DECISION

of the Fourth Board of Appeal

of 24 November 2020

In case R 710/2020-4

Grupo Bimbo, S.A.B. de C.V.
Prolongación Paseo de la Reforma No. 1000 Colonia Peña Blanca Santa Fé Delegación Álvaro Obregón Mexico, Distrito Federal 01210 Mexico	Opponent / Appellant

represented by Lerrouxx, Proción 7, (Edif. America II) bloque 2 - 2ºD, 28023 Madrid, Spain

v

Magkoutis-Produits de Grece
8 Rue des Bois 68170 Rixheim France	Applicant / Defendant

represented by Maria Chairetaki, Akadimias 18, 106 71 Athens, Greece

APPEAL relating to Opposition Proceedings No B 3 071 719 (European Union trade mark application No 17 951 813)

The Fourth Board of Appeal

composed of D. Schennen (Chairman), L. Marijnissen (Rapporteur) and R. Ocquet (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 7 September 2018, Magkoutis-Produits de Grece (‘the applicant’) sought to register the word mark

CRETAKIS

as a European Union trade mark (‘EUTM’) for the following list of goods:

Class 29 - Olive oil; Extra virgin olive oil for food; Olive oil for food; Olives, [prepared]; Cooked olives; Dried olives; Olives, preserved; Canned processed olives; Fish, not live; Fish, tinned; Seafood preserves; Processed seafood; Yoghurt; Oils and fats;

Class 30 - Honey; Natural honey; Vinegar; Flavoured vinegar; Wine vinegar; Dried herbs; Seaweed [condiment]; Processed herbs; Flavourings for foods; Food flavourings, other than essential oils; Salts, seasonings, flavourings and condiments;

Class 31 - Olives, fresh; Unprocessed olives; Fresh fruits, nuts, vegetables and herbs.

2. On 19 December 2018, Grupo Bimbo, S.A.B. de C.V. (‘the opponent’) filed a notice of opposition based on a number of earlier marks, all including the word element ‘TAKIS’. Amongst these are the following:

1. EUTM No 1 612 084 for the word mark

TAKIS

filed on 14 April 2000, registered on 25 March 2002 and renewed until 14 April 2030 for the following goods:

Class 29 - Snack products, consisting of dried, roasted, salted and/or spiced peanut kernels, nuts, almonds, cashew nut kernels and/or dried fruit; potato products for snacks;

Class 30 - Cereal, rice and/or maize products for snacks; savoury pastries.

Reputation was claimed for the European Union in respect of all these goods.

2. EUTM No 13 466 669 for the word mark

TAKIS DELICIOSAMENTE PICANTE

filed on 17 November 2014 and registered on 30 March 2015 for goods in Classes 29, 30 and 31, including the following:

Class 29 - Olives, preserved; olive oil for food; fish; preserved fish; salted fish; canned fish; yoghurt; edible oils and fats;

Class 30 - Honey; vinegar; beer vinegar; culinary herbs; Garden herbs, preserved [seasonings]; Flavourings, other than essential oils; Flavourings, other than essential oils, for cakes; salt; Celery salt; Cooking salt; Salt for preserving foodstuffs; Peppers [seasonings]; Saffron [seasoning]; condiments;

Class 31 - Olives, fresh; Garden herbs, fresh; Seaweed for human consumption; Fresh fruits and vegetables; hazelnuts; chestnuts, fresh; peanuts, fresh; nuts [fruits].

Reputation was claimed for the European Union in respect of all these goods.

3. The grounds of the opposition were those laid down in Articles 8(1)(b) and 8(5) EUTMR for all the earlier marks. It was directed against all the goods of the application and based on all the goods of the earlier marks.

4. Within the time limit to substantiate the opposition, the opponent submitted evidence in support of the reputation claimed for the earlier rights.

5. By decision of 17 February 2020 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety and ordered the opponent to bear the costs.

