OPPOSITION No B 3 086 608

The Belgian Chocolate Group NV in ‘t kort BCG, Geelseweg 72, 2250 Olen, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 3, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Richard Zagdoun, 24 rue Juliette Lamber, Paris, France (applicant).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 608 is upheld for all the contested goods, namely

Class 30: Honey; natural honey; candies (non-medicated -) with honey; honey substitutes; natural ripe honey; sugar, honey, treacle; honey; candies (non-medicated -) with honey; truffle honey; biological honey for human consumption; herbal honey; orange based confectionery.

2. European Union trade mark application No 17 973 618 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 17 973 618 , namely against all the goods in Class 30. The opposition is based on European Union trade mark registration No 1 771 708 ‘PERLE D’OR’. The opponent invoked Article 8(1)(a) and (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.

a) The goods

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

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices, chocolate, chocolate products, biscuits; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces; spices; ice.

The contested goods are the following:

Class 30: Honey; natural honey; candies (non-medicated -) with honey; honey substitutes; natural ripe honey; sugar, honey, treacle; honey; candies (non-medicated -) with honey; truffle honey; biological honey for human consumption; herbal honey; orange based confectionery.

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 sugar, treacle are identically contained in the opponent’s list of goods.

The contested honey; natural honey; natural ripe honey; honey, honey; truffle honey; biological honey for human consumption; herbal honey are identical to the opponent’s honey, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested candies (non-medicated -) with honey; candies (non-medicated -) with honey; orange based confectionery are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested honey substitutes are similar to a high degree to the opponent’s honey as they usually coincide in producer, relevant public, distribution channels and method of use. 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 highly similar are directed at the public at large. The degree of attention is considered average.

c) The signs

PERLE D’OR
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 elements ‘PERLE D’OR’ of both signs are French words and mean golden pearl. They will be understood as such by the French-speaking part of the public and by the part of the public with similar equivalent words in their languages, such as the Italian- (perla d’oro) or Spanish-speaking public (perla de oro). As they have no direct connection with the relevant goods, these elements are distinctive. Moreover, for the part of the public for which the elements ‘PERLE D’OR’ have no meaning they are distinctive as well.

The verbal element ‘La’ of the contested sign will be understood as the singular female definite article in French and in other languages such as Italian and Spanish. It will be perceived as fulfilling the purpose of introducing the following word ‘Perle’ and not as an indicator of origin. This element is, therefore, of limited distinctiveness for the part of the public that understand that meaning. For the remaining part of the public for which this element has no meaning at all or has no meaning in relation to the relevant goods, it is distinctive.

The figurative element of a fruit with leaves in the contested sign is weak since it indicates that the relevant goods may be fruit flavoured or include fruit in their composition.

The figurative element of a black background in the contested sign is non-distinctive as it is a simple geometrical shape of a purely decorative nature.

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

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually and aurally, the signs coincide in the letters and sounds of ‘PERLE D’OR’. However, they differ in the letters and sounds of ‘LA’ of the contested sign. The signs also visually differ in the colours, typeface and the figurative elements of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which the elements ‘PERLE D’OR’ have a meaning, the signs are conceptually similar to a very high degree. For the remaining part of the public, since one of the signs will not be associated with any meaning while the other conveys the concept of the weak figurative element of a fruit with leaves, the signs are not conceptually similar.

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. 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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are partly identical and partly similar to a high degree to the opponent’s goods. The relevant public is the public at large and the degree of attention is average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually and aurally similar to a high degree, whereas they are conceptually similar to a very high degree for a part of the relevant public and not conceptually similar for the remaining part of the public due to an element of weak distinctive character.

Account is taken of 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).

Moreover, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In the present case, the reproduction of the only verbal element of the earlier mark in the contested sign, regardless of the element ‘LA’, added at the beginning of the sign, the colours, typeface and figurative elements of the contested sign, may lead the public to perceive the sign as denoting a new line of the earlier goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 771 708. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

Matthias KLOPFER

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.