OPPOSITION No B 3 085 886

Virmina Trading Limited, 3, Michall Koutsofta, 3031 Limassol, Cyprus (opponent), represented by HGF Limited, 1 City Walk, LS11 9DX Leeds, United Kingdom (professional representative)

a g a i n s t

SC Prefera Foods SA, loc. Oiejdea, DN 1 KM 392+600, Com. Galda de Jos, Jud. Alba, Oiejdea, Romania (applicant), represented by Anișoara Fuciu, Snagov, Bl. P53, Sc.A, Parter, Ap. 1, Ilfov, Romania (professional representative).

On 30/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 886 is partially upheld, namely for the following contested goods:

Class 29: Prepared fruits; Processed fruits, fungi and vegetables (including nuts and pulses); Vegetable fats for food.

Class 30: Sandwiches; Pâtés en croûte; Confectionery ices; Bakery goods; Teas and cocoa and substitutes therefor; Foods with a cocoa base; Cocoa-based beverages.

Class 32: Juices; Fruit juice beverages; Green vegetable juice beverages; Beverages consisting of a blend of fruit and vegetable juices; Smoothies; Soft drinks; Non-alcoholic vegetable juice drinks.

2. European Union trade mark application No 18 027 510 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 027 510 (figurative mark). The opposition is based on, inter alia, international trade mark registration No 923 264  designating Benelux. 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 923 264  designating Benelux.

1. 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; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are, after a limitation, the following:

Class 29: Soups; Vegetable burgers; Processed meat products; Vegetable-based meat substitutes; Prepared meals consisting primarily of meat substitutes; Milk substitutes; Prepared meals consisting principally of vegetables; Prepared vegetable dishes; Prepared fruits; Processed fruits, fungi and vegetables (including nuts and pulses); Vegetarian charcuterie; Vegetable pate; Vegetarian sausages; Vegetable fats for food; Birds eggs and egg products; Fish, seafood and molluscs, not live; Prepared salads.

Class 30: Sandwiches; Pâtés en croûte; Confectionery ices; Bakery goods; Teas and cocoa and substitutes therefor; Foods with a cocoa base; Cocoa-based beverages.

Class 32: Juices; Fruit juice beverages; Green vegetable juice beverages; Beverages consisting of a blend of fruit and vegetable juices; Smoothies; Soft drinks; Non-alcoholic vegetable juice drinks.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 29

The contested prepared fruits; processed fruits, fungi and vegetables (including nuts and pulses) are highly similar to the opponent’s sauces (condiments). They can have the same purpose and coincide in producers, distribution channels and relevant public. Moreover, they are in competition.

The contested vegetable fats for food are similar to the opponent’s sauces (condiments). They coincide in their purpose, method of use, they are in competition and they share the same relevant public.

However, the contested soups; vegetable burgers; processed meat products; vegetable-based meat substitutes; prepared meals consisting primarily of meat substitutes; milk substitutes; prepared meals consisting principally of vegetables; prepared vegetable dishes; vegetarian charcuterie; vegetable pate; vegetarian sausages; birds eggs and egg products; fish, seafood and molluscs, not live; prepared salads are dissimilar to all the opponent’s goods in Class 30. The mere fact that the goods under comparison are all foodstuffs is not sufficient to find them similar. Under the criteria of the comparison, the goods are not similar because they clearly have different natures and methods of use. Moreover, usually these goods have different commercial origins. Furthermore, they are not complementary, in the sense that one is not indispensable for the use of the other, nor are they in competition.

Contested goods in Class 30

Teas, cocoa are identically contained in both lists of goods.

The contested bakery goods are included in the broad category of, or overlap with, the opponent’s preparations made from cereals. Therefore, they are identical.

The contested cocoa-based beverages are included in the broad category of the opponents cocoa. Therefore, they are identical.

The contested confectionery ices are included in the broad category of the opponent’s ices. Therefore, they are identical.

