OPPOSITION No B 3 087 439

Miteca Alimentación Saludable, S.L.U., Ctra. Zaragoza km 8,5, 31191 Beriain, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Fouad Kallamni and Mina Kallamni, 1779 2nd Avenue,12th floor,10128 New York, United States of America (applicants), represented by Katarzyna Binder-Sony, ul. Poznańska 23/6, 00-685 Warszawa, Poland (professional representative).

On 09/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 439 is partially upheld, namely for the following contested goods:

Class 29: Processed olives; Olive oil for food; Processed lemons; Preserved, dried, and cooked fruit and vegetables.

Class 30: Spice blends; Sauces; Dipping sauces; Cooking sauces; Savory sauces used as condiment.

2. European Union trade mark application No 18 046 402 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 046 402 for the figurative mark . The opposition is based on European Union trade mark registration No 17 961 571 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 the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked meat; Sausages, ham, Chorizos, Sausages, Dry-cured loin, Mortadella, Bacon, Sausages, Cold meats, Luncheon meats; Preserved, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Edible oils and fats; Pates, Liver pâté, Vegetable pate; Pâtés made from anchovies, prawns, crab, pork liver, goose liver, York ham, fish, turkey, pork, meat, poultry; Prepared dishes consisting primarily of fish, vegetables, pork, poultry, meat, cooked eggs or broth.

The contested goods are the following:

Class 29: Processed olives; Olive oil for food; Processed lemons; Preserved, dried, and cooked fruit and vegetables.

Class 30: Tea; Herbal tea; Spice blends; Couscous; Rice; Pasta; Sauces; Dipping sauces; Cooking sauces; Savory sauces used as condiment.

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 29

Preserved, dried, and cooked fruit and vegetables are identically contained in both lists of goods.

The contested processed olives; processed lemons are included in the broad category of the opponent’s preserved, dried, and cooked fruit and vegetables. Therefore, they are identical.

The contested olive oil for food is included in the broad category of the opponent’s edible oils and fats.Therefore, they are identical.

Contested goods in Class 30

The contested spice blends are similar to the opponent’s dried vegetables. They can coincide in their purpose, to enhance food’s flavour. They also coincide in their channel of distribution and may be produced by the same provider. Furthermore they target the same public.

The contested sauces; dipping sauces; cooking sauces; savory sauces used as condiment are at least similar to the opponent’s preserved and cooked fruits and vegetables in Class 29. They can at least coincide in their purpose, to enhance food’s flavour, coincide in their channel of distribution, may be produced by the same provider and target the same public.

The contested tea; herbal tea; couscous; rice; pasta are dissimilar to all the opponent’s goods. The fact that these contested goods are drinks and foodstuff does not make them similar. They have different producers and are sold in different sections of supermarkets. They do not have the same nature or specific purpose and are not complementary to each other.Furthermore they are not goods 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 (at least) similar 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 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 earlier mark consists of the word ‘mina’ in white bold lower-case letters against an orange background.

The contested sign is a figurative mark consisting of the word ‘mina’ in rather standard lower-case light brownish green letters, where the dot over the letter ‘i’ is represented by a small red flower.

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 verbal element ‘mina' of both signs will be perceived as female name which is a variation or short form derived from the name Wilhelmina, by the public in a part of the relevant territory, such as by the German-speaking public. Consequently, due to the conceptual coincidence between the signs for this part of the public, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public in the relevant territory.

For the part of the public under analysis, both marks will be associated with a female German name. This name has no meaning in relation to the relevant goods and it is therefore distinctive to a normal degree. The contested sign’s figurative elements are not especially creative.

As regards the orange background in the earlier mark, and the stylised dot in the contested sign, they will be perceived as merely decorative elements and are, therefore, non-distinctive as such.

Neither of the marks have an element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their sole word, ‘mina’, with the only difference of the different slight stylisation of the verbal elements and the decorative elements of both marks, which are not of such a nature as to detract the consumers’ attention away from the word as such.

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 at least to an average degree.

Aurally, the pronunciation of the signs coincides identically in the sound of the letters ‛mina’.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. Both signs will be associated with the same female name derived from the same root (e.g. diminutive of the full forename Wilhelmina). As both signs will be perceived as the female name ‘mina’, 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 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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The contested goods are partly identical, partly (at least) similar and partly dissimilar. The earlier mark’s degree of distinctiveness is normal and the public’s degree of attention is average.

The signs are visually similar to at least an average degree, phonetically identical and conceptually similar to a high degree. They coincide in their sole verbal element and both signs will be perceived as referring to the same female name. They differ only in the graphic stylisation and decorative elements of both signs which are quite standard. Account must be 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). The applicant argues that there are significant visual differences between the signs and that they will be perceived visually as the goods concerned for purchase are displayed on shelves in supermarkets . However, even if the goods are purchased following a visual inspection of the signs and even if consumers may recall that there are some visual differences between them, they are still likely to believe that the identical or (at least) similar goods offered under the signs in dispute originated from the same or economically linked undertakings on account of their coincidence in the same word ‘mina’ which, indeed, is the most distinctive element in both signs as explained above in section c) of this decision.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union No 17 961 571. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or (at least) similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Aurelia PEREZ BARBER

Francesca CANGERI

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.