OPPOSITION No B 3 094 301

Wadi Europe, S.A., Avenue Louise 54, 1050 Bruxelles, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Almozara Company For Food Import Gargaresh, Tripoly, State Of Libya (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3ºizda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 27/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 301 is upheld for all the contested goods.

2. European Union trade mark application No 18 048 924 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 18 048 924 (figurative mark). The opposition is based on, inter alia, international trade mark registration No 1 386 051 designating the European Union ‘AL WADI’ (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.

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 1 386 051 designating the European Union.

a) The goods

The goods on which the opposition is based are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried, cooked and deep-frozen fruit and dairy-based beverages; jellies, jams, compotes; edible oils and fats; preserved foodstuffs consisting primarily of meat, fish, poultry, game and vegetables not included in other classes.

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

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 29: Meat; fresh poultry; meat extracts; dried fruits; cooked fish; almond jelly; fruit jams; eggs; dairy products; edible oils and fats.

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 meat; fresh poultry; meat extracts; dried fruits; cooked fish; almond jelly; fruit jams; dairy products; edible oils and fats are identical to the opponent’s meat, poultry; meat extracts; dried fruit and dairy-based beverages; jellies, jams; edible oils and fats; preserved foodstuffs consisting primarily of fish, not included in other classes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested eggs and the opponent’s poultry can coincide in their origin, target the same relevant public and are distributed through the same channels. Therefore, they are similar to a low degree.

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 low degree are directed at the public at large.

The degree of attention is considered average.

c) The signs

AL WADI
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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier trade mark is a word mark. The opponent explained that the words ‘AL WADI’ in Arabic mean ‘the valley’. Although there is an Arabic-speaking community living throughout the relevant territory, the substantial part of the relevant public will perceive the words ‘AL WADI’ as meaningless. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public who perceives the words ‘AL WADI’ as fanciful without attributing any particular meaning to them.

Since the verbal element ‘AL WADI’ does not evoke any concept, it has an average degree of distinctiveness.

The contested sign is a figurative trade mark which contains the verbal element ‘ALWADI’, depicted in standard green upper-case letters, and three elements that are composed of characters depicted in a script that resembles Arabic. The contested sign also contains the number ‘1’ and a lower-case letter ‘e’, depicted in a standard yellow typeface. The element at the bottom of the sign is placed inside an oval green background with a yellow frame. The contested sign also contains figurative elements: a depiction of four cows, a meadow with trees in the background, and a glass of milk.

The verbal element ‘ALWADI’ in the contested sign has no meaning in relation to the relevant goods and it has an average degree of distinctiveness.

The verbal elements that suggest a non-Latin script and the letter ‘e’ have no meaning in relation to the relevant goods and have an average degree of distinctiveness. The number ‘1’ may be perceived as an indication of being the first or the best and it alludes to good or premier quality. Consequently, it has a low degree of distinctiveness.

The figurative elements: the images of cows, the meadow in which the cows pasture and the glass of milk are fairly common for milk and milk products, they allude to the nature of the contested dairy products; meat and have a low degree of distinctiveness in relation to these goods. However, they are not related to the remaining contested goods, namely fresh poultry; meat extracts; dried fruits; cooked fish; almond jelly; fruit jams; eggs; edible oils and fats, and have an average degree of distinctiveness in relation to these goods. The oval background in the lower part of the contested sign on which the verbal element is placed is a banal geometrical shape, and is merely used as a background. Therefore, it is non-distinctive.

The opponent claims that the verbal element ‘ALWADI’ is the dominant element in the contested sign. However, it is the Office’s practice to restrict the notion of dominant elements to the visual impact of the elements of a sign and so the dominant character of a component of a sign is mainly determined by its position, size, dimensions and/or use of colours relating to how they affect its visual impact. Although the verbal element ‘ALWADI’ is the only element in Latin script and consequently the only verbal element by which the consumer will refer to the contested sign, it is not visually outstanding or dominant given its size, position and/or colour in the contested sign. The same applies to the other elements as there is no element in the contested sign that is more eye-catching than the other element(s). Therefore, contrary to the opponent’s argument, the contested sign has no element that could be considered clearly more dominant than other elements.