The contested substitutes therefor [teas and cocoa] are highly similar to the opponent’s tea, cocoa. They have the same methods of use, producers, distribution channels and relevant public. Moreover, they are in competition.

The contested sandwiches; pâtés en croute (which are pies in crust) and the opponent’s preparations made from cereals are similar. They have the same nature, producers, distribution channels and relevant public.

The contested foods with a cocoa base are similar to the opponent’s cocoa. They may coincide in their producers, can have the same distribution channels and target the same relevant public.

Contested goods in Class 32

The contested juices; fruit juice beverages; green vegetable juice beverages; beverages consisting of a blend of fruit and vegetable juices; smoothies; soft drinks; non-alcoholic vegetable juice drinks are various types of non-alcoholic beverages based on fruits and vegetables. They are similar to the opponent’s teas in Class 30. They have the same basic purpose (to quench thirst) and may be in competition (consumers may choose between one or the other to fulfill the same need). They can have the same distribution channels, as they are sold in the same outlets or in the same sections of supermarkets. They also target the same relevant public and may be produced by the same undertakings.

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 to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the Benelux public.

The earlier mark is a figurative mark, consisting of the black standard upper case letters ‘TODAY’. It has no meaning for a major part of the relevant French-speaking public and is, therefore, distinctive. For the part of the public that understand this English word, it is also distinctive, as it has no meaning in relation to the goods in question.

The contested sign is a figurative mark consisting of the purple lower case letters and hyphen ‘to-’ and ‘day’ on two lines, all inside a depiction resembling a green sun. The element ‘to-day’ will, by the relevant public, be perceived the same way as the element ‘TODAY’ of the earlier mark and is equally distinctive for the relevant goods. The figurative element of the sun will be perceived as such and does not have any direct meaning in relation to the goods at hand. Therefore, it is also distinctive.

The contested sign has no element that could be considered clearly dominant.

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, the signs coincide in the verbal element ‘TODAY’, even if this verbal element is divided on two lines with a connecting hyphen in the contested sign. It is distinctive. The marks differ in the stylisation of the letters, in the figurative element of the contested sign and in the colours.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive letters ‘TODAY’, present identically in both signs. The split on two lines in the contested sign will not affect the pronunciation of the mark.

Therefore, the signs are aurally identical.

Conceptually, for the part of the public that perceives no meaning in the verbal element ‘TODAY’, they will still perceive the meaning of the figurative element of the sun of the contested sign, as explained above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public that perceives a meaning in the coinciding element ‘TO(-)DAY’, the signs are conceptually highly similar.

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

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).

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.

The goods are partly identical, partly similar to various degrees and partly dissimilar. They are directed at the public at large with an average degree of attention.

The sign are visually similar to an average degree and aurally identical, since they coincide in their only verbal element; ‘TODAY’. Conceptually, the signs are highly similar for a part of the public and not similar for the remaining part. The earlier mark enjoys a normal degree of distinctiveness.

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 its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the verbal element ‘TODAY’ and these marks coexist with the earlier mark. In support of its argument the applicant refers to some trade mark registrations in Romania and 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 filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘TODAY’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, the argument on the coexistence of marks with the same element must also be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 923 264  designating Benelux. Given that a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) 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.

The opponent has also based its opposition on the following earlier trade marks:

• Romanian trade mark registration No 147 182 for the word mark ‘TODAY’, registered for coffee, tea, artificial coffee, coffee-based beverages, tea-based beverages, instant coffee; ground coffee.

• International trade mark registration No 923 264  , designating Germany, Lithuania, Latvia, France and Italy, registered for goods in Class 30.

• Polish trade mark registration No 309 380 for the figurative mark , registered for coffee; artificial coffee; vegetal preparations for use as coffee substitutes; coffee beverages with milk; coffee-based beverages.

• Polish trade mark registration No 309 381 for the figurative mark , registered for coffee, artificial coffee, coffee beverages.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Begoña URIARTE VALIENTE

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.