OPPOSITION No B 3 092 848

Golosinas de Mexico, S.A. de C.V., Prolongación Av. Vallarata n° 681, Colonia El Bajío, 45010 Zapopan, Jalisco, Mexico (opponent), represented by Aguilar & Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Mhd wael Msallam, Dümptener Str.24, 45476 Mülheim an der Ruhr, Germany (applicant).

On 17/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 848 is partially upheld, namely for the following contested goods:

Class 29: Edible oils and fats; Soups and stocks.

Class 30: Salts, seasonings, flavourings and condiments.

2. European Union trade mark application No 18 061 000 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 061 000 (figurative mark), namely against some of the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 4 657 731 (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.

1. The goods

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

Class 30: Sauces (condiments); spices.

The contested goods are the following:

Class 29: Edible oils and fats; Soups and stocks.

Class 30: Salts, seasonings, flavourings and condiments; Sugars, natural sweeteners, sweet coatings; Chocolate flavourings; Chocolate fondue; Chocolate for toppings; Chocolate spreads; Chocolate spreads for use on bread; Chocolate topping; Natural sweetener; Natural sweeteners; Sweeteners (Natural -); Natural sweetening substances.

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.

Contested goods in Class 29

The contested edible oils and fats are similar to the opponent’s sauces (condiments). They can have the same purpose, methods of use and relevant public. Moreover, they are in competition.

The contested soups and stocks are similar to the opponent’s spices. They may have the same purpose, as goods such as dehydrated stock cubes extracts for soups are commonly used to flavour food. They usually have the same commercial origin, distribution channels and relevant public. Furthermore, they are in competition.

Contested goods in Class 30

The contested seasonings include, as a broader category, the opponent's spices. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent's goods.

The contested condiments include, as a broader category the opponent's sauces (condiments). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent's goods.

The contested salts are similar to the opponent's spices since they have the same purpose and distribution channels. Moreover, they coincide in relevant public and producers.

The contested flavourings are similar to the opponent’s spices. Flavouring refers to the introduction of a new flavour to a food item by altering or modifying that particular food’s original flavour. A spice is a vegetal product that adds an aromatic or pungent taste that is used for flavouring while cooking. Spices and flavourings are both used for flavouring food. It is also possible that one can substitute the other. While certain types of flavourings (for example, artificial flavourings) may be preferred by professionals, and natural flavourings (for instance, spices or vegetables) may be preferred by general consumers, this does not change the fact that both address both target publics. The goods in question have the same method of use, are usually sold in the same, or nearby, sections in supermarkets or grocery stores and target the same relevant consumers.

The remaining contested goods are sugars, natural sweeteners, sweet coatings; chocolate flavourings; chocolate fondue; chocolate for toppings; chocolate spreads; chocolate spreads for use on bread; chocolate topping; natural sweetener; natural sweeteners; sweeteners (natural -); natural sweetening substances, which are all dissimilar to the opponent’s sauces (condiments); spices. These goods are not manufactured by the same producers, have different methods of use and are not complementary. In addition, the fact that the contested goods are used in some way in conjunction with, or as ingredients of, the opponent’s goods is not in itself sufficient to find them similar (see judgment of 26/10/2011, T-72/10, ‘Naty’s, paragraphs 35-36).

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

3. The signs

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

The verbal element ‘tajin’ of the earlier mark is not meaningful in certain territories, such as Sweden and Denmark. Although the element ‘tujan’ in the contested sign may have a meaning for a part of this public, meaning the definitive form of a small cypress tree, for a majority of the public this word has no meaning. Consequently, and for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on this latter part of the Swedish- and Danish-speaking part of the public.

The earlier mark is a figurative mark, consisting of the stylised verbal element ‘tajin’ in green, lower case letters obliquely inclined upwards with a red line similar to an apostrophe on top of the letter ‘i’ in the mark. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark, consisting of the verbal element ‘tujan’ in slightly stylised, white lower case letters on a green background with some figurative elements; a yellow sun and some very weakly appearing branches with leaves, and an element with foreign letters.

The verbal element ‘tujan’ has no meaning for the public under assessment and is, therefore, distinctive.

The depiction of the sun will be perceived as such. It has no direct meaning in relation to the relevant goods and is, therefore, distinctive.

The second element of the contested sign is likely to be perceived by the public as written in an unknown alphabet, for example Arabic. It will not be understood by the majority of the relevant public but will rather be perceived as a figurative element. It is distinctive, as it does not describe, allude to or is otherwise weak for the relevant goods.

The green rectangular background in the mark is a less distinctive figurative element of a purely decorative nature. The very weakly appearing branches with leaves on the background are - if perceived - distinctive, as they have no meaning in relation to the goods in question.

Moreover, there is an indication ‘®’ in the contested sign, meaning that the mark is registered. Such an informative indication is not considered part of the mark. Consequently, this symbol will not be taken into account in the comparison of the signs.

The contested sign has no element that could be considered clearly dominant.

When signs consists of both verbal and figurative elements, 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).

Visually, the signs coincide in the letters ‘t*j*n’ in the verbal element of the earlier mark and the verbal element of the contested sign. Moreover, they coincide in an additional letter ‘a’ in different positions. Both verbal elements consists of five letters and are in lower case letters throughout. Moreover, the signs coincide in the green colour. However, the marks differ in one letter (‘i’ in the earlier mark versus ‘u’ in the contested sign), in the figurative element of the sun, which is distinctive, the green rectangular background, which is less distinctive, and the figurative element with the foreign letters of the contested sign. They also differ in the overall stylisation of the signs and in some colours.

Therefore, the signs are visually similar to a degree below average.

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 ‘t*j*n*, present identically in both signs. Both verbal elements consists of five letters and will be pronounced in two syllables, ‘TA-JIN’ respectively ‘TU-JAN’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of one or some figurative elements in the contested sign, as explained above, the other sign has no meaning in that territory. 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.

4. 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.

5. 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).

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, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. They are directed at the public at large and the degree of attention is average.

The signs are visually similar to a degree below average, aurally similar to an average degree and conceptually not similar. The earlier mark has a normal degree of distinctiveness.

As explained in section c) of this decision, the signs coincide in four out of five letters in their distinctive verbal elements ‘tajin’ and ‘tujan’, with three in the same sequence. 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). Therefore, the differences between these verbal elements in the signs, which appear in the middle of the signs, are likely to be overlooked by the public. As the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, as described above, the differences between the mark are not sufficient to counterbalance their similarities. The contested sign lacks elements that could allow consumers to safely differentiate between the signs.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish- and Danish-speaking part 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 found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. 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 directed at these goods cannot be successful.

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

The Opposition Division

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Christian STEUDTNER

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.