OPPOSITION Nо B 3 078 526

Granarolo S.P.A., Via Cadriano 27/2, 40127 Bologna, Italy (opponent), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative)

a g a i n s t

Galoha Trading GmbH, Karl-Hammerschmidt-Str. 36, 85609 Dornach, Germany (applicant), represented by Thomas Kurt Albert Verscht, Josephsburgstr. 88A, 81673 München, Germany (professional representative).

On 21/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 526 is upheld for all the contested services, namely:

Class 35: Retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to dietetic preparations and nutritional supplements, food for babies; retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to foodstuffs, agricultural, products, fruits, vegetables; retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to non-alcoholic drinks, preparation for making beverages.

2. European Union trade mark application No 17 961 319 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

On 18/03/2019, the opponent filed an opposition against some of the services of European Union trade mark application No 17 961 319 (figurative mark), namely against some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 15 508 674 (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 15 508 674.

a) The goods and services

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

Class 5: Dietetic food and substances adapted for medical use, food for babies; powdered milk for babies; lacteal flour for babies; food supplements for humans; nutritional supplements.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Retailing of foodstuffs, pasta, dairy products and substitutes therefor, eggs and egg-based products, edible oils and fats, processed fruits, mushrooms and vegetables, including peanuts and legumes; retailing of ready meals, soups, snack food and cakes, yoghurt, milk and milk products, edible ices, frozen yoghurt, desserts based on yoghurt, milk, ice cream, frozen yoghurt, fruit and vegetables.

The contested services are the following:

Class 35: Retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to dietetic preparations and nutritional supplements, food for babies; retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to foodstuffs, agricultural products, fruits, vegetables,; retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to non-alcoholic drinks, preparation for making beverages.

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.

The contested on-line trading services, mail order sale services, e-commerce, teleshopping and home shopping services are various kind of sale services, relating to various goods, that may refer both to retail services and wholesale services.

Therefore, the contested retail services, on-line trading services, mail order sale services, e-commerce, teleshopping and home shopping in relation to foodstuffs, agricultural products, fruits, vegetables are identical to the opponent’s retailing of foodstuffs, fruits and vegetables.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services.

Therefore, the contested retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to dietetic preparations and nutritional supplements, food for babies are similar to the opponent’s dietetic substances adapted for medical use; nutritional supplements; food for babies in Class 5.

By analogy, the contested retail services, on-line trading services, mail order sale services, wholesaling services, e-commerce, teleshopping and home shopping in relation to non-alcoholic drinks, preparation for making beverages are similar to the opponent’s other non-alcoholic beverages; other preparations for making beverages in Class 32.

Although wholesale services and retail services target different publics, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase these goods. Furthermore, the subject of these services (the goods themselves) is the same, and the public may take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

Therefore, the contested wholesaling services in relation to foodstuffs, agricultural, products, fruits, vegetables are similar to the opponent’s retailing of foodstuffs, fruits and vegetables.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to relatively high, depending on the specialised nature of some of the goods and services purchased.

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Therefore, the public’s degree of attention is expected to be relatively high in relation to dietetic substances adapted for medical use, nutritional supplements and the various related sales services.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is 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 letter ‘g’ present in both signs will be perceived by the relevant public as a letter of the alphabet. This letter has no meaning in relation to the relevant products and services and, therefore, is considered distinctive. This is contrary to the applicant’s arguments about this letter’s allegedly low degree of distinctive character, in support of which the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter ‘g’.

Moreover, if it cannot be established that a given letter is devoid of any distinctive character for the goods and/or services concerned, then it should be accepted, even if represented in standard characters or in a fairly basic manner. For example, the letter was accepted for transport; packaging and storage of goods; travel arrangement in Class 39 and services for providing food and drink; temporary accommodation in Class 43 (30/09/2010, R 1008/2010‑2, W (fig.), § 12-21). Under these circumstances, the applicant’s argument must be set aside.

The earlier mark’s verbal element ‘GRANAROLO’ is meaningless and distinctive for at least part of the public in the European Union, such as the Italian-, Lithuanian- and Spanish-speaking consumers.

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 Opposition Division will therefore focus its assessment on the Italian-, Lithuanian- and Spanish-speaking consumers.

The earlier mark’s remaining elements, namely the horizontal lines and the rectangular device to the left of the letter ‘g’, are of a purely decorative nature and have only a secondary impact in the sign’s overall impression. The same applies to the circle in the contested sign.

The earlier mark has no element that could be considered clearly more dominant than other elements. The Opposition Division does not agree with the applicant that the verbal element ‘GRANAROLO’ is visually the dominant element. The stylisation, size and position of the letter ‘g’ make it clearly visible within the earlier mark.

Visually, the signs coincide in the letter ‘g’, which is the contested sign’s sole verbal element and a clearly perceptible and autonomous element in the earlier mark. Furthermore, the common letter ‘g’ is depicted in a similar typeface in both signs, namely a bold black lower-case typeface with curved and rounded lines. The signs differ in the word ‘GRANAROLO’, present on the second line of the earlier mark, and in their figurative elements, which play only a secondary role. As the contested sign’s sole element is included as an independent element in the earlier mark, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‛g’, which is the contested sign’s sole verbal element. The pronunciation differs in the sounds of the earlier mark’s word ‘GRANAROLO’, which has no counterpart in the contested sign. Therefore, the signs are aurally similar to a low degree.

Conceptually, as explained above, the common element will be perceived as the letter ‘g’, which is a letter of the alphabet, whereas the earlier mark’s verbal element ‘GRANAROLO’ is meaningless, and the signs’ figurative elements are purely decorative and contribute no particular meaning. Therefore, 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, 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 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.

e) Global assessment, other arguments and conclusion

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 and services are partly identical and partly similar. They target the general public and professionals whose degree of attention will vary from average to relatively high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually and conceptually similar to an average degree and aurally similar to a low degree due to their common and distinctive element ‘g’. This element is the contested sign’s sole verbal element and is depicted in a similar way at the beginning of the earlier mark, to which consumers usually pay more attention. The earlier mark’s other verbal element, although significantly longer, is meaningless and therefore is not likely to be remembered.

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 this case, the contested sign may be perceived as a shorter version of the earlier mark, as it consists mainly of the letter ‘g’, depicted in a similar way in both signs.

Considering all the above, there is a likelihood of confusion on the part of the Italian-, Lithuanian- and Spanish-speaking parts 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 registration No 15 508 674. It follows that the contested trade mark must be rejected for all the contested services.

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 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 right No 15 508 674 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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

Manuela RUSEVA

Meglena BENOVA

Biruté SATAITE-GONZALEZ

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.