OPPOSITION No B 3 091 078

Coop Italia Societa’ Cooperativa, Via del Lavoro 6-8, 40033 Casalecchio di Reno (Bologna), Italy (opponent), represented by Bugnion S.p.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

Централен кооперативен съюз, ул. ‘Г.С. Раковски’ № 99, 1000 София, Bulgaria (applicant).

On 05/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 078 is partially upheld, namely for the following contested goods and services:

Class 31: All goods in this class.

Class 35: Business analysis, research and information services; advertising, marketing and promotional services; business assistance, management and administrative services; retail services relating to food; retail services via catalogues related to foodstuffs; retail services relating to flowers; wholesale services for pharmaceutical, veterinary preparations; retail services in relation to fodder for animals; retail services in relation to foodstuffs; retail services in relation to veterinary articles; retail services in relation to veterinary preparations; retail services in relation to dietetic preparations; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; wholesale services in relation to foodstuffs; retail services relating to fruit.

2. European Union trade mark application No 18 053 801 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 3: All goods in this class.

Class 35: Online retail services relating to cosmetics; online retail store services relating to cosmetic and beauty products; mail order retail services for cosmetics; retail services relating to fragrancing preparations; retail services in relation to paints; retail services in relation to fashion accessories; retail services connected with the sale of subscription boxes containing cosmetics; wholesale services for sanitary preparations and medical supplies; retail services in relation to alcoholic beverages (except beer); retail services in relation to cocoa; retail services in relation to food cooking equipment; retail services in relation to preparations for making beverages; retail services in relation to sanitary installations; retail services in relation to threads; retail services in relation to toiletries; retail services in relation to chemicals for use in agriculture; retail services in relation to agricultural equipment; retail services in relation to earthmoving equipment; retail services in relation to fuels; retail services in relation to coffee; retail services in relation to hygienic implements for humans; retail services in relation to chemicals for use in horticulture; retail services in relation to chemicals for use in forestry; retail services in relation to chocolate; wholesale services in relation to fragrancing preparations; wholesale services in relation to cleaning preparations; wholesale services in relation to toiletries; wholesale services in relation to chemicals for use in agriculture; wholesale services in relation to chemicals for use in forestry; wholesale services in relation to chemicals for use in horticulture; wholesale services in relation to beauty implements for humans; wholesale services in relation to hygienic implements for humans; wholesale services in relation to agricultural equipment; wholesale services in relation to earthmoving equipment; wholesale services in relation to teas; wholesale services in relation to chocolate; wholesale services in relation to cocoa; wholesale services in relation to horticulture equipment.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 053 801 for the word mark ‘COOP Aetos BG’.

The opposition is based on the following trade marks:

1) European Union trade mark No 12 893 566 for the figurative mark ;

2) Italian trade mark No 1 532 005 for the figurative mark ;

3) Italian trade mark No 1 532 006 for the figurative mark ;

4) Italian trade mark No 2 015 000 081 617 for the figurative mark ;

5) Italian trade mark No 1 532 004 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.

Opposition based on earlier mark 1)

a) The goods and services

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

Class 31: Live animals, organisms for breeding; foodstuffs and fodder for animals; agricultural and aquacultural crops, horticulture and forestry products.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; commercial trading and consumer information services.

The contested goods and services are the following:

Class 3: Essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; fodder; live animals, organisms for breeding.

