OPPOSITION No B 3 081 090

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm, Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Aphria Germany GmbH, Sternstraße 97, 20357 Hamburg, Germany (applicant), represented by Brook Rechtsanwälte Rechel Aghamiri Burkart Burke & Ziehm Partnerschaft mbB, Am Sandtorkai 75m, 20457 Hamburg, Germany (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 090 is upheld for all the contested goods.

2. European Union trade mark application No 18 011 212 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 of European Union trade mark application No 18 011 212 for the word mark ‘CannaCrunch’. The opposition is based on, inter alia, international trade mark registration No 572 691 designating Austria, Benelux, Bulgaria, Croatia, Czech Republic, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovenia and Spain for the word mark ‘CRUNCH’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 572 691 designating, inter alia, Lithuania, in view of the fact that in that territory the marks are meaningless and the scope of protection of the goods is the broadest.

a) The goods

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

Class 30: Coffee and coffee extracts, artificial coffee and artificial coffee extracts, mixtures of coffee and chicory; tea and tea extracts; chocolate and chocolate preparations, cocoa and cocoa-based preparations; confectionery, chocolate products; sugar; sugar confectionery, sweets, caramels, chewing gum; flours, food preparations made with cereals, bread, biscuits, cakes, pastries; edible ice sorbets, products for making edible ices and sorbets, frozen cakes; honey and honey substitutes, desserts, puddings.

The contested goods are the following:

Class 30: Granola bars; cereal based food bars; ice cream stick bars; bars based on wheat; chocolate-coated bars; cereal products in bar form; confectionery; sugarless sweets; sugar candy [for food]; non-medicated confectionery products; sweetmeats [candy] being flavoured with fruit; sweets (non-medicated -) being honey based; sweets (non-medicated -) containing herbal flavourings; panned sweets (non-medicated -); sweets (non-medicated -) being alcohol based; sweets (non-medicated -) in compressed form; sweets (non-medicated -) in the nature of caramels; sweets (non-medicated -) in the nature of chocolate eclairs; chewing sweets (non-medicated -) having liquid fruit fillings; sweets (non-medicated -) in the nature of sugar confectionery; bakery goods; pastries; chocolate fillings for bakery products; frozen pastries; preparations for making bakery products; high-protein cereal bars; taco chips; pita chips; flour based chips; grain-based chips; crisps made of cereals; muesli; muesli bars; cereal bars and energy bars; snacks manufactured from muesli; muesli consisting predominantly of cereals; crackers; snack food products made from potato flour; iced tea; ice cream; cones for ice cream; ice milk [ice cream]; iced coffee; iced cakes; ice confectionery; powders for making ice cream; ice-cream cakes; chocolate; chocolate topping; chocolate eggs; chocolate biscuits; chocolate creams; chocolate pastes; chocolate cakes; chocolate powder; candy bars; chocolate pastries; chocolate-based beverages; chocolate coffee; filled chocolate bars; chocolate-based spreads; dairy-free chocolate; chocolate caramel wafers; filled chocolate; hot chocolate; chocolate spreads for use on bread; chocolate based products; chocolate spreads; chocolate desserts; chocolate-coated nuts; chocolate coated fruits; drinks flavoured with chocolate; non-medicated chocolate; chocolate for toppings.

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 sugarless sweets; sweetmeats [candy] being flavoured with fruit; sweets (Non-medicated -) being honey based; sweets (Non-medicated -) containing herbal flavourings; sweets (Non-medicated -) being alcohol based; sweets (Non-medicated -) in compressed form; sweets (Non-medicated -) in the nature of caramels; sweets (Non-medicated -) in the nature of chocolate eclairs; chewing sweets (Non-medicated -) having liquid fruit fillings; sweets (Non-medicated -) in the nature of sugar confectionery; panned sweets (Non-medicated -) are included in the broad category of the earlier sweets. Therefore, they are identical.

The contested chocolate spreads; chocolate based products; chocolate spreads for use on bread; chocolate-based spreads; chocolate fillings for bakery products; chocolate topping; chocolate creams; chocolate powder; filled chocolate; drinks flavoured with chocolate; chocolate-based beverages; hot chocolate; chocolate desserts; chocolate-coated nuts; chocolate coated fruits; non-medicated chocolate; chocolate for toppings; chocolate pastes; filled chocolate bars; chocolate caramel wafers; dairy-free chocolate; chocolate-coated bars; chocolate eggs are included in the broad category of the earlier chocolate products. Therefore, they are identical.

The contested iced tea is included in the broad category of the earlier tea. Therefore, they are identical.

