OPPOSITION No B 3 076 915

Jose María Fuster Hernández, S.A., Avda. Este, s/n, Pol. Ind. Cabezo Beaza, 30100 Espinardo (Murcia), Spain (opponent), represented by Intermark Patentes y Marcas, S.L.P., C/Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative)

a g a i n s t

Bolero Holding GmbH, Clemens-Schultz-Straße 3, 20359 Hamburg, Germany (applicant), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10 a, 80331 München, Germany (professional representative).

On 22/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 915 is partially upheld, namely for the following contested goods:

Class 30: Savory sauces, chutneys and pastes; relish [condiment]; seasoning mixes; seasonings; taco seasoning; sauces [condiments]; relish [condiment]; seasoning mixes; seasoning mixes.

2. European Union trade mark application No 17 978 505 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trademark application No 17 978 505 for the word mark ‘BOLERO’, namely against all the goods in Class 30. The opposition is based on Spanish trade mark registration No 287 314 for the 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.

1. The goods

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

Class 30: Paprika, saffron, yellow condiment, pepper, cinnamon, clove, cumins, aniseed, spices and condiments of all kinds.

The contested goods are the following:

Class 30: Burritos; chalupas; chimichanga; crisps made of cereals; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with spices; empanadas; enchiladas; fajitas; vegetable flavoured corn chips; corn chips; nachos; cereal based savoury snack foods; corn-based savoury snacks; popcorn; quesadillas; cereal-based snack food; snack food products made from maize flour; taco chips; tacos; pasta containing stuffings; tortilla snacks; tortilla chips; tortillas; wholewheat crisps; savory sauces, chutneys and pastes; relish [condiment]; seasoning mixes; seasonings; taco seasoning; sauces [condiments]; relish [condiment]; seasoning mixes; seasoning mixes.

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 relish [condiment]; seasoning mixes (mentioned three times); seasonings; taco seasoning; sauces [condiments]; relish [condiment] are included in or overlap with the opponent’s broader category of spices and condiments of all kinds. Therefore, they are identical.

The contested savory sauces, chutneys and pastes are at least similar to the opponent’s spices and condiments of all kinds as they can share the same producer, relevant public and distribution channels.

However, the rest of the contested goods, namely burritos; chalupas; chimichanga; crisps made of cereals; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with spices; empanadas; enchiladas; fajitas; vegetable flavoured corn chips; corn chips; nachos; cereal based savoury snack foods; corn-based savoury snacks; popcorn; quesadillas; cereal-based snack food; snack food products made from maize flour; taco chips; tacos; pasta containing stuffings; tortilla snacks; tortilla chips; tortillas; wholewheat crisps have no relevant points in common with the opponent’s goods in Class 30. Although all the contested goods are foodstuffs ready for consumption, they have a different nature and purpose from the opponent’s goods, which are, in essence, seasonings, flavourings and condiments. As a consequence, these goods are neither complementary nor in competition with the opponent’s goods and they differ in their relevant distribution channels and usual origin. The fact that some of the opponent’s goods can be ingredients of the contested goods is not, on its own, a reason for finding similarity, since consumers will not think that the same company is responsible for manufacturing those goods (26/10/2011, T-72/10, ‘Naty’s’, EU:T:2011:635, § 35-36). Therefore, these goods are dissimilar.

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 or similar are directed at the public at large that will display an average degree of attention when purchasing them.

3. The signs

	BOLERO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 relevant public as a traditional Spanish dance or piece of music will perceive the common element ‘BOLERO’. As ‘BOLERO’ has no direct meaning in relation to the relevant goods, it is distinctive to an average degree.

The figurative elements consisting of the image of a man with a typically Spanish outfit and a Spanish guitar and the frame in which the man is sitting accompanies the concept brought by the word ‘Bolero’ and are distinctive to an average degree. However, it is worth reminding that, 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier mark has no element that can be clearly considered more dominant (visually eye-catching) than other elements.

For all the above, it can be concluded that at the aural level the signs are identical and since the only difference is established in the figurative elements that are plenty distinctive as described above, the signs are visually and conceptually similar to an average degree.

As the signs have been found similar in all the aspects 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.

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 average.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found to be partly identical, partly similar and partly dissimilar and they are directed at the public at large that will display an average degree of attention when purchasing them.

The earlier mark enjoys an average degree of distinctiveness.

The signs have been found to be identical from the phonetic perspective due to the presence of the word ‘Bolero’ in both signs. From the visual and the conceptual perspective, the signs are similar to an average degree.

Account must be taken of the fact that likelihood of confusion covers situations where the consumer directly confuses the trademarks 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including a likelihood of association) on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Claudia SCHLIE

Vít MAHELKA

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.