Class 35: Business analysis, research and information services; advertising, marketing and promotional services; business assistance, management and administrative services; online retail services relating to cosmetics; retail services relating to food; retail services via catalogues related to foodstuffs; online retail store services relating to cosmetic and beauty products; mail order retail services for cosmetics; retail services relating to fragrancing preparations; retail services in relation to paints; retail services in relation to fashion accessories; retail services relating to flowers; retail services connected with the sale of subscription boxes containing cosmetics; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services in relation to alcoholic beverages (except beer); retail services in relation to cocoa; retail services in relation to food cooking equipment; retail services in relation to fodder for animals; retail services in relation to foodstuffs; retail services in relation to preparations for making beverages; retail services in relation to sanitary installations; retail services in relation to veterinary articles; retail services in relation to veterinary preparations; retail services in relation to dietetic preparations; retail services in relation to threads; retail services in relation to toiletries; retail services in relation to chemicals for use in agriculture; retail services in relation to agricultural equipment; retail services in relation to earthmoving equipment; retail services in relation to fuels; retail services in relation to coffee; retail services in relation to hygienic implements for humans; retail services in relation to chemicals for use in horticulture; retail services in relation to chemicals for use in forestry; retail services in relation to chocolate; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; wholesale services in relation to fragrancing preparations; wholesale services in relation to cleaning preparations; wholesale services in relation to toiletries; wholesale services in relation to chemicals for use in agriculture; wholesale services in relation to chemicals for use in forestry; wholesale services in relation to chemicals for use in horticulture; wholesale services in relation to beauty implements for humans; wholesale services in relation to hygienic implements for humans; wholesale services in relation to agricultural equipment; wholesale services in relation to earthmoving equipment; wholesale services in relation to teas; wholesale services in relation to chocolate; wholesale services in relation to foodstuffs; wholesale services in relation to horticulture equipment; wholesale services in relation to cocoa; retail services relating to fruit.

It is to be noted that according to Article 33(7) EUTMR, goods and 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 and 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 3

The contested essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations and the opponent’s goods in Class 31 differ in nature, purpose, distribution channels, producers, relevant public and methods of use. Furthermore, they are neither complementary nor in competition. The mere fact that the contested goods relate to fragrance and aromatic products, and as such may be considered related to the opponent’s horticulture and forestry products in Class 31 is not sufficient for a finding of similarity. Even though the opponent’s horticulture and forestry products are the raw materials for the production of these contested goods, they are subjected to a significant transformation process and are not the defining components for the form, character, quality or value of the finished products. Moreover, the public does not expect the contested goods to be produced by, or under the control of, the producer of the opponent’s goods. Therefore, they are dissimilar.

In addition, the contested essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations have nothing in common with the opponent’s services in Class 35 (which are essentially, business-oriented and commercial services). Apart from being different in nature, that is, services are intangible whereas goods are tangible, these goods and services serve different needs. In addition, they target different consumers, do not share the same distribution channels nor originate from the same companies. Furthermore, they are neither in competition nor complementary. For these reasons, they are dissimilar.

Contested goods in Class 31

Agricultural and aquacultural crops, horticulture and forestry products; fodder; live animals, organisms for breeding are identically contained in both lists of goods (including synonyms).

Contested services in Class 35

Business analysis, research and information services; business assistance, management and administrative services are identically contained in both lists of services.

When comparing the opponent’s business management with the contested advertising and promotional services it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. The purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice about how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services, and therefore the relevant public may believe that these two services have the same professional origin. Consequently, the aforementioned services have the same purpose, they usually coincide in provider and relevant public and, therefore, they are similar to a low degree (22/11/2011, R 2163/2010‑1, INNOGAME / INNOGAMES, § 13-17).

The contested marketing is similar to a low degree to the opponent’s business research as they have the same purpose. In addition, they usually coincide in provider and relevant public.

Retail and wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services relating to food; retail services via catalogues related to foodstuffs; retail services relating to flowers; retail services in relation to fodder for animals; retail services in relation to foodstuffs; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; wholesale services in relation to foodstuffs; retail services relating to fruit are similar to an average degree to the opponent’s horticultural and forestry products; foodstuffs and fodder for animals in Class 31.

Furthermore, a low degree of similarity between the goods sold at retail/wholesale and the other goods may be sufficient to find a low degree of similarity with the retail/wholesale services provided that the goods involved are commonly offered for sale in the same specialised shops or sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

Therefore, the contested wholesale services for pharmaceutical, veterinary preparations; retail services in relation to veterinary articles; retail services in relation to veterinary preparations (listed twice); retail services in relation to dietetic preparations are similar to a low degree to the opponent’s foodstuffs for animals in Class 31. Pharmaceutical preparations refer to any kind of medicines, that is, a substance or combination of substances for treating or preventing disease in humans or animals; veterinary preparations are, in general, substances or preparations that can be prepared in pharmacies and are used in medical treatments or in order to improve the health of animals; veterinary articles are items or objects used in medical treatments or in order to improve the health of animals; dietetic preparations are substances prepared for special dietary requirements with the purpose of treating or preventing disease in humans or animals. These contested services concerning the aforementioned goods and the opponent’s foodstuffs for animals are commonly distributed through the same channels, such as veterinary clinics and specialised pet shops. These establishments offer for sale wide ranges of products for animals, comprising veterinary preparations, pest control preparations, supplements and additives for animal foods, but also foodstuffs for animals with normal and special dietary requirements (allergies, intolerances). The diet of animals is frequently the subject of medical consultations in order to prevent diseases and obesity, and veterinary surgeons often sell foodstuffs after medical appointments. In addition, they also target the same relevant public.

