OPPOSITION Nо B 3 084 264

Garmo AG, Ulmer Str. 181-191, 70188 Stuttgart, Germany (opponent), represented by Lichtenstein & Körner Rechtsanwälte Partnerschaft mbB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)

a g a i n s t

Skånemejerier Ab, 205 03 Malmö, Sweden (applicant), represented by Fredersen Advokatbyrå Ab, Turning Torso, 211 15 Malmö, Sweden (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 264 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 039 811 (figurative mark), namely against all the goods in Class 29. The opposition is based on EUTM registration No 5 312 665 (figurative mark) and German trade mark registration No 2 001 543 ‘BAHAR’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods

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

EUTM registration No 5 312 665 (earlier mark 1)

Class 29: Milk products, namely cheese, yoghurt, quark, butter, cream.

German trade mark registration No 2 001 543 (earlier mark 2)

Class 29: Milk and milk products, namely butter, cheese, cream, yoghurt; pre-mixed milk beverages, milk predominating.

The contested goods are the following:

Class 29: Dairy products and dairy substitutes; yogurt.

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

The term ‘namely’, used in the opponent’s lists of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Yogurt is identically contained in all the lists of goods (despite different spellings).

The contested dairy products include, as a broader category, all the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dairy substitutes are highly similar to all the opponent’s goods. These goods usually coincide in producer, relevant public, distribution channels and method of use. 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 highly similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

(Earlier mark 1) BAHAR (Earlier mark 2)
Earlier trade marks	Contested sign

The relevant territory is the European Union for earlier mark 1 and Germany for earlier mark 2.

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).

Earlier mark 1 is a figurative mark, whereas earlier mark 2 is a word mark. Both contain the verbal element ‘BAHAR’ which has no specific meaning for the relevant public and is, therefore, distinctive.

The figurative elements and aspects of earlier mark 1 (the typeface, the ribbon, half-moons and stars, shining sun background and the colours) have different degrees of distinctiveness. The shining sun, despite the opponent’s arguments, is distinctive to a normal degree, since it has no direct connection to the relevant goods. Equally distinctive are the half-moons and stars, although due to their small size, they are barely perceptible. Finally, the typeface, the ribbon and the colours are intended essentially for decorative purposes; therefore, they have a limited degree of distinctiveness, if any.

Earlier mark 1 has no element that could be considered clearly more dominant than other elements.

The contested sign is a figurative mark consisting of the word ‘BARA’ which might be perceived by parts of the relevant public with different meanings, such as the one suggested by the applicant, namely ‘only’ or ‘just’ in Swedish. For other parts of the public, it has no specific meaning. Whether or not this verbal element has a meaning, it is distinctive to an average degree, since the potential meanings have no direct link to the relevant goods. The Opposition Division agrees with the opponent that the stylisation of the letters of the contested sign is not particularly elaborate or sophisticated and will not attract the consumer’s attention away from the elements it seems to embellish.

Visually, the signs coincide in their first two letters, ‘BA’, and in the subsequent letters ‘A’ and ‘R’, placed, however, in a different order in the signs, namely ‘AR’ in the earlier marks and ‘RA’ in the contested mark. The earlier marks contain an additional letter ‘H’ in the middle.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. As the opponent acknowledged, the signs are relatively short, so the abovementioned differences between the signs will not go unnoticed by the relevant consumers.

The signs further differ in the figurative elements and aspects of earlier mark 1 and in the stylisation of the contested sign.

Therefore, the signs are visually similar to a low degree in relation to earlier mark 1 and to a lower-than-average degree in relation to earlier mark 2.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BA’, present identically at the beginning of both signs. However, the pronunciation of the signs differs in the sound of the last letters, ‘HAR’ in the earlier marks versus ‘RA’ in the contested sign. Furthermore, the additional letter ‘H’ in the middle of the earlier marks has a varying impact on the signs’ pronunciation, since, depending on the language of the public concerned, the difference may be greater (e.g. for the German- or Romanian-speaking part of the public it has a strong sound) or smaller (e.g. for the French- or Spanish-speaking part of the public it is mute). Consequently, the signs’ rhythms and pronunciations are different.

Therefore, the signs are aurally similar to a lower-than-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Earlier mark 1 evokes a concept through its figurative elements (e.g. the shining sun). Therefore, for the part of the public for which the contested sign has a meaning, the signs are conceptually dissimilar, and for the part of the public for which the contested sign is meaningless the signs are not conceptually similar. In relation to earlier mark 2, the conceptual comparison is not possible.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) 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).

The goods are identical and similar to a high degree and target the public at large with an average degree of attention. The earlier marks enjoy a normal degree of distinctiveness.

The signs share some similarities, namely the same first two letters, ‘BA’, and the subsequent letters ‘A’ and ‘R’, albeit in a different position. However, as explained in detail in section c), these commonalities can only lead to a finding of a lower-than-average degree of visual and aural similarity in relation to earlier mark 2 and an even lower degree of visual similarity in relation to earlier mark 1.

All the signs are rather short words, the earlier marks consisting of five letters and the contested sign of four. In this regard, as explained above, in short sequences or words, as it is the case, small differences may frequently lead to a different overall impression. In the present case, the differing additional letter ‘H’ in the earlier marks, and the fact that some of the coinciding letters are placed in a different order in the signs, together with the additional figurative differences (in relation to earlier mark 1 and the contested sign), create an immediately perceptible visual and aural difference between them. Moreover, the signs do not have any conceptual link that would lead the public to associate them with each other.

Furthermore, the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Consequently, consumers will be able to visually inspect the marks before purchase and, given their sensibility to the specific features of each sign, they will be able to discern the differences and make an informed choice.

Therefore, in spite of the coincidence in some letters, there is no likelihood of confusion because, comparing the marks overall, there are sufficient differences to outweigh the similarities between them. Consumers, even taking into account the principle of imperfect recollection, will not confuse a mark consisting of the letters ‘BAHAR’, with a mark consisting of the letters ‘BARA’.

Considering all the above, even for identical or highly similar goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Sofía SACRISTÁN MARTÍNEZ

Francesca DRAGOSTIN

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.