OPPOSITION Nо B 3 088 359

 

Kampffmeyer Mühlen Gmbh, Haulander Hauptdeich 2, 21107 Hamburg, Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Αντωνιος Ξανθοπουλος, Αγιων Αποστολων 9, 57013 Θεσσαλονικη, Greece and Παρασκευας Πεττας, Ρηγα Φεραιου 190, 26221 Πατρα, Greece (applicants).

 

On 29/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 088 359 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 046 623 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 18 046 623 for the figurative mark . The opposition is based on, inter alia, International trade mark registration No 901 501 designating Bulgaria, Czech Republic, Estonia, Hungary, Lithuania, Latvia, Poland and Slovakia  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.

 

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 International trade mark registration No 901 501 designating Bulgaria, Czech Republic, Estonia, Hungary, Lithuania, Latvia, Poland and Slovakia.

 

a) The goods and services

 

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

 

Class 30: Flour; ready made flour; flour pre-mixes for dough; concentrates being preparations for making bakery products by adding flour, mainly consisting of oil seeds, legumes, malts and cereals; bread, rolls, pastry and confectionery; edible ice; muesli and muesli bars; snack bars; semolina; noodles; dietary fibre supplement; baking powder, bakery improver; dietetic nutritional preparations on cereal basis for non-medical purposes; starch for nutriments; edible salts; cereal products, especially corn flakes, cereal preparations, especially wheat gluten; saga, tapioca, rice; dextrose and fructose for nutrition purposes; sugar, yeast, spices; pastries; chocolate, sweets and candies; vegetable and cereal mixtures, ready for baking, also as granulates or in cuttable pastry form; rice meals; wheat flour; flour meals; baking mixtures for seething pastries and shapeable doughs; sauces as condiments; wheat flour; coffee, tea, cacao; coffee surrogates; honey; molasses syrup; mustard, vinegar; sauces on vegetable basis; extracts and concentrates made out of all aliments named before for further processing in the food industry or for producing aliments.

Following the previous decision on Opposition No B 3 087 952 of 20/04/2020 as well as the applicant’s limitation of 04/07/2019 the specification of the contested goods reads as follows:

Class 30: Coffee based fillings; chocolate fillings for bakery products; chocolate-based fillings for cakes and pies; custard-based fillings for cakes and pies; icing; frostings; confectioners' glaze; chocolate flavoured coatings; mirror icing [mirror glaze]; castor sugar; candy decorations for cakes; chocolate creams; marzipan; chocolate marzipan; chocolate chips; chocolate for toppings; chocolate based fillings; chocolate topping; chocolate decorations for confectionery items; chocolate decorations for cakes; marzipan substitutes; table syrup; topping syrup; pancake syrup; glucose syrup for use in the manufacture of foods; glucose syrup for use as a texture improver for food; glucose syrup for use as a fermenting aid for food; glucose syrup for use as a sweetener for food; glucose syrup for use as a gelling agent for food; glucose syrup for use as a preservative for food; chocolate syrup; fructose syrup for use in the manufacture of foods; syrup for food; glucose syrups for food; flavouring syrups; chocolate syrups for the preparation of chocolate based beverages; natural sweeteners; glucose powder for food; sugar; brown sugar; foodstuffs made of a sweetener for making a dessert; foodstuffs made of a sweetener for sweetening desserts; foodstuffs made of sugar for sweetening desserts; foodstuffs made of sugar for making a dessert; liquid sugar; sugar substitutes; honey substitutes; chocolate powder; chocolate-based beverages; chocolates; edible ice powder for use in icing machines; mixtures for making frozen confections; mixtures for making water ices; mixtures for making ice cream confections; mixtures for making ice cream products; frosting mixes; ice cream mixes; instant ice cream mixes; oat cakes for human consumption; tea cakes; barm cakes; guar gum; chocolate bars; pralines; pralines made of chocolate; pralines with liquid filling; milk chocolate bars; milk chocolates; filled chocolate; chocolates in the form of pralines; cereal-based snack food; granola-based snack foods; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; granola-based snack bars; oat bars; cereal based energy bars; chocolate-coated bars; meringues; chocolate-based spreads; chocolate spreads containing nuts; biscotti dough; croissants; chocolate fondue; hot chocolate mixes; non-medicated chocolate; preparations for making of sugar confectionery; panettone; sandwich spread made from chocolate and nuts; chocolate spreads; wafered pralines; rice pudding; chocolate; chocolate spreads for use on bread; chocolate for confectionery and bread; chocolate with alcohol; liqueur chocolates; chocolate vermicelli; truffles [confectionery]; truffles (rum -) [confectionery]; foodstuffs containing cocoa [as the main constituent]; foodstuffs containing chocolate [as the main constituent]; imitation chocolate; peanut brittle; chocolate coated fruits; brownie mixes; ready-made sauces; pastry mixes; pancake mixes; cake batter; biscuit mixes; batter mixes; stuffing mixes [foodstuffs]; preparations for making bakery products; doughnut mixes; cake powder; instant pancake mixes; instant doughnut mixes; batters and mixes therefor; muffin mixes; cake mixes; dry seasoning mixes for stews; custard powder; powders for making ice cream; none of the foregoing goods being made from fish or other aquatic animals.