The remaining contested services in Class 35 (retail and wholesale services pertaining to, inter alia, chemical preparations, cosmetics, agricultural equipment, fashion accessories, beverages, foodstuffs prepared or preserved for consumption) and the opponent’s live animals, organisms for breeding; foodstuffs and fodder for animals; agricultural and aquacultural crops, horticulture and forestry products are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail/wholesale services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since part of the contested goods sold at retail and wholesale have nothing in common with the other goods (industrial chemicals, agriculture and earthmoving equipment, sanitary installations, fashion accessories) and they and the other part of the goods concerned (e.g. cocoa, coffee, tea, chocolate) are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, the opponent’s various agricultural, horticulture and forestry products (including fresh fruits and vegetables) are usually offered for sale in specially equipped sections of supermarkets (e.g. in fridges), which prevent the products from rotting and wilting, whilst the applicant’s foodstuffs are stored in normal conditions, at room temperature. Indeed, in large retail stores the goods at issue are sold in specialist departments, which, even though they may be close, are nonetheless separate. In these circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51. Furthermore, these principles set out above in relation to retail services apply as well to the various services rendered that revolve exclusively around the actual sale of goods, such as wholesale services.

These contested services are also dissimilar to the remaining opponent’s services in Class 35, which are, generally speaking, aimed at supporting or helping other businesses to do or improve business. These services differ in their purpose, nature and methods of use. Furthermore, they do not have the same relevant public, producers or distribution channels. They are neither complementary nor 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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. business management services).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	COOP Aetos BG
Earlier mark 1	Contested sign

The relevant territory is 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding verbal element ‘COOP’ is not meaningful in certain territories (and consequently, is distinctive), for example in those countries where Polish and Lithuanian are understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and Lithuanian-speaking parts of the public.

The earlier mark is a figurative mark composed of a horizontal eye-shaped background (an ellipse with pointed ends) in red containing the white verbal element ‘COOP’, which is depicted in slightly stylised lower-case letters. However, the stylisation of the verbal element is inherently distinctive to at most a low degree. An ellipse is a basic geometrical shape that is commonly used in trade to highlight the information contained within (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). The figurative background is a relatively simple element, which is inherently distinctive to at most a low degree. Furthermore, the earlier mark consists 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).

The earlier mark has no element that could be considered clearly more dominant (eye-catching) than other elements.

The contested sign is a word mark, ‘COOP Aetos BG’. The verbal elements ‘COOP’ and ‘Aetos’ are meaningless and are, therefore, distinctive. The upper-case letters ‘BG’ can be understood by the relevant public as the abbreviation for Bulgaria, since it is considered common knowledge that trade marks often have indications of the origin of the goods and services, which can be written as an abbreviation or the country code of the Member State. Therefore, this verbal element of the contested sign indicates that the goods and services originate from Bulgaria, and so is non-distinctive.

Moreover, for word marks, it is the word as such that is protected and not its written form. Therefore, in principle, it is irrelevant whether the contested sign is represented in upper- or lower-case letters. For the same reason, word marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in verbal element ‘COOP’, which is distinctive and constitutes the sole verbal element of the earlier mark and the first verbal element of the contested sign. They differ in the remaining verbal elements, the distinctive word ‘Aetos’ and the non-distinctive letters ‘BG’ of the contested sign, which have no counterparts in the earlier mark. However, the fact that these elements are placed in second and third position, respectively, leads to a lesser impact within the overall impression, given that consumers focus more attention on the beginning of a sign, as explained above. The signs also differ in the figurative elements of the earlier mark; however, they are rather decorative and distinctive to at most a low degree and, therefore, have limited trade mark significance.

