OPPOSITION Nо B 3 095 992

 

Mejerigaarden A/S, Sennelsvej 1, 7700 Thisted, Denmark (opponent), represented by Ieva Štāla, Bauskas iela 180, 1004 Rīga, Latvia (professional representative) 

 

a g a i n s t

 

Plant Planet Oy Ab, Pl 34, 00131 Helsinki, Finland (applicant), represented by Roschier Brands, Attorneys Ltd., Kasarmikatu 21 A, 00130 Helsinki, Finland (professional representative).

On 21/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 095 992 is upheld for all the contested goods, namely:

 

Class 30: Confectionery except confectionery products based on dates; Chocolate; all these products for children.

2.	European Union trade mark application No 18 048 422 is rejected for all the contested goods. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

On 26/09/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 048 422 ‘Green Planet Astronauts’ (word mark), namely against some of the goods in Class 30. The opposition is based on European Union trade mark registration No 12 197 554 ‘ASTRONAUT’ (word 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 30: Edible ices.

Following a limitation of the applicant of 09/03/2020 the contested goods are the following:

Class 30: Confectionery except confectionery products based on dates; Chocolate; all these products for children.

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 confectionery except confectionery products based on dates; chocolate; all these products for children are similar to a high degree to the opponent’s edible ices as these goods target the same public and satisfy the same or similar needs of consumers. They can also be offered in the same sales outlets. Furthermore, they are in competition and coincide in producer.

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 a high degree are directed at the public at large. The degree of attention is average.

c) The signs

ASTRONAUT	Green Planet Astronauts
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 is the word mark ‘ASTRONAUT’ and the contested sign is the word mark ‘Green Planet Astronauts’. The protection of a word mark concerns the word as such. Therefore, it is irrelevant if the earlier mark is in upper-case letters and the contested sign is in upper- and lower-case letters, as both signs are written in a manner that does not deviate from the usual way of capitalising letters.

The English word ‘ASTRONAUT’ and its plural ‘Astronauts’ will be understood by a substantial part of the relevant public as: a person (or persons) who is (or are) trained to travel in a spacecraft, since it is very close to the equivalent word in some of the official languages of the European Union (EU), such as astronauta (in Spanish, Polish and Portuguese), astronaute (in French), astronautti (in Finnish). However, it is likely that for the part of the public for which the equivalent word in its language is not close, for instance isűrhajós (in Hungarian), ‘ASTRONAUT’ and ‘Astronauts’ will not have a meaning. Since a conceptual difference between the signs may help to clearly differentiate between them, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that associates these words with the meaning explained above. It is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69). These words do not relate to the goods in question and are, therefore, distinctive to a normal degree.

As regards the contested sign, the word ‘GREEN’ is a basic English word commonly used in trade throughout the EU not only to refer to the colour green, but also to the organic or ecological nature of goods (21/05/2015, T‑197/14, GREEN’S / AMBAR-GREEN, EU:T:2015:313, § 55; 27/02/2018, R 008/2017‑4, GREEN FLUTE (fig.) / AMBAR-GREEN, § 29; 12/07/2018, R 288/2018‑5, GREENIC (fig.) / GREENICE (fig.), § 25), and therefore its distinctiveness is at most weak. The second verbal element of the contested sign, ‘PLANET’, is an English word referring to a large, round object in space that moves around a star, and is understood as such by the majority of the relevant public given the similarity between the equivalent words in other languages of the European Union, such as planète (in French), pianeta (in Italian), planeta (in Spanish, Polish and Portuguese), planet (in Dutch), planeetta (in Finnish). Since it has no meaning in relation to the relevant goods, it is distinctive.

As a whole the contested sign ‘Green Planet Astronauts’ may be perceived by the relevant public as the mere combination of the meaningful elements ‘Green Planet Astronauts’ and/or as referring to the notion of astronauts from the Green planet.

Visually and aurally, the signs coincide in the word ‘ASTRONAUT’, and irrespective of the different pronunciation rules in the different languages spoken by the part of the public under analysis, the signs also coincide in the sound of its letters. This is the entire earlier mark and the last verbal element of the contested sign but in singular form. They differ in the additional words ‘Green Planet’ as well as in the final letter ‘S’ in ‘Astronauts’ of the contested sign.

Even though consumers generally tend to focus on the first element of a sign when they encounter a trade mark, this argument cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (10/12/2008, T‑228/06, Giorgio Beverly Hills, EU:T:2008:558, § 28).

Therefore, the marks are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept of ‘ASTRONAUT, irrespective of the conceptual difference created by the additional words, ‘Green Planet’, of the contested sign. The contested sign will be perceived as the mere combination of the concepts conveyed by each of its words and/or as referring to the notion of ‘Astronauts’ coming from a planet called ‘Green’, where the additional words ‘Green Planet’ simply qualifies the noun. Therefore, the signs are 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 under assessment. 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).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

As set out above, the earlier mark has an average degree of inherent distinctiveness. The goods are similar to a high degree. The signs are visually and aurally similar to an average degree and conceptually similar to at least an average degree on account of the coinciding distinctive verbal element ‘ASTRONAUT’, which is the entire earlier mark and the singular form of the last word of the contested sign.

Although the additional elements ‘Green Planet’ of the contested sign will not go unnoticed by consumers, the coinciding word ‘ASTRONAUT’ is clearly perceivable in the contested sign (albeit in plural) and its meaning is only slightly altered by its additional words. Therefore, given the overall degree of similarity between the marks, it is likely that the relevant public will at least associate the contested sign with the earlier mark.

Indeed, it is highly conceivable that consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), since it will be applied to goods that are similar (to a high degree) to those protected by the earlier trade mark. In other words, consumers may confuse the origins of the goods at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the relevant public taken into consideration. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 197 554. 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

 

 

Marzena MACIAK

María del Carmen COBOS PALOMO

Michal KRUK

 

 

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.