OPPOSITION No B 3 077 303

Mona Naturprodukte GmbH, Lehargasse 11, 1060 Wien, Austria (opponent), represented by Stone King LLP, Boundary House 91 Charterhouse Street, London EC1M 6HR, United Kingdom (professional representative)

a g a i n s t

Happy Cheeze GmbH, Präsident-Herwig-Str. 6-8, 27476 Cuxhaven, Germany (applicant), represented by Wilde Beuger Solmecke Partnerschaft mbB, Kaiser-Wilhelm-Ring 27-29, 50672 Köln, Germany (professional representative).

On 19/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 303 is upheld for all the contested goods, namely:

Class 29: Milk, milk products, dairy products and substitutes therefor; milk cream, soya milk [milk substitute], oat milk, almond milk, rice milk, spelt milk, soya cream, oat cream, rice cream; yoghurt; vegan yoghurt; vegan buttermilk; vegan coffee cream; soya yoghurt; coconut milk; non-dairy yoghurts; cream-like products (included in Class 29); drinking yogurts; milk of almonds [beverage]; rice milk (beverages); oat milk (beverage).

Class 30: Ice creams, frozen yogurts and sorbets; non-dairy frozen desserts, ice cream and edible ices; processed grains, starches, and goods made thereof.

2. European Union trade mark application No 17 959 800 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 959 800 ‘Happy Cashew’ (word mark), namely against some of the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 10 607 811 (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.

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 European Union trade mark registration No 10 607 811.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 29: Meat substitutes based on rice, tofu, spiced variations of tofu, rice spreads, rice drinks, fermented rice milk products, including rice yoghurts and rice yoghurt drinks, rice whey drinks, substitutes for dairy products based on rice in the form of liquids, pastes and powders, included in this class; preserved and cooked vegetables; non-alcoholic rice drinks; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing.

Class 30: Coffee, cocoa, and chocolate based beverages; beverages with a cereal base, including oat milk and rice milk; rice desserts; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing.

The contested goods are the following:

Class 29: Milk, milk products, dairy products and substitutes therefor; milk cream, soya milk [milk substitute], oat milk, almond milk, rice milk, spelt milk, soya cream, oat cream, rice cream; yoghurt; vegan yoghurt; vegan buttermilk; vegan coffee cream; soya yoghurt; coconut milk; non-dairy yoghurts; cream-like products (included in Class 29); drinking yogurts; milk of almonds [beverage]; rice milk (beverages); oat milk (beverage).

Class 30: Ice creams, frozen yogurts and sorbets; non-dairy frozen desserts, ice cream and edible ices; processed grains, starches, and goods made thereof.

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 29

The contested rice milk, rice cream; rice milk (beverages) are included in the broad category of, or overlap with, the opponent’s substitutes for dairy products based on rice in the form of liquids, pastes and powders, included in this class; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing. Therefore, they are identical.

The contested milk, milk products, dairy products and substitutes therefor; milk cream, soya milk [milk substitute], oat milk, almond milk, spelt milk, soya cream, oat cream; yoghurt; vegan yoghurt; vegan buttermilk; vegan coffee cream; soya yoghurt; coconut milk; non-dairy yoghurts; cream-like products (included in Class 29); drinking yogurts; milk of almonds [beverage]; oat milk (beverage) are at least similar to a high degree to the opponent’s substitutes for dairy products based on rice in the form of liquids, pastes and powders, included in this class; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing, as they share, at least, the same producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

Contested goods in Class 30

The contested ice creams, frozen yogurts and sorbets; non-dairy frozen desserts, ice cream and edible ices are similar to a high degree to the opponent’s substitutes for dairy products based on rice in the form of liquids, pastes and powders, included in this class; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing in Class 29, as they share, at least, the same purpose, producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested goods made thereof [processed grains, starches] are at least similar to the opponent’s rice desserts; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested processed grains, starches are at least similar to a low degree to the opponent’s rice desserts; all the aforesaid goods being limited to plant-based milk substitute products for adult consumption and for wholesaling and retailing, as they usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

b) 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. Contrary to the applicant’s argument, the degree of attention is considered to be average. The Opposition Division points out that although some of the relevant goods are vegan foodstuffs, it is not reasonable to assume that every consumer of these goods will pay a higher degree of attention when purchasing them simply because they are vegan, since these goods are purchased very often, even on a daily basis, and cannot be classified as expensive. Therefore, the applicant’s argument in this regard must be set aside.

c) The signs

	Happy Cashew
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 signs’ verbal elements have a meaning in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The common verbal element ‘Happy’ indicates, inter alia, ‘[f]eeling or showing pleasure or contentment’ (information extracted from Lexico English Dictionary on 08/01/2021 at https://www.lexico.com/definition/happy).

