OPPOSITION No B 3 078 564

CAY Isletmeleri Genel Mudurlugu, Muftu Mah. Menderes Bulvari No:272 Merkez, Rize, Turkey (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Ömer Polat, Veringstr.1, 21107 Hamburg, Germany (applicant), represented by Slopek Vonau Rechtsanwälte, Zippelhaus 6, 20457 Hamburg, Germany (professional representative).

On 22/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 564 is upheld for all the contested goods.

2. European Union trade mark application No 18 002 803 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods (Class 29) of European Union trade mark application No 18 002 803 . The opposition is based on, inter alia, international trade mark registration No 1 304 948 designating Benelux, Croatia and Ireland 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.

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 international trade mark registration No 1 304 948 designating Benelux, Croatia and Ireland.

1. The goods

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

Class 30: Coffee; cocoa; coffee or cocoa based beverages; chocolate based beverages; pasta; stuffed dumplings; noodles; pastries and bakery products based on flour; desserts; honey; bee glue for human consumption; propolis for food purposes; condiments for foodstuff; yeast; baking powder; flour; semolina; starch for food; sugar; cube sugar; powdered sugar; tea, ice tea; confectionery; chocolate; biscuits; crackers; wafers; chewing gums; salt; cereal-based products; molasses for food.

Class 32: Beers; preparations for making beer; mineral water; spring water; table water; soda water; fruit and vegetable juices; fruit and vegetable concentrates and extracts for making beverages; non-alcoholic soft drinks.

The contested goods, after the limitation filed on 18/04/2019, are the following:

Class 29: Yoghurt; drinking yogurts; yoghurt made from goats milk; drinks based on yogurt; custard style yoghurts; fruit flavoured yoghurts; yogurt drinks; drinks based on yogurt; drinks based on yogurt.

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 goods are either yogurt or yogurt based drinks, which fall under the general term ‘milk products’ or ‘dairy products’ which is defined as products made with milk. Consequently all contested goods are similar to the opponent’s cocoa in Class 30 as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

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 similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux, Ireland and Croatia.

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 figurative mark is composed of three verbal elements in standard typeface without any further figurative devices or stylization. The first one, ‘Didi’, might be perceived as a short form of the French name Didier in part of the relevant territory (Benelux) or without any meaning in the relevant territories and is, therefore, either way, distinctive. Furthermore, there is a disclaimer regarding the other two verbal elements, ‘Soğuk Çay’. This means that, contrary to the applicant’s view, the opponent is prevented from successfully invoking rights in the disclaimed element. Therefore, similarity between two signs cannot be induced or increased because of a coincidence or similarity in the disclaimed element (06/10/2008, R 21/2008‑4, AUTENTICO JABUGO / FLOR SIERRA DE JABUGO JABUGO (FIG.) et al., § 17). Consequently, the scope of protection is reduced to the element ‘Didi’ and the disclaimed element will not be taken into consideration in the comparison. Furthermore, although it is a figurative sign, the verbal elements are depicted in standard characters and are easily legible.

The contested sign is composed of two verbal elements, namely ‘di’, ‘di’, in white letters on a blue rectangular background. The figurative blue rectangle will be perceived by the consumers as a mere decorative element, and not as an element indicating the commercial origin of the goods. It is, therefore, non-distinctive.

The verbal elements ‘di di’, although written almost one under the other, might be either perceived in part of the relevant territory (Benelux) as a short name for Didier or have no meaning. Either way, these verbal elements are distinctive. There is no dominant element, as the blue background is merely decorative.

Visually and aurally, the signs coincide in ‘di di’, written either as one or two words, which is the distinctive element in both signs. However, they differ in the stylisation of the letters, colours and the blue rectangle, which as explained above, serve rather decorative purposes and will barely be attributed any trade mark significance. Aurally, the pronunciation of the signs coincides in ‘di di’, which means it is not possible to differentiate whether it is written as one or two words.

On the basis of the above, the Opposition Division considers the signs to be visually and aurally similar to a high degree.

Conceptually, the signs might either be perceived as a short name for Didier in part of the relevant territory, in which case they are conceptually identical or have no meaning for the public in the relevant territory. In the last scenario, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

5. Global assessment, other arguments and conclusion

The assessment of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association which can be made with the used or registered sign, and on the degree of similarity between the trade mark and the sign and between the goods or services identified. The likelihood of confusion must therefore be appreciated globally, taking into account all the relevant factors of the case.

Furthermore, 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 components.

The goods were found to be similar. The earlier mark has a normal degree of distinctiveness and the degree of attention of the relevant public is also average.

Due to the disclaimer of ‘Soğuk Çay’ in the earlier mark, the only distinctive element is ‘Didi’, which is completely included in the contested sign, although divided into two words. After analysing each of the elements of the contested sign, it is indisputable that the distinctive element is ‘di di’. Therefore, the verbal elements of the signs are visually and aurally highly similar. Depending on whether the relevant public perceives the signs ‘Didi’ and ‘didi’ as a short name in part of the territory, they are conceptually identical, and if not, the conceptual comparison does not influence the assessment of similarity.

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.

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). The differences between the signs are confined to decorative elements which do not outweigh the similarities between the signs.

For the sake of completeness, it is to be pointed out that the opponent filed their last submission on 24/04/2020. Nevertheless, according to the Office’s communication dated 05/02/2020 the observations in reply to the applicant’s submission dated 28/01/2020 should have been filed the latest on the 10/04/2020. Consequently, the Opposition Division did not take into account this late submission, which in any event would not have changed the outcome of the present decision.

The opposition is well founded on the basis of the opponent’s international trade mark registration No 1 304 948 designating Benelux, Ireland and Croatia. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right international trade mark registration No 1 304 948 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

Konstantinos MITROU

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

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.