OPPOSITION Nо B 3 089 466

Arar Trading Co. L.L.C., Showroom 1, Al Ras Bld. 16 Al Ahmadiya St. Deira, Dubai, United Arab Emirates (opponent), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal, 463 bis, 2°piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Ahmad Basel Zuher Al Orgawy, Ras Al Bzorieh, Medhat Pasha Market, Null Damascus, Syrian Arab Republic (applicant), represented by Cam Trade Marks And Ip Services, St John’s Innovation Centre Cowley Road, CB4 0WS Cambridge, United Kingdom (professional representative).

On 21/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 466 is upheld for all the contested goods.

2. European Union trade mark application No 18 040 521 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 18 040 521 for the figurative mark . The opposition is based on EUTM registration No 14 193 874 for the figurative 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.

a) The goods

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

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 30: Coffee; artificial coffee; cardamom; tea; sugar; cocoa; rice; preparations made from cereals; confectionery; ices; pepper; spices; condiments; thyme; bread; biscuits; cakes; chocolate; candy.

Coffee; artificial coffee; tea; sugar; cocoa; rice; preparations made from cereals; confectionery; ices; spices; bread are identically contained in both lists of goods (including synonyms).

The contested condiments include, as a broader category, the opponent’s sauces (condiments). 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 cardamom; pepper; thyme are included in the broad category of the opponent’s spices. Therefore, they are identical.

The contested biscuits; cakes are included in the broad category of the opponent’s pastry. Therefore, they are identical.

The contested chocolate; candy are included in the broad category of the opponent’s confectionery. 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. The degree of attention is average.

c) The signs

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).

Although, according to the opponent, the earlier mark contains two verbal elements: ‘AL TAHI’, the Opposition Division does not find a reason for the relevant public to dissect a meaningless string of letters into two elements. There is also not a sufficiently clear visual separation between the letters that supports such a dissection. Therefore, this element will be perceived in the same way in both signs: as one complete element.

Both marks contain the verbal element ‘ALTAHI’, which will be perceived by the vast majority of the relevant public as a meaningless word. As the element is meaningless for the relevant public, it is also of an average degree of distinctiveness.

The elements in both marks that resemble Arabic script are also meaningless for the European public, the majority of whom are not familiar with the Arabic language. These elements will be perceived as figurative elements (as the public is not aware of how to pronounce them) without a clear meaning in relation to the relevant goods; therefore, they are distinctive.

Both marks also contain the figures of chefs. The black and white depiction of a chef in the earlier mark is included in the upper-left corner in the contested sign, but in colour. The contested sign contains an additional chef in a central position. All chefs are depicted as offering a cooked bird on a dish. These figurative elements make reference, to a certain extent, to foodstuffs and their preparation. Bearing in mind that the relevant goods are all foodstuffs, these elements are weak.

The rectangular background of the contested sign and the faint white drawings on it are of a purely decorative nature, and they have a very low degree of distinctiveness, if any.

It is the Office’s practice to restrict the notion of a ‘dominant element’ to the visual impact of the elements of a sign; the dominant character of a component of a sign is mainly determined by its position, size and dimensions to the extent that they affect its visual impact. Taking into account these factors, the verbal element (‘ALTAHI’), the Arabic script and the chef with the red scarf are the co-dominant elements in the contested sign, and the chef in the upper-left corner is of secondary position.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘ALTAHI’. They also coincide in the depiction of the figure of the chef in the earlier mark, which is depicted in colour in the upper-left corner of the contested sign. Furthermore, the central figure of the chef in the contested sign shares some similarities with that of the earlier mark: both depicted male chefs in white clothes with the same kind of white hats offering a cooked bird on a dish.

The signs differ in their colours, the number of chefs in each of the signs and, to some extent, in the depiction of the chefs, such as the face and the position of the body and hands. The typeface in both signs is also different, as is the stylisation of the Arabic script. The earlier mark does not have a background, unlike the contested sign.

However, 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 signs are visually similar at least to an average degree.

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 ‛ALTAHI’, present identically in both signs. The element that resembles Arabic script and the other figurative elements are not subject to a phonetic assessment, since they will not be pronounced when referring to the signs verbally. Therefore, the signs are aurally identical.

Conceptually, both signs refer to chefs that are offering a cooked bird on a dish. The verbal elements and the Arabic scripts will not influence the perception of the marks, as they are meaningless for the relevant public. The number of the chefs, as well the very faint white drawings on the background in the contested sign will not significantly affect the conceptual perception of the contested sign. Therefore, although the figure of a chef is weak in relation to the goods, it will have the same degree of distinctiveness in both signs and the signs are conceptually at least highly similar, if not identical.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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 identical, the earlier mark has a normal degree of distinctiveness in relation to the relevant goods, and the general public will pay an average degree of attention.

It has been established that the signs are visually and conceptually similar to at least an average degree and aurally identical. The distinctive verbal element ‘ALTAHI’ is identical in both signs. It has a central position in the earlier mark and is the co-dominant element in the contested sign.

While the differences between the signs will not be overlooked, they are confined to the stylistic depiction of figurative elements, which have less impact than the verbal elements of the signs or have the same concept. Therefore, it is reasonable to conclude that even if consumers take into account the differences in the signs, the similarities in their distinctive verbal elements and the same concept conveyed by the figure of a chef are sufficient to lead to the conclusion that the contested sign designates a different line of the same goods of the earlier mark, or is an updated version of the same sign (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This conclusion is further supported by the fact that the figure of the chef found in the earlier mark is reproduced in the contested sign, albeit in a secondary position and in different colours.

In addition, when there is identity between the goods, the degree of difference between the marks at issue must be high to safely exclude the risk of likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

The applicant argues that the opponent should prove the copyright of the logo and the design, or at least the right to use it, and that this use does not infringe third party copyright. The applicant also requests that the opponent proves that the earlier mark is not filed in bad faith and that there is no misuse of the European Intellectual property system. The opponent claimed that it is the successor of the original owner of the earlier mark and provide couple of registrations that refers to almost identical sign to the earlier mark.

In view of the foregoing, the Opposition Division notes that the opposition is based on validly registered trade mark and the opponent’s right are duly substantiated for the purpose of the examination of the likelihood of confusion between the earlier mark and the contested EUTM application. Article 8(1)(b) EUTMR does not leave any scope to take into account claims of alleged bad faith or an abuse of rights on the part of the opponent, with the result that such claims are not an obstacle to the examination of likelihood of confusion.

As to the provided certificates for registration of marks, most of them concern countries outside the European Union and their ownership is not relevant to the current opposition. The remaining registrations/application, namely those for France, Italy and the United Kingdom, also do not have an impact on the conclusion, as bad faith is not relevant for the conclusion of likelihood of confusion, as explained above, neither the formal coexistence in national register of certain marks is per se particularly relevant. Moreover, in the present case, the applicant does not demonstrate that these national trade marks are still registered. Therefore, these arguments must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public for which the verbal elements of the signs are meaningless. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, he 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

Francesca CANGERI

Maria SLAVOVA

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.