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.

As a preliminary remark it should be noted that the limitation at the end of the specification of the contested goods ‘none of the foregoing goods being made from fish or other aquatic animals’ does not influence the comparison of the goods as these goods usually do not contain fish or other aquatic animals and at least the comparison is taken from the perspective that they do not contain. Therefore, the restriction will not be mentioned in the process of comparison.

The opponent’s chocolate has many different forms, as substance for spread, as chocolate bars, as vermicelli, bonbons and also drinks. Therefore, the contested chocolate flavoured coatings; chocolate creams; chocolate chips; chocolate for toppings; chocolate topping; chocolate decorations for confectionery items; chocolate decorations for cakes; chocolate syrups for the preparation of chocolate based beverages; chocolate powder; chocolate-based beverages; chocolates; chocolate bars; pralines made of chocolate; milk chocolate bars; milk chocolates; filled chocolate; chocolates in the form of pralines; chocolate-based spreads; chocolate spreads containing nuts; chocolate fondue; hot chocolate mixes; non-medicated chocolate; sandwich spread made from chocolate and nuts; chocolate spreads; chocolate; chocolate spreads for use on bread; chocolate for confectionery and bread; chocolate with alcohol; liqueur chocolates; chocolate vermicelli are either included in the opponent’s category of chocolate or are identically contained in both lists of goods. Therefore all the goods are identical.

The contested candy decorations for cakes; marzipan; chocolate marzipan; marzipan substitutes; oat cakes for human consumption; tea cakes; barm cakes; pralines; pralines with liquid filling; meringues; croissants; panettone; wafered pralines; rice pudding; truffles [confectionery]; truffles (rum -) [confectionery]; foodstuffs containing cocoa [as the main constituent]; peanut brittle are included in or overlap with the opponent’s broader category pastry and confectionery. Therefore, they are identical.

The contested cereal-based snack food; granola-based snack foods; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; granola-based snack bars; oat bars; cereal based energy bars; chocolate-coated bars overlap with the opponent’s snack bars. Therefore, they are identical.

The contested ready-made sauces overlap with the opponent’s sauces as condiments therefore, they are identical.

The contested cake powder overlaps with the opponent’s baking powder, bakery improver and therefore they are identical.

The contested dry seasoning mixes for stews overlap with the opponent’s spices. Therefore, they are identical.

The contested natural sweeteners include as a broader category the opponent’s honey. 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 castor sugar; sugar; brown sugar; foodstuffs made of a sweetener for making a dessert; foodstuffs made of a sweetener for sweetening desserts; foodstuffs made of sugar for sweetening desserts; foodstuffs made of sugar for making a dessert; liquid sugar; sugar substitutes are goods that serve to sweet different foodstuff products as the opponent’s sugar and therefore, they have the same purpose. The contested sugar is identically included in both list of goods. The contested castor sugar; brown sugar; liquid sugar are included in the category of the opponent’s sugar and therefore they are identical. The remaining contested goods coincide in the distribution channels and relevant public and they are in competition with the opponent’s sugar. Therefore, these goods are similar to a high degree.

The contested custard powder is a sweet yellow souse and the opponent’s custard is a sweetened mixture of eggs and milk eaten as a dessert. Therefore, they are highly similar as they coincide in producer, relevant public and distribution channels and have the same purpose.