6. The Opposition Division started the examination of the opposition based on earlier EUTM No 1 612 084 for the word mark ‘TAKIS’, see paragraph 2 under a) above, and Article 8(5) EUTMR. It reasoned that despite showing some use of the earlier mark on YouTube, social media and in the sponsoring of certain events, as well as some turnover and advertising spend figures, the evidence provided little information on the extent of use, the market share or any concrete information on the market, competitors and consumers in question. As a result, the evidence did not show that the earlier mark was known by a significant part of the relevant public. Therefore, the opponent failed to prove that its earlier mark had a reputation, or even an enhanced degree of distinctiveness. As the evidence submitted was the same for all other earlier marks invoked, no reputation, nor enhanced distinctiveness, had been proven for those marks either. Since it had not been established that the earlier marks had a reputation, one of the necessary conditions contained in Article 8(5) EUTMR was not fulfilled, and the opposition was rejected as far as it was based on this ground, a conclusion which applied to all the earlier marks invoked.

7. The Opposition Division subsequently examined the opposition based on earlier EUTM No 1 612 084 under Article 8(1)(b) EUTMR, proceeding as if all the contested goods were identical to those of the earlier mark. The goods assumed to be identical were directed at the public at large with an average degree of attention.

8. The earlier mark ‘TAKIS’ would be perceived by the Greek-speaking public as a common male name while the remaining part of the public would see it as meaningless. In any case, it was distinctive in relation to the relevant goods. The contested sign ‘CRETAKIS’ would be perceived as meaningless and distinctive. Any dissection of the contested sign would be artificial, even for the Greek-speaking public.

9. Visually and aurally, the signs coincided in ‘TAKIS’, pronounced in two syllables, and differed in the first part ‘CRE’, pronounced in one syllable, of the contested sign. In the overall impression of the signs, the attention paid to the element ‘CRE’ would tend to neutralise the effect of the common element ‘TAKIS’. The signs had a different length (five versus eight letters), and a different rhythm and intonation as they had a different number of syllables (two versus three). The signs were found visually similar to a low degree and aurally similar to an average degree.

10. Conceptually, although the Greek-speaking part of the public in the relevant territory would perceive the meaning of the earlier mark as a common male name, the other sign had no meaning in that territory. Therefore, the signs were not conceptually similar for the Greek-speaking public. For the remaining part of the relevant public, neither of the signs had a meaning and a conceptual comparison was not possible.

11. The earlier mark as a whole had no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, its distinctiveness per se was normal. Enhanced distinctiveness of the earlier mark was not proven.

12. The additional letters ‘CRE’ at the beginning of the contested sign were clearly perceivable and had a considerable impact on the overall impression of the signs, counterbalancing to a large extent their similarities. The goods themselves were fairly ordinary consumer products that were commonly purchased in supermarkets or establishments where goods were arranged on shelves and consumers were guided by their visual impact. Therefore, the differences between the signs, in particular the visual differences, were considered sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common letters ‘TAKIS’ played no independent role in the contested sign and, when perceived as a whole, any dissection of the contested sign would be artificial.

13. The previous decisions of the Office referred to by the opponent were not relevant to the present proceedings as the marks in those cases were not comparable to the marks in the present case. Considering all the above, even assuming that the goods were identical, there was no likelihood of confusion.

14. Since the other earlier marks invoked on the grounds of Article 8(1)(b) EUTMR were identical to earlier EUTM No 1 612 084 or less similar to the contested mark, the outcome could not be different; also based on the other earlier marks there was no likelihood of confusion.

15. On 17 April 2020, the opponent filed an appeal against the contested decision in its entirety, followed by its statement of grounds on 17 June 2020. It requests that the Board annul the contested decision, reject the contested mark for all the contested goods and order the applicant to bear the costs.

