OPPOSITION Nо B 3 086 074

 

Today's Wholesale Services Limited, 3 Carolina Court Wisconsin Drive, DN4 5RA Doncaster, United Kingdom (opponent), represented by Haseltine Lake Kempner LLP, Redcliff Quay 120 Redcliff Street, BS1 6HU Bristol, 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 24/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 086 074 is upheld for all the contested goods.

2.	European Union trade mark application No 18 027 510 is rejected in its entirety.

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

REASONS

 

On 11/06/2019, the opponent originally filed an opposition against all the goods and services of European Union trade mark application No 18 027 510 (figurative mark). However, after several limitations filed by the applicant and pursuant opposition decision No B 3 085 886 issued on 30/07/2020 – partially rejecting the contested application – the opposition is now directed against all goods in Class 29. The opposition is based on, inter alia, Irish trade mark registration No 245 857 (figurative trade mark). The opponent invoked Article 8(1)(b); 8(4) and 8(5) EUTMR.

  

EARLIER UK RIGHTS

 

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the following trade marks no longer constitutes a valid basis of the opposition:

 United Kingdom trade mark registration No UK00002321136 ‘TODAY'S’ in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR;

 United Kingdom trade mark registration No UK00002565501 in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR;

 United Kingdom trade mark registration No UK00002639355 in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR;

 Non registered word trademark ‘TODAY'S’ used in the course of trade in United Kingdom in relation to which the opponent’s invoked Article 8(4) EUTMR.

The opposition must therefore be rejected as far as it is based on these earlier rights.

 

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 Irish trade mark registration No 245 857.

 

a) The goods and services

 

The services on which the opposition is based are, inter alia, the following:

Class 35: Retail and wholesale services, including via the Internet, mail order, electronic and printed publications, websites or other communication networks, connected with the sale of foodstuffs.

After several limitations filed by the applicant and pursuant opposition decision No B 3 085 886 issued on 30/07/2020 – partially rejecting the contested application – the contested goods are 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; Vegetarian charcuterie; Vegetable pate; Vegetarian sausages; Birds eggs and egg products; Fish, seafood and molluscs, not live; Prepared salads.

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 in Class 29 comprise a broad range of foodstuff which are at least similar to a low degree with the opponent’s retail and wholesale services, including via the internet, mail order, electronic and printed publications, websites or other communication networks, connected with the sale of foodstuffs. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

 

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 and services found to be at least similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

Earlier trade mark	Contested sign

  

The relevant territory is Ireland.

 

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 mark’s verbal element ‘Today’s’ will be perceived by the relevant consumers with the meaning of ‘belonging to this day’. This meaning is not, as such, clearly and directly related to the relevant services and therefore is distinctive to an average degree.

The contested sign’s verbal element ‘to-day’ will be immediately linked to the word ‘today’ despite the hyphen separating the letters ‘to’ and ‘day’. Consequently, this element will be perceived with the meaning of ‘this day’, which is, as such, not clearly and directly related to the relevant goods and therefore is distinctive to an average degree.

In addition, the contested sign’s figurative element resembling a green sun is rather distinctive in relation to the relevant goods. In this regard, however, it must be stressed 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). This principle in particularly applicable in the instant case, as the verbal element is placed in a central and striking position within the sign’s structure.

The earlier mark’s yellow line underlining part of the verbal element is purely decorative and therefore non-distinctive.

The signs under comparison have no dominant (visually outstanding) elements. Finally, the stylisation of the sign’s respective verbal element is rather standard and not particularly distinctive.

 

Visually, the signs coincide in the sequence of letters to*day* whereas they differ in the earlier mark’s final letter and apostrophe ‘’s’ and in the contested sign’s hyphen between the letters ‘to’ and ‘day’. In addition, the earlier mark’s verbal element is portrayed in one line whereas the contested application in two. The signs also differ in their graphical elements and in their stylisation, which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public. Specifically, this stylisation and representation of the letters are not sufficient to obscure or camouflage the common letters in the marks.

Therefore, and taking into account the above principles and assessment on the degree of distinctiveness and relevance of the sign’s element they are visually similar to an average degree.

 

Aurally, the signs coincide in the sound of the letters ‘today*’. The hyphen and space dividing the letters ‘to’ and ‘day’ in the contested sign will not add any aural difference. However, the signs differ in the sound of the final letter ‘s’ of the earlier trade mark.

 

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

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their degree of distinctiveness and relevance. The public in the relevant territory will perceive the contested sign as the English word ‘TODAY’ meaning ‘this day’, and the same word written with a final ‘’s’ in the earlier mark as the possessive form meaning ‘belonging to this day’. As the signs will be associated with a similar concept arising from the nearly coinciding verbal elements, 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.

 

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

 

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive figurative element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case, the goods and services have been found similar to at least a low degree. They target the general consumers that will pay an average degree of attention. The degree of distinctiveness of the earlier mark is also average.

The signs have been found visually similar to an average degree whereas aurally and conceptually similar to a high degree insofar as they coincide in the letters, sounds and concept of ‘today’.

Taking all the above into account, the Opposition Division considers that the above outlined differences between the signs are clearly not sufficient to outweigh the assessed similarities between them.

The goods and services have been found similar to at least a low degree. In this regard, it must be kept in mind that 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). In the present case, the degree of similarity between the signs is clearly sufficient to offset the at least low degree of similarity between the goods and services. Consequently, the relevant public, are likely to think that they come from the same undertaking or from 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).

  

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘TODAY’. In support of its argument the applicant refers to a few trade mark registrations in 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 claims must be set aside.

In addition, the applicant’s argument stating that the Office rejected the European Union trade mark registration No 11 763 001 (which is identical to Irish trade mark registration No 252 470) is irrelevant in the present proceeding as it is noted that likelihood of confusion was found on the basis of a different trademark i.e. Irish trade mark registration No 245 857. Furthermore, it must be stressed that the Court made it clear, in its judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’.

 

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 Irish trade mark registration No 245 857. It follows that the contested trade mark must be rejected for all the contested goods.

  

As the above earlier right 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).

 

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 grounds of the opposition, namely Article 8(4) and (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, 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

 

 

Félix ORTUÑO LÓPEZ

Aldo BLASI

Chiara BORACE

 

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.