OPPOSITION No B 3 085 284

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen Germany (professional representative)

a g a i n s t

Farm Link Iberia, Calle California Nº2 6º 5, 04007 Almeria, Spain (applicant).

On 29/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 284 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 030 704 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 and services of European Union trade mark application No 18 030 704 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 4 282 307 ‘Trader Joe’s’ (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 European Union trade mark registration No 4 282 307.

1. The goods and services

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

Class 31: Agricultural, horticultural and forestry products as well as grains (as far as contained in Class 31); live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 35: Advertising; business management services; business administration; office functions; retail services and online retail services in relation to foodstuffs, washing preparations, cleaning preparations, articles for cleaning purposes, disinfectants, cosmetics, sanitary articles, non-prescription medicines, food supplements, fireworks, electric apparatus and accessories, electronic apparatus and accessories therefor, computers and computer accessories, compact discs, computer hardware and software, lighting devices, tools, horticultural apparatus and accessories therefor, bicycles and accessories therefor, car accessories, clocks, watches and jewellery, stationery and office requisites, books and other printed matter, furniture and other furnishings, garden furniture, household kitchen utensils and accessories therefor, household goods, bed covers, including pillows, bed linen, household textiles, clothing, headgear, shoes, sports equipment, toys, leisure articles, foodstuffs for animals, plants, tobacco goods; providing supermarkets, retail outlets and discount retail outlets; advertising on the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information; arranging commercial transactions, for others, including on the internet.

The contested goods and services are the following:

Class 31: Unprocessed vegetables; salad vegetables [fresh]; fresh fruits and vegetables; vegetables, fresh; organic fresh vegetables; fresh fruits, nuts, vegetables and herbs; capsicums; fresh peppers; unprocessed peppers; chillies; fresh chilies; eggplants; unprocessed tomatoes; fresh tomatoes; fresh grape tomatoes; fresh plum tomatoes; fresh cherry tomatoes; cucumbers, fresh; unprocessed zucchini; fresh zucchini; vegetable marrows, fresh; unprocessed lemons; lemons, fresh; oranges, fresh; unprocessed oranges; lettuce, fresh; fresh pumpkins; fresh sweet potatoes; fresh avocados; unprocessed avocados; fresh mangos; fresh apple mangos; fruit, fresh; unprocessed fruits; mandarins [fruit, fresh]; organic fresh fruit; fresh citrus fruits; tropical fruits [fresh]; gift baskets of fresh fruits; carrots (fresh -); fresh white carrots (arracacha); potatoes, fresh; unprocessed potatoes; onions; unprocessed onions; onions, fresh; unprocessed garlic; garlic, fresh; leeks, fresh.

Class 35: Import-export agency services; import and export services; export agency services; wholesale services in relation to horticulture products; wholesale services in relation to foodstuffs.

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 31

The contested unprocessed vegetables; salad vegetables [fresh]; fresh fruits and vegetables; vegetables, fresh; organic fresh vegetables; fresh fruits, nuts, vegetables and herbs; capsicums; fresh peppers; unprocessed peppers; chillies; fresh chilies; eggplants; unprocessed tomatoes; fresh tomatoes; fresh grape tomatoes; fresh plum tomatoes; fresh cherry tomatoes; cucumbers, fresh; unprocessed zucchini; fresh zucchini; vegetable marrows, fresh; unprocessed lemons; lemons, fresh; oranges, fresh; unprocessed oranges; lettuce, fresh; fresh pumpkins; fresh sweet potatoes; fresh avocados; unprocessed avocados; fresh mangos; fresh apple mangos; fruit, fresh; unprocessed fruits; mandarins [fruit, fresh]; organic fresh fruit; fresh citrus fruits; tropical fruits [fresh]; gift baskets of fresh fruits; carrots (fresh -); fresh white carrots (arracacha); potatoes, fresh; unprocessed potatoes; onions; unprocessed onions; onions, fresh; unprocessed garlic; garlic, fresh; leeks, fresh are identical to the opponent’s agricultural, horticultural products as well as grains (as far as contained in Class 31); fresh fruits and vegetables; natural plants, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

Contested services in Class 35

The contested import-export agency services; import and export services; export agency services relate to the movement of goods and are aimed at supporting or helping other businesses to do business. The opponent’s business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They are usually rendered by companies specialised in this specific field, such as business consultants. The aforementioned contested import-export agency services; import and export services; export agency services and the opponent’s business management services can coincide in service provider, distribution channels and relevant public. Therefore, they are similar.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places at which the goods are offered for sale. Furthermore, they target the same public. The same principle applies to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35. Therefore, the contested wholesale services in relation to horticulture products are similar to the opponent’s horticultural products in Class 31.