16. It argues that the evidence submitted at first instance already proved the reputation of the mark ‘TAKIS’ and submitted additional evidence of reputation. As to the likelihood of confusion, it points out that the common dominant and distinctive element of all the earlier marks is the word ‘TAKIS’, insofar as it is the only term of the word marks, due to its size and position in the figurative marks or because the other verbal elements of the word marks are descriptive. The different prefix ‘CRE-’ of the contested sign does not suffice to avoid a likelihood of confusion.

17. Visually, the signs coincide in the letters ‘T-A-K-I-S’. The dominant element ‘TAKIS’ of the earlier marks is fully contained in the verbal element ‘CRETAKIS’ of the contested sign, so the common component ‘TAKIS’ is to be given most weight in the overall impression of the signs. Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TAKIS’, therefore having two syllables in common, and differs in the first syllable ‘CRE’ of the contested sign.

18. The opponent owns 30 registered trade marks in European countries, including 15 EUTMs, with the common term ‘TAKIS’ and additional element(s), such as ‘TAKIS FUEGO’, ‘TAKIS DELICIOSAMENTE PICANTE’, ‘TAKIS SABOR QUESO TNT’, ‘TAKIS SALSA BRAVA’, ‘TAKIS FIRE’, ‘BARCEL TAKIS’, ‘PICANTE COMO TAKIS’, etc. Taking into consideration the family of marks around the term ‘TAKIS’, the consumer might believe that the contested sign ‘CRETAKIS’ is a new trade mark which belongs to this family of trade marks.

19. The conflicting goods are identical or similar; they are found in the same place in supermarkets and establishments and they have the same nature, purpose, method of use, consumers and distribution channels. It is clear that the relevant consumer will think that the foodstuffs offered under the marks ‘TAKIS’ and ‘CRETAKIS’ have a common commercial origin. There would be a likelihood of confusion.

20. The applicant did not submit any observations in reply.

Reasons

21. The appeal is well founded. The opposition under Article 8(1)(b) EUTMR succeeds for all the contested goods based on earlier EUTM No 13 466 669 for the word mark ‘TAKIS DELICIOSAMENTE PICANTE’ taking into account the Spanish-speaking part of the relevant public.

22. It follows from Article 71(1) EUTMR that, as a result of the appeal before it, the Board of Appeal is called upon to carry out a new, full examination of the substance of the case, both in law and in fact (08/09/2015, C-62/15 P, Generia / Generalia Generacion Renovable, EU:C:2015:568, § 35; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 96). The criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by the Office, even when it has not been raised by the parties, if it is necessary to resolve that matter in order to ensure a correct application of the EUTMR having regard to the facts, evidence and arguments provided by the parties (01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 21).

Article 8(1)(b) EUTMR

23. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

24. The Board will first examine the opposition under this ground in relation to earlier EUTM No 13 466 669 for the word mark ‘TAKIS DELICIOSAMENTE PICANTE’. The relevant territory for analysing the likelihood of confusion is the European Union including all its Member States. The relevant public consist of the public at large.

25. Due to its unitary character it is already sufficient for the refusal of protection of a EUTM if a likelihood of confusion may occur in only part of the European Union (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 22/03/2007, T‑322/05, Terranus, EU:T:2007:94, § 29; 05/02/2020, T-44/19, TC Touring Club, EU:T:2020:31, § 84). In this decision, the examination of the Board will centre on whether there is a likelihood of confusion on the part of the Spanish-speaking part of the relevant public.

Comparison of the goods

26. Goods or services are identical when they appear with the same wording in the lists of goods or services compared or when they are included in a more general category designated by the other mark (13/09/2018, T-94/17, Tigha, EU:T:2018:539, § 46).

27. The contested goods in Classes 29, 30 and 31 are all identical to the earlier goods in the same classes as specified in paragraph 2 under b) above. More in particular:

Class 29

28. The contested goods ‘olive oil; extra virgin olive oil for food; olive oil for food’ are identical to the earlier ‘olive oil for food’ in the same class.