Despite their differing lengths, considering the stronger impact of the initial and independent distinctive element of the contested sign, which entirely reproduces the only verbal element of the earlier mark, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in sound of the letters ‛COOP’, present identically in both signs. The pronunciation differs in sound of the letters ‛AETOS’ ‘BG’ of the contested sign, which have no counterparts in the earlier mark. The figurative elements of the earlier mark are not subject to a phonetic assessment.

Despite their differing lengths, considering the stronger impact of the initial and independent distinctive element of the contested sign, which entirely reproduces the only verbal element of the earlier mark, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the public in the relevant territory will perceive the meaning of the element ‘BG’ of the contested sign, this concept is non-distinctive and not capable of indicating commercial origin in that mark. The attention of the relevant public will be attracted by the additional elements of the marks, which have no meaning from the perception of that public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

The opponent argued that the earlier trade mark enjoys ‘a strong distinctiveness’ because it is quite original, and it is not descriptive, allusive or laudatory in relation to the goods and services at issue. However, a trade mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

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 and services 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

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 signs and between the goods or services identified. It must be appreciated globally, taking into account all the 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 earlier mark has a normal degree of distinctiveness. The relevant public is the general public and professional public, and the degree of attention may vary from average to high. The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The global assessment will proceed for only the goods and services, which have been found identical and similar to varying degrees.

The verbal element ‘COOP’ of the earlier mark is entirely included in the contested sign, in which it is recognisable as such, as it forms a separate and distinctive element. Two marks are similar when they are at least partly identical in one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55). Therefore, on account of this coinciding element, the signs are visually and aurally similar to an average degree. Likewise, despite the different additional verbal elements of the contested sign, ‘Aetos’ and ‘BG’, and the figurative elements of earlier mark 1), and the fact that the conceptual comparison is not possible, the overall impression of the signs on the relevant public is similar.

Account is 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 and services covered are from the same or economically linked undertakings.

The relevant goods and services in Classes 31 and 35 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional words, such as ‘Aetos’ and ‘BG’ as in the case at issue. Indeed, due to the use of the identical element ‘COOP’, 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 and services that it designates.

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, the low degree of similarity of some goods and services is offset by the fact that the earlier mark is entirely reproduced as the first verbal element of the contested sign.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including likelihood of association, on the part of the Polish- and Lithuanian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 and services found to be identical or similar to varying degrees to those of earlier trade mark 1).

The rest of the contested goods and services are dissimilar to the goods and services of earlier mark 1). 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 earlier mark 1) and directed at these goods and services cannot be successful.

Opposition based on earlier marks 2), 3), 4) and 5)

a) The goods and services

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

Earlier marks 2, 3 and 5

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 31: Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants and flowers; foodstuffs for animals, malt.

Class 35: Advertising; business management; business administration; office functions.

Earlier mark 4

Class 35: Advertising; business management; business administration; office functions.

Considering that the Office confirms the likelihood of confusion based on earlier mark 1) for some of the contested goods and services, as established above, the opposition remains directed against the following contested goods and services:

Class 3: Essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations.

Class 35: Online retail services relating to cosmetics; online retail store services relating to cosmetic and beauty products; mail order retail services for cosmetics; retail services relating to fragrancing preparations; retail services in relation to paints; retail services in relation to fashion accessories; retail services connected with the sale of subscription boxes containing cosmetics; wholesale services for sanitary preparations and medical supplies; retail services in relation to alcoholic beverages (except beer); retail services in relation to cocoa; retail services in relation to food cooking equipment; retail services in relation to preparations for making beverages; retail services in relation to sanitary installations; retail services in relation to threads; retail services in relation to toiletries; retail services in relation to chemicals for use in agriculture; retail services in relation to agricultural equipment; retail services in relation to earthmoving equipment; retail services in relation to fuels; retail services in relation to coffee; retail services in relation to hygienic implements for humans; retail services in relation to chemicals for use in horticulture; retail services in relation to chemicals for use in forestry; retail services in relation to chocolate; wholesale services in relation to fragrancing preparations; wholesale services in relation to cleaning preparations; wholesale services in relation to toiletries; wholesale services in relation to chemicals for use in agriculture; wholesale services in relation to chemicals for use in forestry; wholesale services in relation to chemicals for use in horticulture; wholesale services in relation to beauty implements for humans; wholesale services in relation to hygienic implements for humans; wholesale services in relation to agricultural equipment; wholesale services in relation to earthmoving equipment; wholesale services in relation to teas; wholesale services in relation to chocolate; wholesale services in relation to cocoa; wholesale services in relation to horticulture equipment.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark 2) Earlier trade mark 3) Earlier trade mark 4) Earlier trade mark 5)	COOP Aetos BG
Earlier trade marks	Contested sign

The relevant territory is Italy.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to weak elements.