The contested wholesale services in relation to foodstuffs are similar to the opponent’s retail services in relation to foodstuffs. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together a variety of goods, for the benefit of others, enabling customers to conveniently view and purchase those goods. Furthermore, they can also coincide in their service provider since the subject of these services (the goods themselves) is the same and the public could take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

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 and services found to be identical or similar are directed at both the public at large and at business customers with specific professional knowledge or expertise (e.g. import-export agency services). The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

3. The signs

Trader Joe’s
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier trade mark is a two-word mark. The word ‘Trader’ is an English word and it will be understood by the English-speaking part of the public as referring to ‘a person whose job is to trade in goods or stocks’ (information extracted from Collins Dictionary on 14/02/2020 at https://www.collinsdictionary.com/dictionary/english/trader). It is descriptive in relation to the goods and services in general and non-distinctive for the English-speaking part of the relevant public (03/05/2012, R 764/2011‑1, JOE / TRADER JOE’S, § 38). The second word ‘Joe’s’ is a common male name ‘Joe’ followed by an apostrophe and the letter ‘s’, and it means belonging to Joe. The English-speaking part of the public will perceive the entire earlier trade mark ‘Trader Joe’s’ in relation to the relevant goods and services as a reference to the fact that the goods and services are those of a trader called Joe. Consequently, and in order to take into account the potential impact of the meaning of the verbal element ‘Joe’s’ on the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union. The verbal element ‘Joe’s’ is not related in any way to the relevant goods and services and it has an average degree of distinctiveness.

The contested sign is a figurative mark. It is comprised of the verbal element ‘JOE’ depicted in bold, standard, upper-case letters with a stylised letter ‘O’ which is depicted as a capsicum with a white circle in the centre. The circle itself, alone or in conjunction with its darker outline, makes it clearly perceivable as the letter ‘O’. The image outline of a capsicum alludes to the goods and services themselves, and therefore the outer part of the letter ‘O’ is considered to be weak. The verbal element ‘JOE’ is not related in any way to the relevant goods and services and therefore it has a normal degree of distinctiveness.

Visually, despite the stylisation of its elements, the contested sign is visually perceived as ‘JOE’ and therefore the signs coincide in the verbal element ‘JOE’ since it is the word that is protected and not its written form. The signs differ in the verbal element ‘Trader’ and an apostrophe followed by the letter ‘s’ in the earlier mark, and in the stylisation and outline of the letter ‘O’ in the contested sign, resembling a capsicum, which is, however, weak as mentioned above.

Furthermore, 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). Therefore, the verbal element in the contested sign will have more impact on the consumers than the figurative element.

Taking into account the distinctiveness and impact on the consumers of the stylised outer part of the letter ‘O’ in the contested sign, as well as the facts that despite the stylisation of the letter ‘O’, the contested sign will be perceived as ‘Joe’, and the earlier mark also contains the distinctive word ‘JOE’, whilst the differing word ‘TRADER’ is non-distinctive for part of the public, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛JOE’, present identically in both signs. The pronunciation differs in the sound of the word ‘Trader’ and in the sound of the letter ‘s’ in the earlier mark, which have no counterpart in the contested sign.

The contested sign will be pronounced almost identically to one of the two words of the earlier mark. Furthermore, it has an average degree of distinctiveness, whilst the differing word ‘Trader’ is non-distinctive. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Although the differing word ‘Trader’ in the earlier mark evokes a concept, it is non-distinctive. The relevant public will perceive the possessive form of the verbal element ‘Joe’ in the earlier mark and there is a conceptual link between the signs on account of the verbal element ‘Joe’ in the contested sign, despite the concept conveyed by the figurative element. As the relevant public will associate both signs with a meaning of the distinctive verbal element ‘Joe’, the signs are conceptually similar to a high degree.

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 and 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 verbal element in the mark for part of the relevant public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

The goods and services are identical or similar. They target both the public at large and business customers with specific professional knowledge or expertise. The public’s degree of attentiveness varies from average to high. The signs are visually similar to an average degree. Aurally and conceptually they are similar to a high degree. The distinctiveness of the earlier trade mark is normal.

The only word of the contested sign, ‘JOE’ reproduces almost identically one of the two words of the earlier mark. Although in the contested sign it contains stylised letters including a stylised letter ‘O’, this stylisation does not preclude that consumers will perceive the contested sign as ‘JOE’. Moreover, the stylised outer part of the letter ‘O’ resembles a capsicum and it is weak, as explained above in section c) of this decision. On the other hand, the earlier mark also contains the word ‘Joe’. Moreover, the differing word ‘Trader’ evokes a non-distinctive concept and it therefore has limited impact on the comparison of the signs.

Furthermore, the Court has found a likelihood of confusion between a word mark and a figurative mark coinciding in the common male first name ‘Harry’ (18/02/2016, T‑711/13 & T‑716/13, HARRY’S BAR / PUB CASINO Harrys RESTAURANTS (fig.) et al., EU:T:2016:82, § 97). The Court has held that although the use of a person’s name as a trade name is a relatively common practice, the marks at issue are conceptually similar in as much as the relevant public may think that the goods and services concerned have been produced, or are being offered, by an undertaking bearing that name. In spite of the fact that the first name in the marks at issue does not convey any exact information regarding the identity of the manufacturer of the goods or the supplier of the services, it enables the public concerned to distinguish the goods or services covered by the marks containing that first name from those which have a different commercial origin and to conclude that all the goods or services covered by those marks have been manufactured, marketed or supplied under the control of the proprietors of those marks and that those proprietors are responsible for their quality (21/05/2014, T‑553/12, BATEAUX MOUCHES, EU:T:2014:264, § 34). The relevant public will perceive ‘Trader Joe’s’ as an indication that the goods and services are those of a trader whose name is Joe and may perceive that the trader called Joe of the earlier mark and ‘Joe’ of the contested sign is the same person.

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.

Taking into account the above and the degree of attentiveness of the relevant public as well as the fact that the goods and services are identical or similar, consumers may make a connection between the signs at issue and assume that the goods and services come from the same or economically linked undertakings which both use the name ‘Joe’ as identification on the market.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 282 307. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 4 282 307 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.