29. The contested goods in Class 29 ‘olives, [prepared]; cooked olives; dried olives; olives, preserved; canned processed olives’ are identical to the earlier goods ‘olives, preserved’ in the same class.

30. The contested goods in Class 29 ‘fish, not live; fish, tinned; seafood preserves; processed seafood’ are identical to the earlier goods ‘fish; preserved fish; salted fish; canned fish’ in the same class.

31. The contested goods ‘yoghurt; oils and fats’ are identical to the goods ‘yoghurt; edible oils and fats’ in the same class.

Class 30

32. The contested goods ‘honey; natural honey’ are identical to the earlier goods ‘honey’ in the same class.

33. The contested goods ‘vinegar; flavoured vinegar; wine vinegar’ are identical to the earlier goods ‘vinegar; beer vinegar’ in the same class.

34. The contested goods ‘dried herbs; processed herbs’ are identical to the earlier goods ‘culinary herbs; garden herbs, preserved [seasonings]’ in the same class.

35. The contested goods ‘flavourings for foods; food flavourings, other than essential oils; flavourings’ are identical to the earlier goods ‘flavourings, other than essential oils; flavourings, other than essential oils, for cakes’ in the same class.

36. The contested goods ‘salts’ are identical to the earlier goods ‘salt; celery salt; cooking salt; salt for preserving foodstuffs’ in the same class.

37. The contested goods ‘seasonings’ are identical to the earlier goods ‘garden herbs, preserved [seasonings]; peppers [seasonings]; saffron [seasonings]’ in the same class.

38. The contested goods ‘seaweed [condiment]; condiments’ are identical to the earlier goods ‘condiments’ in the same class. Moreover, the contested ‘seaweed [condiment]’ is highly similar to the earlier goods ‘seaweed for human consumption’ in Class 31.

Class 31

39. The contested goods ‘olives, fresh; unprocessed olives’ are identical to the earlier goods ‘olives, fresh’ in the same class.

40. The contested goods ‘fresh fruits, nuts, vegetables and herbs’ are identical to the earlier goods ‘fresh fruits and vegetables; hazelnuts; chestnuts, fresh; peanuts, fresh; nuts [fruits]; garden herbs, fresh’ in the same class.

Comparison of the signs

41. The comparison of the conflicting marks shall assess the visual, aural or conceptual similarity of the signs in question, based on the overall impression given by the marks and bearing in mind, in particular, their distinctive and dominant elements (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).

42. The word marks to be compared are:

    Contested mark	Earlier mark
    CRETAKIS	TAKIS DELICIOSAMENTE PICANTE

43. The earlier mark consists of the word ‘TAKIS DELICIOSAMENTE PICANTE’. For the Spanish-speaking public the word ‘TAKIS’ has no meaning. The words ‘DELICIOSAMENTE PICANTE’ mean ‘deliciously spicy’ and are purely descriptive for the relevant earlier food products in Classes 29, 30 and 31 for which this indication designates an obvious characteristic. It follows that the element ‘TAKIS’ forms the most and in fact the only distinctive and the most dominant part of the earlier mark.

44. Visually, within the contested mark ‘CRETAKIS’, the only distinctive and dominant part of the earlier mark, i.e. the part ‘TAKIS’, is entirely reproduced. Although consumers normally attach more importance to the first part of words, that consideration cannot apply in every case and may be compensated by the overall impression given by the signs (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28, 32; 07/03/2013, T-247/11, Fairwild, EU:T:2013:112, § 33‑34). In the case at hand, even though the first letters ‘CRE’ in the contested mark create a visual difference, this is insufficient to counterbalance the overall impression of visual similarity created by the identical letters ‘TAKIS’, forming the largest part of the contested mark. The additional wording in the earlier mark is purely descriptive and only plays a very secondary role, if any role at all. It follows that the signs are visually similar to a below average degree.