The contested coffee based fillings; chocolate fillings for bakery products; chocolate-based fillings for cakes and pies; custard-based fillings for cakes and pies; chocolate based fillings; icing; frostings; confectioners' glaze; mirror icing [mirror glaze]; frosting mixes; chocolate coated fruits and the opponent’s flour pre-mixes for dough are all products that are used in the process of preparation of cakes and/or other pastry products and therefore, they have the same nature and purpose, namely ingredients for preparation of these products. Therefore, their distribution channels and relevant public coincide and the goods are similar.

The contested table syrup; topping syrup; pancake syrup; chocolate syrup; syrup for food; flavouring syrups, are at least highly similar, to the opponent’s molasses syrup as they have the same nature, and the same intended purpose, namely to flavor the food. Moreover they have the same producers, distribution channels and relevant public, they are also in competition.

The contested glucose syrup for use in the manufacture of foods; glucose syrup for use as a texture improver for food; glucose syrup for use as a fermenting aid for food; glucose syrup for use as a sweetener for food; glucose syrup for use as a gelling agent for food; glucose syrup for use as a preservative for food; fructose syrup for use in the manufacture of foods; glucose syrups for food; glucose powder for food and the opponent´s dextrose and fructose for nutrition purposes have the same nature and purpose as evident from their descriptions. They also can coincide in the producers, relevant public and distribution channels. Moreover they are in competition and therefore they are highly similar, even if not some of them identical.

The contested honey substitutes can have the same producers, distribution channels and relevant public as the opponent’s honey. Moreover, these goods are also in competition and therefore they are highly similar.

The contested foodstuffs containing chocolate [as the main constituent]; imitation chocolate can have the same producers, distribution channels and relevant public as the opponent’s chocolate. Moreover, they can be in competition and therefore, the goods are highly similar.

The contested edible ice powder for use in icing machines; mixtures for making frozen confections; mixtures for making water ices; mixtures for making ice cream confections; mixtures for making ice cream products; ice cream mixes; instant ice cream mixes; powders for making ice cream are substances for preparing ice-cream. They can coincide in producers, distribution channels and relevant public with the opponent’s edible ice. Moreover they might be in competition and therefore, they are similar.

The contested guar gum (a gum obtained from the seeds of the guar plant, used as a stabilizer and thickening agent in food), are similar to the opponent’s flour because they can coincide in producer, relevant public and distribution channels. Furthermore they are in competition since they can be used to thicken other foodstuffs.

The contested preparations for making of sugar confectionery are similar to the opponent’s confectionery as the contested goods can be used for preparation of confectionary and therefore they can have the same distribution channels, relevant public and can be in competition.

The contested brownie mixes; pastry mixes; pancake mixes; cake batter; biscuit mixes; batter mixes; stuffing mixes [foodstuffs]; preparations for making bakery products; doughnut mixes; instant pancake mixes; instant doughnut mixes; batters and mixes therefor; muffin mixes; cake mixes; biscotti dough are similar to the opponent’s flour pre-mixes for dough as they are all mixed substances used for preparation of pastry and bakery products and therefore they have similar nature, the same relevant public and distribution channels. Moreover, 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 similar to varying degrees are directed at both, the public at large and professionals (e.g. chefs/cooks, or confectioners).

The degree of attention paid by consumers during the purchase of the goods is deemed to be average.

c) The signs

Earlier trade mark	Contested sign

 

The relevant territories are Bulgaria, Czech Republic, Estonia, Hungary, Lithuania, Latvia, Poland and Slovakia.

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 common verbal element ‘Aurora’/‘AURORA’ is meaningful for a significant part of the public in the European Union, where it can be perceived as having various meanings. Part of the relevant public will recognise it as a female name, or the name of the Roman goddess of the morning. However, by historical and political reasons in the East part of Europe, where the relevant countries belong geographically or politically (indicating the sphere of influence of the communist Soviet Union (USSR)) this word will be related, at least by part of the public, to the Russian protective cruiser Aurora, where one of the first incidents of the October Revolution in Russia took place on this ship. In any case the word is distinctive as it has no relation to the relevant goods.

The figurative element in the earlier mark can be seen as of purely decorative character that serves to stand out the verbal element ‘Aurora’. However, if the form of a sun can be recognised in it that serves to enhance the connotation to the morning/dawn. The earlier mark has no element more dominant (visually eye-catching) than others.