The contested cereal bars and energy bars are included, or overlap with, the earlier food preparations made with cereals. Therefore, they are identical.

The contested sugar candy [for food] are included in the broad category of the earlier sugar. Therefore, they are identical.

The contested flour based chips; muesli; muesli consisting predominantly of cereals; taco chips; pita chips; grain-based chips; crisps made of cereals; snacks manufactured from muesli; cereal based food bars; bars based on wheat; cereal products in bar form; high-protein cereal bars; muesli bars; crackers are included in the broad category of the earlier food preparations made with cereals. Therefore, they are identical.

The contested iced coffee; chocolate coffee are included in the broad category of the earlier coffee. Therefore, they are identical.

The contested ice confectionery; non-medicated confectionery products; candy bars are included in the broad category of the earlier confectionery. Therefore, they are identical.

The contested granola bars overlap with the earlier confectionery. Therefore, they are identical.

The contested iced cakes; chocolate cakes; ice-cream cakes are included in the broad category of the earlier cakes. Therefore, they are identical.

The contested bakery goods include as a broader category the earlier bread. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested chocolate biscuits are included in the broad category of the earlier biscuits. Therefore, they are identical.

The contested powders for making ice cream are included in the broad category of the earlier products for making edible ices and sorbets. Therefore, they are identical.

The contested frozen pastries; chocolate pastries are included in the broad category of the earlier pastries. Therefore, they are identical.

Confectionery; chocolate; pastries are identically contained in both lists of goods (including synonyms).

The contested cones for ice cream overlap with the earlier pastries. Therefore, they are identical.

The contested preparations for making bakery products are similar to a high degree to the earlier cakes because they coincide in distribution channels, end user and producer. Furthermore, these goods are in competition.

The contested snack food products made from potato flour are similar to a high degree to the earlier food preparations made with cereals because they have the same purpose, they are in competition and they coincide in distribution channels, end user and producer.

The contested ice cream stick bars; ice cream; ice milk [ice cream] are similar to a high degree to the earlier edible ice sorbets because they coincide in purpose, distribution channels, end user and producer. 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 a high degree are directed at the public at large.

The degree of attention is considered to be vary from low to average since some of them, such as snack food products made from potato flour or bakery goods are cheap goods for daily consumption.

c) The signs

CRUNCH	CannaCrunch
Earlier trade mark	Contested sign

The relevant territory is Lithuania.

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).

Both signs are word signs. None of their elements possesses any meaning, so that they can be considered normally distinctive.

A word mark is a mark consisting exclusively of words or letters, numerals, other standard typographic characters or a combination thereof, represented in standard script and layout, without any graphic feature or colour (Article 3(3)(a) EUTMIR).

The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters.

Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration.

The perception of the relevant public, who will not fail to notice the use of irregular capitalisation, also cannot be disregarded.

Irregular capitalisation may have an impact on how the public perceives the sign, and

consequently, on the assessment of similarity.

Hence, the use of irregular capitalisation may justify breaking down a single word into components, which may result in a relevant overlap with the conflicting mark.

In the present case, while the earlier mark consists of the letters ‘CRUNCH’, reproduced in capital letters, the contested sign ‘CannaCrunch’ displays an irregular capitalisation, since there is a second capital letter placed in the middle of it, namely the letter ‘C’, that renders the sign as composed by two recognisable word element, namely ‘Canna’ and ‘Crunch’, As already pointed out, these element are nevertheless meaningless in Lithuanian, since they cannot be considered basic English terms.

Visually and aurally, the signs coincide in the six letters ‘Crunch’. However, they differ in the first five letters ‘Canna’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are visually and aurally similar to, at least, an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods covered by the trade marks in dispute have been found partly identical and partly similar to a high degree. They are directed at the public at large; the degree of attention is expected to be average.

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).

As regards the signs, which are all meaningless for the part of the relevant public taken into account, they are visually and aurally similar to, at least, an average degree. In fact, the earlier mark ‘CRUNCH’ is identically contained in the contested sign ‘CannaCrunch’.

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).

In the present case the goods, as already mentioned, have been found partly identical and partly similar to a high degree. The word ‘CRUNCH’ possesses an independent distinctive role within the contested sign ‘CannaCrunch’.

Considering all the above, there is a likelihood of confusion at least, but not necessarily only, on the Lithuanian-speaking part of the public. A likelihood of confusion for only part of the relevant public is sufficient to reject the contested application. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 572 691. It follows that the contested sign must be rejected for all the contested goods.

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 international trade mark registration No 572 691 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).

Also, 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(5) 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, 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 (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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PEREZ BARBER

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.