Consequently, the verbal element ‘Happy’ will be associated by the relevant public with the pleasure to be derived from consuming the goods at issue. Therefore, this element is weak for these goods.

The earlier mark’s verbal element ‘Rice’ refers to, inter alia, ‘[a] swamp grass which is widely cultivated as a source of food, especially in Asia; [t]he grains of rice used as food’ (information extracted from Lexico English Dictionary on 08/01/2021 at https://www.lexico.com/definition/rice). Therefore, it is a non-distinctive element since it indicates the main ingredient of the relevant goods.

The contested sign’s element ‘Cashew’ refers to ‘[a]n edible kidney-shaped nut, rich in oil and protein, which is roasted and shelled before it can be eaten’ (information extracted from Lexico English Dictionary on 08/01/2021 at https://www.lexico.com/definition/cashew). Bearing in mind that the relevant goods are foodstuffs, this element is non-distinctive for a part of these goods, such as for vegan yoghurt or vegan buttermilk in Class 29 and non-dairy frozen desserts, ice cream and edible ices in Class 30, since it indicates the product of which these goods may be made. This element is at most weak for the other part of the goods, such as milk products or drinking yogurt in Class 29 and ice creams in Class 30, since it might be perceived by the relevant public as an ingredient or the flavour of these goods.

The stylisation of the verbal elements in the earlier mark will merely be perceived as a graphical means of bringing the verbal elements to the attention of the public. Therefore, its impact on the comparison of the signs will also be limited.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the coinciding element is at the beginning of the signs is relevant for the comparison.

Neither sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters of the first element ‘HAPPY’ of both signs and in the letter ‘*E*’ of their second element. However, they differ in the position of the abovementioned letter ‘E’ and in the remaining letters of the second element of the signs, ‘RIC*’ of the earlier mark versus ‘CASH*W’ of the contested sign. The signs also differ in the earlier mark’s arrangement of the elements on two levels and its slightly stylised typeface.

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

Aurally, the pronunciation of the signs coincides in the syllables ‘HA-(P)PY’, present identically at the beginning of both signs. The pronunciation differs in the syllables ‘RICE’ of the earlier mark and ‘CA-SHEW’ of the contested sign.

Therefore, 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. As the signs coincide in the concept associated with the first element ‘Happy’, the signs are conceptually similar to an average degree. Both the earlier mark and the contested sign have additional concepts, which are, however, non-distinctive or at most weak, and will, therefore, have a very limited impact on the conceptual comparison.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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. Considering what has been stated above in section c) of this decision and contrary to the opponent’s arguments, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to varying degrees to the opponent’s goods. They target the general public whose degree of attention is average.

The earlier mark’s degree of inherent distinctiveness as a whole is low.

Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 63; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

The signs are visually, aurally and conceptually similar to an average degree on account of the coincidence in the element ‘Happy’. Although this is a weak element, it is at the beginning of the signs, which is the part of the marks where people first focus their attention. Moreover, the earlier mark’s additional typeface and arrangement will have less impact than the verbal elements in the general impression of the signs.

In principle, a coincidence in an element with a low degree of distinctiveness will not on its own lead to likelihood of confusion, although there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or have an insignificant visual impact and the overall impressions created by the marks are similar. This applies in this case since the weak element ‘Happy’ is followed by the non-distinctive elements ‘Rice’ in the earlier mark and ‘Cashew’ in the contested sign, the latter being either non-distinctive or weak for the contested goods.

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. 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). In the present case, since the differences between the signs basically lie in their non-distinctive or weak verbal elements placed at the end of the marks, consumers may reasonably assume that the signs at stake identify different, but related, lines of goods.

In its observations, the applicant argued that the registration of different terms in combination with the word ‘happy’ cannot generate protection for all combinations of the word ‘happy’ and that there is already a tremendous number of trade marks in the food sector which contain the word ‘happy’. In support of its argument, the applicant refers to some trade mark registrations in the European Union.

However, the Opposition Division firstly notes that, it is a right of a trade mark proprietor to oppose registration of those trade mark applications which could clash with such earlier rights. Secondly, likelihood of confusion is assessed by analysing all the relevant factors which 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. In the present case, the conclusion of the existence of likelihood of confusion between the signs has been reached because the coinciding element, despite its low degree of distinctiveness, is at the beginning of the marks, and the remaining elements of the signs are of equal or lower distinctiveness as explained above.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 well founded on the basis of the opponent’s European Union trade mark registration No 10 607 811. It follows that the contested trade mark must be rejected for all the contested goods.

The opposition is also successful insofar as the goods that are similar to a low degree are concerned, since the significant coincidences between the signs are enough to outweigh the low degree of similarity of those goods.

As the earlier European Union trade mark registration No 10 607 811 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 rights 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, it 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.

The Opposition Division

Marzena MACIAK

Victoria DAFAUCE MENÉNDEZ

Chantal VAN RIEL

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.