a very similar way to the contested initial letter /S*/.

Therefore, the signs are visually similar to an average degree and aurally similar to a high degree.

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 at least in 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 average.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found to be partly identical, partly similar to varying degrees and partly dissimilar and they are directed at the public at large that will display a degree of attention ranging from low to average when purchasing them.

The marks are visually similar to an average degree and aurally similar to a high degree while the conceptual aspect remains neutral.

It has been established that the earlier mark enjoys an average degree of distinctiveness.

Therefore, it cannot be excluded that public might confuse the signs, especially, if we take into account 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).

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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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 and 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Claudia SCHLIE

Marzena MACIAK

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.