OPPOSITION No B 3 071 038

Tovarna olja Gea d.d., Trg svobode 3, 2310 Slovenska Bistrica, Slovenia (opponent)

a g a i n s t

Dimitrios Kotaridis, Gefyra Monemvasia, 2370 Monemvasia, Greece (applicant).

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

DECISION:

1. Opposition No B 3 071 038 is upheld for all the contested goods, namely

Class 29: Oils and fats.

2. European Union trade mark application No 17 958 922 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 958 922, , namely against some of the goods in Class 29. The opposition is based on, inter alia, Slovenian trade mark registration No 9 471 402, ‘GEA’ (word 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Slovenian trade mark registration No 9 471 402.

1. The goods

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

Class 29: Unrefined and refined edible oils; cold-pressed edible oils.

The contested goods are the following:

Class 29: Oils and fats.

The contested oils and fats include as a broader category, or overlap with, the opponent’s unrefined and refined edible oils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. These goods may be subject to habitual buying behaviour. Purchase decisions of this kind are made in relation to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T‑547/08, Strumpf, EU:T:2010:235, § 43). Therefore, the degree of attention when purchasing the relevant goods will vary from lower than average to average, depending on the price of the goods and the frequency of purchase.

3. The signs

GEA
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 trade mark is a word mark, depicted in upper-case letters. In the case of word marks, the word as such is protected, not its written form, and therefore it is irrelevant whether the word mark is depicted in upper- or lower-case letters.

The contested sign is a figurative trade mark containing the verbal elements ‘mana’ and ‘gea’, depicted one above the other, in rather stylised lower-case letters, as well as a figurative device of two superimposed circles. These two circles form a very simple combination of basic geometric shapes. They will be perceived as mainly decorative and their capacity to indicate commercial origin is low.

A part of the relevant public will associate the verbal element ‘Gea’, present in both signs, with an abstract personification of the Earth (‘gaia’ in English). However, it cannot be excluded that part of the relevant public will perceive this word as meaningless. The verbal element ‘mana’, present in the contested sign will be perceived by a significant part of the relevant public as a sugar-rich sticky liquid, secreted by some insects as they feed on plant sap. In order to avoid a complex conceptual analysis with many scenarios for the different parts of the public that understand one or both elements in the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive the aforementioned meanings of both ‘Gea’ and ‘mana’.

Neither ‘gea’ nor ‘mana’ is related in any way with the relevant goods, and their distinctiveness is average.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘gea’, which is distinctive in relation to the relevant goods and is the only word of the earlier mark. The signs differ in the verbal element ‘mana’ of the contested sign, which also has a normal degree of distinctiveness, and in the figurative device, which is weak.

Furthermore, although visually the coinciding verbal element ‘gea’ appears below the verbal element ‘mana’, they are both depicted in the same size and type of letters and both are equally perceptible visually.

Taking into account that the only word of the earlier trade mark is reproduced entirely as an independent verbal element in the contested sign and that it has a normal degree of distinctiveness, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘gea’, present identically in both signs. The pronunciation differs in the sound of the letters ‘mana’ of the contested sign, which have no counterparts in the earlier mark.

The coinciding word ‘gea’ will be pronounced and clearly perceived aurally despite its position at the end of the sign and to that extent the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the word ‘mana’ conveys a different concept to the contested sign, both signs will still be associated with the meaning of the word ‘gea’ and to that extent the signs are conceptually similar to an average 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.

According to the opponent, it is the leading Slovenian oil production company with over 110 years of tradition, expertise and excellency in the production and marketing of quality edible oils and fats. However, even assuming that such a statement can be interpreted as a claim of enhanced distinctiveness of the earlier mark, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

The goods are identical. They target the public at large, which displays a lower than average to average degree of attentiveness. The signs are visually, aurally and conceptually similar to an average degree.

The earlier trade mark is composed of one word, which is identically contained in the contested sign as an independent verbal element. Although the contested sign also contains the verbal element ‘mana’, this does not counteract the fact that the only word in the earlier mark is incorporated in the contested sign, where it is clearly visible and perceptible. Moreover, there is a conceptual similarity between the signs on account of the distinctive verbal element ‘GEA’, since consumers will perceive it in both signs and, consequently, will make a link between the signs.

It must be recalled that 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 covered are from the same or economically linked undertakings. Taking into account that the only word of the earlier mark is contained in the contested sign and that the goods are identical, and therefore belong to the same market sector, consumers may think that the owner of the earlier mark has expanded its product line with the contested mark. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Furthermore, the goods are identical, and applying the abovementioned principle of interdependence, a lesser degree of similarity between the signs is offset by the identity between the goods.

Considering all the above, there is a likelihood of confusion on the part of the public. A likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Slovenian trade mark registration No 9 471 402. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Slovenian trade mark registration No 9 471 402 ‘GEA’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.