OPPOSITION No B 3 094 117

Bimbo, S.A., C/ Josep Pla, 2-B2 (Torres Diagonal Litoral), 08019 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

BIP Holland B.V., Bredaseweg 123, 4872 La Etten-Leur, Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative).

On 04/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 117 is upheld for all the contested goods, namely

Class 30: Candy.

2. European Union trade mark application No 18 047 215 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 047 215 (figurative mark), namely against all the goods in Class 30. The opposition is based on Spanish trade mark registration No 3 646 074 (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: Popcorn.

The contested goods are the following:

Class 30: Candy.

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.

The contested candy is similar to the opponent’s popcorn. The applicant argues that it is unlikely that a consumer when looking to buy candies will instead purchase popcorn, as the products have different textures and flavours and they will not substitute one another. In this regard, it must be noted that popcorn also includes sweet popcorn as also stated by the applicant. Given the coincidence in the sweet flavour, the goods are clearly in competition with each other. The goods are also sold through the same distribution channels and sales outlets such as kiosks, sweet shops and/or, contrary to the applicant’s assertion, even if the goods will not be found next to each other in the same shelves it is highly likely to be found at the very least in the same section of convenience stores and supermarkets. Moreover, these goods are produced by the same undertakings.

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 similar 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 Spain.

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 is a figurative mark composed of the verbal element ‘POPUP’ written in stylised letters. While ‘POP’ is in white colouring and ‘UP’ in red, all the letters are surrounded by a dark-blue frame. The applicant argues that the English words ‘POP UP’ means appear or occur suddenly. In this regard, it must be noted that even though it cannot be excluded that some Spanish consumers with a certain command of the English language will perceive such meaning, the term ‘POP’ per se in Spanish refers to a musical style of Anglo-American origin born at the end of the fifties of the 20th century, whereas ‘UP’ does not have any meaning for the relevant public. Notwithstanding this, bearing in mind the goods in question and in spite of the fact that both words are depicted in different colours, it is likely that a substantial part of the Spanish consumers will not associate the word ‘POP’ with any clear or specific meaning because it will be read in conjunction with the term ‘UP’ and perceived as a part of an invented word. In any case, they are distinctive to a normal degree.

The earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a figurative mark composed of the verbal element ‘POP’ above the word ‘UPS’ written in stylised red large letters followed by a red exclamation mark with arrow shape pointing upwards, all these elements being surrounded by a black line. At the bottom of the sign in much smaller size than the above elements, the term ‘LOLLIPOP’ is represented in standard black upper case letters.

The word ‘POP’ for the Spanish consumers has the meaning explained above and the word ‘UPS’ has not meaning. Although the words ‘POP UPS’ are written across two lines, bearing in mind the goods concerned and because the word ‘POP’ is followed by the word ‘UPS’ which is perceived either as a foreign or made up word it is plausible that a substantial part of the relevant consumer will perceive the expression ‘POP UPS’ as a whole without a clear or specific meaning. This is particularly so because both words are in red colour of identical stylisation and surrounded together by a black line. Understood or not, they are distinctive to a normal degree as is the word ‘LOLLIPOP’ which does not have a meaning for the majority of Spanish consumers. The arrow device will be perceived as a fanciful exclamation mark and since it bears no relation to the goods in question it is normally distinctive. 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).

In terms of dominance, the elements ‘POP UPS!’ surrounded by the black line are of equal importance in terms of their relative size and position within the arrangement of the contested mark, being more eye-catching than the word ‘LOLLIPOP, which is clearly less noticeable due to its smaller script and position directly underneath the dominant elements. In contrast, none of the elements of the earlier mark is clearly dominant (i.e. visually outstanding).

The stylisation and colouring of the signs will be regarded as being primarily decorative in nature and so play a secondary role in the perception of them.

Visually, the signs coincide partly in the red colour and in particular in the sequence of letters ‘POP UP(*)’, which constitutes the whole verbal element of the earlier mark and five out of six letters of the dominant verbal element in the contested sign. Most of the differences between the signs lie in elements of lower visual impact namely, the additional word ‘LOLLIPOP’ and exclamation mark (albeit co-dominant in the sign, figurative elements have less impact on consumer than verbal ones) of the contested sign as well as in the stylisation (including part of the colours) of both signs, most playing a secondary role in the perception of the signs for the reasons explained above. The signs also differ in the letter ‘S’ of the second word ‘UPS’ in the contested sign. In this respect, it should be also borne in mind that consumers generally tend to focus on the beginning (or top) of a sign when they encounter a trade mark. This is because the public reads from left to right and top to bottom, which makes the part placed at the left (or at the top) of the sign (the initial part) the one that first catches the attention of the reader.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘POPUP’, present identically in both signs. Account is taken that consumers generally refer to the dominant elements of trade marks and tend to shorten marks containing several words. Therefore, in the present case it is likely that the additional word ‘LOLLIPOP’ will not be pronounced by the majority of the relevant public due to its smaller size and position in the arrangement of the contested sign. The pronunciation differs in the sound of the letter ‛S’ of the contested mark, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will associate the signs with the idea of pop music, the signs are conceptually highly similar. On the other hand, for another part of the public neither of the signs has a clear or specific meaning as a whole. However, as the said public will perceive the concept of the arrow device of the contested sign, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public. However, such conceptual difference will have a low impact on the general impression of the signs since it will be merely perceived as a fanciful way of representing the exclamation mark.

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. Therefore, the distinctiveness of the earlier mark 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).

As seen above, the goods at issue are similar and target the general public whose degree of attention is average. The earlier mark has a normal degree of inherent distinctive character. The signs have been found to be at least visually similar to an average degree and aurally highly similar whereas conceptually the signs are highly similar for a part of the public and not similar for another part of the public. Nevertheless, such conceptual difference will not have much impact for the purpose of differentiating the signs since as explained above it will be merely perceived as a fanciful way of representing the exclamation mark.

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.

In the present case, it is likely that the relevant consumer will perceive the contested sign as a variant or sub-brand of the earlier mark, configured in a different way according to the type of goods or services that it designates, this is particularly so because the contested sign contains the earlier mark’s verbal element in its entirety, which simultaneously constitutes most part of the dominant verbal element of the contested sign (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including likelihood of association on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 646 074. 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, 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

Benoit VLEMINCQ

María del Carmen COBOS PALOMO

Kieran HENEGHAN

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.