45. Aurally, the pronunciation of both signs coincides in the sound of the two syllables ‘TA-KIS’ of the earlier mark and the last two syllables of the contested mark, which will be pronounced as ‘CRE-TA-KIS’; two out of the three syllables of the contested mark are identical to the mere two of the only distinctive and dominant part ‘TAKIS’ of the earlier mark. It is unlikely that the relevant Spanish consumer will pronounce the words ‘DELICIOSAMENTE PICANTE’ within the earlier mark, taking into account their purely descriptive character, and even if they are pronounced, their impact on the comparison of the signs is extremely limited, for the same reason. Thus, the only relevant phonetical dissimilarity between the marks is in the pronunciation of the initial syllable ‘CRE’ of the contested sign. It follows that the marks are aurally similar to a below average degree as well.

46. Conceptually, the contested mark as a whole does not convey a concept. The fact that it contains the letter sequence ‘CRETA’ (Spanish for the Greek island Crete) does not mean that the Spanish-speaking consumers will indeed perceive this concept within the contested mark in which the additional letters ‘KIS’ are without any meaning. It is unlikely that they will dissect the mark into the parts ‘CRETA-KIS’ also because this would be very illogical from an aural point of view. Within the earlier mark, the meaningful words ‘deliciosamente picante’ have no relevant impact on the conceptual comparison of the signs taking into account their purely descriptive character. It follows that the conceptual comparison remains neutral.

Global assessment of the likelihood of confusion

47. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

48. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

49. For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

50. In the absence of any meaning of the distinctive part ‘TAKIS’ within the earlier mark in relation to the relevant goods in Class 29, 30 and 31, the inherent distinctive character of the earlier mark as whole is normal, irrespective of the descriptive character of the additional wording forming part of it.

51. The conflicting goods target the public at large. The level of attention may vary from low to average since the relevant goods are everyday consumer goods (02/11/2003, T‑286/02, Kiap Mou, EU:T:2003:311, § 28; 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145, § 49; 17/12/2014, T-344/14, Deluxe, EU:T:2014:1097, § 20).

52. Taking into account the identity of the contested goods, the below average degree of visual and aural similarity between the conflicting signs, the normal level of inherent distinctiveness of the earlier mark and the no more than average, or even low, level of attention of the relevant public, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for all the contested goods on the Spanish-speaking part of the public which suffices for the opposition to succeed.

53. Since the opposition succeeds in its entirety on the basis of Article 8(1)(b) taking EUTM No 13 466 669 into account and its the normal level of inherent distinctiveness, there is no need to examine the opponent’s claim that the earlier mark is particularly distinctive by virtue of intensive use and reputation or the other earlier marks and grounds invoked, including the family of marks claim of the opponent.

54. As a result, the opponent succeeds in its appeal. The contested decision shall be annulled, and the opposition shall be upheld for all the contested goods.

Costs

55. Since the applicant (defendant) is the losing party within the meaning of Article 109(1) EUTMR, it must be ordered to bear the costs incurred by the opponent (appellant) in the opposition and appeal proceedings.

Fixing of costs

56. In accordance with Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) and (iii) EUTMIR, the Board fixes the amount of representation costs to be paid by the defendant to the appellant in the appeal proceedings at EUR 550 and for the representation in the opposition proceedings at EUR 300. In addition, the defendant shall reimburse to the appellant the opposition fee of EUR 320 and the appeal fee of EUR 720. The total amount is EUR 1 890.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Upholds the opposition and rejects European Union trade mark application No 17 951 813 for all the goods applied for;

3. Orders the defendant to bear the costs of the opposition and appeal proceedings;

4. Fixes the amount of the costs to be paid by the defendant to the appellant for the opposition and the appeal proceedings at EUR 1 890.

Signed D. Schennen

Signed L. Marijnissen

Signed R. Ocquet

Registrar: Signed p.o. P. Nafz