The figurative element of the contested sign will be perceived by the same way as the figurative element in the earlier mark, either as a stylistic characteristic of the sign or as a sun (sun in the horizon), which will reinforce the concept of morning/dawn. This is so as consumers tend to look for a meaning in trade marks, and letters (in the present case the letter O) in trade marks are often deliberately distorted or replaced with figurative elements with a similar shape to those letters to increase their effect or impact.

The verbal elements ‘Premium Quality Products’ are English terms that indicate that the goods under the contested mark are excellent/the best (i.e. ‘premium’ meaning ‘best’, ‘quality’ meaning ‘class’ and ‘products’ meaning ‘goods). However, although the English is not the official language in any of the countries at issue, the expression will be understood, at least by part of the public as it contains words that are very often used in relation to different goods and services. Therefore, for part of the public it is a clear reference to the characteristics of the goods (and evocative of positive qualities) and this expression is considered non‑distinctive for this part of the public that will perceive a meaning in it. However, it is not excluded that for other part of the public this expression will be meaningless. Irrespectively of any influence these various perceptions may have in terms of distinctiveness, the whole expression is of secondary character because of its size and position. Consequently, it has less impact, than the other elements, in either case.

Considering that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, it is, therefore, relevant to note that the coinciding word ‘aurora’, is the first element to read and to be pronounced in the contested mark, and the only one in the earlier mark. In addition, the differing words ‘Premium Quality Products’ are of reduced impact as already explained above.

Visually, the signs coincide in the verbal element ‘AURORA’. The signs differ in their figurative elements and stylisation in both signs and in the additional expression ‘Premium Quality Products’ of the contested sign. However, as mentioned above, this expression is of secondary importance and will not attract much of the consumer’s attention.

Therefore, the signs are visually similar to at least an average degree, considering that the verbal element has a stronger impact on the consumer than the figurative element.

Aurally, irrespective of the different pronunciation rules in the different relevant territories, the pronunciation of the signs coincides in the verbal element ‘AURORA’ present identically in both signs.

Furthermore, as the General Court has already assessed, only the dominant part of the mark would normally be pronounced when enunciated by consumers (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55) and the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Taking into account all of the above, and considering that the relevant goods are everyday (or at least frequently purchased) foodstuffs, it is highly likely that if consumers refer in the course of trade to the contested sign, or ask for it, (for ease of reference and facilitation of the purchase process), they would not refer aurally to all the verbal elements of the sign, but rather only to the distinctive and visually eye-catching verbal element ‘AURORA’. The figurative elements are not subject to aural assessment. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide in the meaning of the identical distinctive verbal element, ‘AURORA’. The element ‘Premium Quality Products’ cannot influence the conceptual perception of the contested sign. This expression is either non-distinctive or meaningless. Even if it is assumed that only some words could be understood, this will still not affect the concept of the earlier mark, as these words will be perceived in a descriptive manner for the goods in question. Therefore, in either case, this expression is of secondary importance in the overall impression of the contested sign. As to the figurative elements of both signs, when perceived as a sun, this will enhance the perception of ‘AURORA’ as a word related to the ‘morning/down’. Otherwise, they will not retain particular conception, but simply will be perceived as figurative stylisations of the signs. Therefore, the signs are conceptually similar to at least an average degree.

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 territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods compared are partly identical and partly similar (to varying degrees). They are directed at both the public at large and professionals (e.g. chefs/cooks) and the degree of attention paid by consumers during the purchase of the goods is deemed to be average.

The signs are visually similar to at least an average degree, aurally identical and conceptually at least similar to an average degree. The earlier mark is of average distinctive character.

The goods themselves, being found identical or similar to various degrees, 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).

The coincidences between the signs are found in the only verbal element of the earlier mark being entirely reproduced in the contested sign (despite the difference in typeface), in which it is the element of greater weight, for being the only distinctive and dominant verbal element, and the first element perceived due to its position on the top. In this same line, it must be noted that the differences between the marks are found in elements of reduced impact, for the reasons explained in section c) above.

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.

Indeed, in this case it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 901 501 designating Bulgaria, Czech Republic, Estonia, Hungary, Lithuania, Latvia, Poland and Slovakia 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 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 applicants are the losing party, they 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

 

 

Sofia SACRISTÁN MARTÍNEZ

Maria SLAVOVA

Cristina SENERIO LLOVET

 

 

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.