The verbal element ‘COOP’ present in all the signs will be understood by the Italian public as an abbreviation for the word ‘cooperative’ and is designated as a business or organisation run by the people who work for it, or owned by the people who use it (information extracted from Collins Italian-English Dictionary and Garzanti Linguistica on 23/07/2020 at https://www.collinsdictionary.com/dictionary/italian-english/coop and http://www.garzantilinguistica.it/ricerca/?q=COOP). In addition, this word may refer to a cooperative society within the meaning of an association of agriculturists or, more broadly, an association providing services of various kinds to its members (by analogy, 14/11/2016, R 2041/2015‑5, NOVIUS, La performance azote signée coop (fig.) / NOVUS et al., § 21). Therefore, the verbal element ‘COOP’, in relation to the goods and services at issue, namely various cleaning and skincare preparations, foodstuffs and the other plant-based products, retail, wholesale, advertising and business-related services, suggests that the goods and services originate from, or are rendered by, a distribution outlet organised as a cooperative association, rather than a private or public company. In addition, these establishments usually provide diverse advertising and business-related services to its members and customers.

In assessing the distinctiveness of the coinciding element ‘COOP’, the Opposition Division takes into account clarification from the judgment of 24/05/2012, C‑196/11, F1-Live, EU:C:2012:314, that is, in proceedings opposing the registration of a European Union trade mark, the validity of earlier trade marks may not be called into question. As the word ‘COOP’ is the only verbal element in the earlier marks and the common element in all the signs, for the purpose of the present proceedings the element ‘COOP’ is deemed to be endowed with a low degree of distinctiveness.

Earlier marks 2 and 3 are figurative marks composed of a horizontal eye-shaped background (an ellipse with pointed ends) in red, containing the white verbal element ‘COOP’, which is depicted in slightly stylised lower-case letters. An ellipse is a basic geometrical shape that is commonly used in trade to highlight the information contained within (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). This figurative element is essentially ornamental and decorative, and will have a limited trade mark significance. Earlier mark 5 is also a figurative mark, which differs from earlier marks 2 and 3 merely in that the ellipse background is black instead of red. Earlier mark 4 is a figurative mark consisting of a verbal element ‘COOP’ written in stylised red lower-case letters. However, the stylisations of the earlier marks are not particularly striking and are distinctive to at most a low degree.

Furthermore, 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).

The earlier marks have no elements that could be considered clearly more dominant than other elements.

The contested sign is a word mark, ‘COOP Aetos BG’. The verbal element ‘COOP’ has a meaning, as mentioned above. Given that the goods and services at issue consist of cleaning and skincare preparations, foodstuffs and the other plant-based products, retail, wholesale and business-related services, the verbal element ‘COOP’ suggests that the goods and services originate from, or are rendered by, a distribution outlet organised as a cooperative association, rather than a private or public company. The verbal element ‘Aetos’, in Italian, belongs to scientific terminology and not to common or current language. The Italian public, without having studied ancient Greek or without having any particular technical knowledge in the field of architecture, would not recognise this term (by analogy, 19/09/2019, T‑359/18, TRICOPID / TRICODIN (fig.), EU:T:2019:626, § 112-113). Therefore, this verbal element is meaningless for the vast majority of the Italian public, and it, therefore, has an average degree of inherent distinctiveness. The Opposition Division will continue the examination in relation to this part of the Italian public only.

The upper-case letters ‘BG’ will be understood by a substantial part of the relevant public as the abbreviation for the Italian city of Bergamo. In addition, the other part of the relevant public may think that ‘BG’ designates the country of Bulgaria. Therefore, the verbal element ‘BG’ of the contested sign, regardless of whether it will be associated with Bergamo or Bulgaria, indicates that the goods and services originate from Bergamo or Bulgaria, and so is non-distinctive.