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 the present case, despite the presence of various elements in the contested sign, the only verbal element by which the relevant public will refer to the contested sign is the verbal element ‘ALWADI’.

Visually, the signs coincide in the verbal elements ‘AL WADI’ / ‘ALWADI’, which, despite the space in the earlier mark, are composed of identical letters. The signs differ in the other elements of the contested sign described above, namely the three elements that are composed of characters depicted in a script that resembles Arabic, the number ‘1’ and letter ‘e’, the figurative elements (the cows, the meadow with trees in the background, the glass of milk and the oval background).

However, the figurative elements have less impact on the consumers since generally consumers refer to the signs by their verbal elements and in the present case the verbal elements that the relevant consumer will be able to read are the elements in Latin script (‘ALWADI’ and ‘1 e’). Therefore, the signs are visually similar at least to a low 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 ‛ALWADI’, present identically in both signs. The figurative elements and the elements in a script that resembles Arabic are not subject to a phonetic assessment since they will not be pronounced when referring to the contested sign verbally. Furthermore, it has been confirmed by case-law that consumers naturally tend to shorten long marks in order to reduce them to elements that are the easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). Therefore, although the elements ‘1’ and ‘e’ present in the contested sign will be understood by the relevant public, they are not likely to be pronounced when referring to the contested sign verbally, and the only element by which the relevant public will refer to the contested sign is the verbal element ‘ALWADI’. As this verbal element is pronounced identically to the earlier mark, the signs are aurally at least highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the figurative elements in the contested sign as explained above, the earlier trade mark has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

In the present case nearly all the goods are identical, with the exception of the contested eggs, which are similar to a low degree to the opponent’s goods. The relevant goods target the public at large, who displays an average degree of attentiveness. The signs are visually similar at least to a low degree, aurally at least highly similar and conceptually not similar. However, the lack of conceptual similarity is mainly due to the concept evoked by figurative elements in the contested sign, which generally have less impact than the verbal elements and, moreover, in the contested sign the figurative elements are weak in relation to some of the goods (dairy products, meat). The distinctiveness of the earlier trade mark is normal.

Although the contested sign contains various elements, the only element by which the relevant public will refer to the contested sign is its verbal element ‘ALWADI’, which is visually nearly identical and aurally identical to the earlier mark ‘AL WADI’. Although the differing elements in the contested sign have impact on the conceptual perception of the contested sign, overall they have less impact and their presence in the contested sign does not prevent consumers from perceiving the contested sign as its verbal element ‘ALWADI’. Consequently, the abovementioned differences between the signs are not capable of counteracting the similarity between the signs due to the verbal element ‘ALWADI’ in the contested sign and the earlier mark ‘AL WADI’ being visually nearly identical and aurally identical.

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. Furthermore, it is common practice on the relevant market for undertakings to make variations of their trade marks, for example by adding verbal or figurative elements to them, in order to denote new product lines or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public will mentally register the fact that they share the element ‘AL WADI’ / ‘ALWADI’ and perceive the contested sign as a variation of the earlier mark, or vice versa.

Indeed, 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 or services 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 who perceives the verbal elements ‘AL WADI’ / ‘ALWADI’ as fanciful meaningless terms. 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.

Furthermore, applying the abovementioned principle of interdependence, the Opposition Division considers that the likelihood of confusion also exists in relation to the goods that are similar to only a low degree, because the contested sign incorporates entirely the earlier mark as the only verbal element that the relevant public will read and perceive. Therefore, the overall similarity between the marks (in particular from the aural perspective) is considered sufficiently high to offset the low degree of similarity between some of the goods (eggs).

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 386 051 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 1 386 051 designating the European Union ‘AL WADI’ (word mark) 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 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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.