OPPOSITION Nо B 3 086 560

Bjorg Bonneterre et Compagnie, Société par Actions Simplifiée, 217 Chemin du Grand Revoyet, 69230 Saint Genis Laval, France (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)

a g a i n s t

Atul Garg and Rohit Garg, 679-l Model Town, 132103 Panipat, India (applicant), represented by Ing. C. Corradini & C. S.R.L., Piazza Luigi Di Savoia, 24, 20124 Milano, Italy (professional representative).

On 14/09/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 086 560 is upheld for all the contested goods.

2.	European Union trade mark application No 18 029 124 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 18 029 124  (figurative mark). The opposition is based on, inter alia, French trade mark registration No 4 434 068 ‘TANOSHI’ (word 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 French trade mark registration No 4 434 068.

a) The goods

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

Class 30: Rice.

The contested goods are the following:

Class 30: Rice.

The contested rice is identically contained in the opponent’s list of goods. Therefore, they are identical.

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 are directed at the public at large.

Taking into account that the goods in question are mass consumption goods that are inexpensive and rather frequently consumed and do not require any specific instructions on the safety of the products, the degree of attention of the relevant public is considered somewhat below normal or at most average (see to this effect 30/11/2016, R 499/2016-2, BOOM CHOCOLATTA! / BUMM, § 24 and the case-law cited).

c) The signs

TANOSHI
Earlier trade mark	Contested sign

 

The relevant territory is France.

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 verbal element 'TANOUSH' of the contested sign is meaningless for the relevant public and therefore, distinctive for the goods at issue. The stylisation of the verbal element of the contested sign, despite being somewhat unusual and original, is of essentially decorative nature and will also have lesser impact on the consumers’ perception of the mark and will not in any case obscure or camouflage the verbal components of the sign.

The earlier mark’s sole verbal element ‘TANOSHI’ also has no meaning for the public in the relevant territory. Therefore, it is distinctive for the relevant goods.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the string of letters ‘TANO’ at the beginning and also the letters ‘SH’ in fifth and sixth position in the earlier sign and in sixth and seventh in the contested one. They differ in the letter ‘U’ in fifth position in the contested mark and the last letter ‘I’ of the earlier one, as well as in the stylisation of the verbal element in the contested sign. Contrary to the applicant’s assertions and as mentioned above, this stylisation does not prevent consumers from straightforwardly perceiving the verbal element represented. Therefore, it is not particularly relevant for the visual comparison.

Therefore, since most of the letters of the signs coincide, including four at the beginning which have more impact on consumers for the reasons explained above, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘TAN**SH*’ present in both signs. The pronunciation differs in the sound of the letters ‘OU’/’O’ in the middle of the signs, and the letter ‘I’ at the end of the earlier mark.

Therefore, the signs are aurally similar to a low 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.

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.

e) Global assessment, other arguments and conclusion

 

The goods are identical. They target the general public, which will pay at most an average degree of attention. The signs under comparison have been found visually similar to a high degree and aurally similar to a low degree. Conceptually, as neither of the signs has a meaning, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, where the signs are composed of fanciful elements of similar length, it is likely that the minor visual differences in the signs’ middle or ending do not enable consumers to clearly differentiate between them. This especially taking into account that the relevant goods are usually arranged on shelves in self-service areas in supermarkets so that consumers are guided more by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

Taking all the above into account, the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods, are likely to think that they come from the same undertaking or from economically linked undertakings.

The applicant also refers to some previous decisions of the Office to support its arguments (26/01/2005, No 105/2005 ‘Nutri-sana/Nutri-zoo’; 19/11/2004, No 3833/2004 ‘EMA-GIG/EMA-GINER’; 23/08/2004, No 2800/2004 ‘LOPI-LOPINO’). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as the trade marks involved are less similar than those in this case.

 

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 French trade mark registration No 4 434 068. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 4 434 068 ‘TANOSHI’ 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 right 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

Helen Louise MOSBACK

Claudia SCHLIE

Saida CRABBE

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.