Moreover, for word marks, it is the word as such that is protected and not its written form. Therefore, in principle, it is irrelevant whether the contested sign is represented in upper- or lower-case letters. For the same reason, word marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the earlier marks and the contested sign are similar to the extent that they all contain the same word ‘COOP’. However, the contested sign differs from all the earlier marks in the verbal elements ‘Aetos’ and ‘BG’, placed in the second and third position respectively, which have no counterparts in the earlier marks. In addition, the signs differ in the figurative elements of the earlier marks, which have no counterparts in the contested sign. However, these elements have a limited trade mark significance, as explained above.

While consumers generally tend to focus on the first element of a sign when encountering a trade mark, this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them (08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 29; 14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 50; 06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48). In particular, the beginning of a sign may attract less attention when it has limited distinctiveness. The coinciding verbal element ‘COOP’, as explained above, is deemed to be endowed with only a low degree of distinctiveness and is, consequently, a weak element with a very limited capacity to indicate the commercial origin of the goods and services. Moreover, the contested sign contains additional differing verbal elements, ‘Aetos’, which has an average degree of distinctiveness, and ‘BG’, albeit non-distinctive, as mentioned above.

Considering all the above, the overall visual impression created by the contested sign has clearly perceptible visual differences from each of the earlier marks and the commonality in the weak element ‘COOP’ has a limited impact on consumers’ perception of the signs, even taking into account that the contested sign fully incorporates the only verbal element of earlier marks.

Therefore, the signs are visually similar to at most a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛COOP’, present identically in all the signs. The pronunciation differs in the sound of the words ‘Aetos’ and ‘BG’ of the contested sign. The figurative elements in the earlier marks will not be referred to aurally by the relevant consumers.

Taking into account, in particular, that the coinciding element ‘COOP’ possesses only a low degree of distinctiveness, the signs are aurally similar to at most a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of the marks. The earlier marks and the contested sign will be associated with the same meaning as far as the verbal element, ‘COOP’, present in all the signs, is concerned. However, this element possesses only a low degree of distinctiveness and so this commonality may only lead to a low degree of conceptual similarity. The relevant public will also note the presence of the non-distinctive element ‘BG’ and the element ‘Aetos’, even though, for them, they will be meaningless.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

The opponent argued that the earlier trade marks enjoy ‘a strong distinctiveness’ because they are quite original and are not descriptive, allusive or laudatory in relation to the goods and services at issue. However, a trade mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). In addition, as explained above, the word ‘COOP’ has a certain meaning for the Italian public that results in its low inherent distinctive character.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all the goods and services in question.

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. It must be appreciated globally, taking into account all the 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‑25/95, Sabèl, EU:C:1997:528, § 22).

As concluded above, the contested goods and services were assumed to be identical to the opponent’s goods and services and they target the public at large and a professional public, whose degree of attention varies from average to high. The degree of distinctiveness of the earlier marks is low.

The earlier marks and the contested sign are similar insofar as they have the verbal element ‘COOP’ in common. However, as explained in section c), this commonality can only lead to – at most – a low degree of visual, aural and conceptual similarity as this element is inherently weak for the relevant goods and services from the perception of the Italian public.

Taking into account that the contested sign contains the additional verbal elements ‘Aetos’ (distinctive to an average degree), and ‘BG’ (albeit non-distinctive) that clearly differentiate it from the earlier marks, which contain differing figurative elements, and are however distinctive to at most a low degree. Taking into consideration all the circumstances of the case, it can be concluded that the differences between the earlier marks and the contested sign clearly outweigh the similarities.

Based on the overall assessment of the earlier marks and the contested sign, the Opposition Division takes the view that the coincidence in the element ‘COOP’, which has a weak distinctive character, is not sufficient to trigger a likelihood of confusion. The differences between these signs will allow the public to safely distinguish between the marks. Moreover, consumers are not likely to make assumptions regarding the commercial origin of the goods and services or, indeed, economic links between commercial undertakings, merely on the basis of the coincidence in weak elements, which may merely suggest the type of entity involved in the production of the relevant goods and services.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that all the goods and services were assumed to be identical cannot, in this case, compensate for the differences between the signs.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the Italian public. Therefore, the opposition must be rejected also insofar as it is based on earlier marks 2), 3), 4) and 5).

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Jakub MROZOWSKI

Patricia LOPEZ FERNANDEZ DE CORRES

Monika CISZEWSKA

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.