OPPOSITION Nо B 3 093 548

 

Italgelatine S.P.A., Strada Statale Alba Bra, 201, 12069 Santa Vittoria D'Alba (CN), Italy (opponent), represented by Buzzi, Notaro & Antonielli D'oulx, Corso Vittorio Emanuele II, 6, 10123 Torino, Italy (professional representative) 

 

a g a i n s t

 

Linsenlinsen, Westbourne Gardens 50b, London W25ns, United Kingdom (applicant).

On 27/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.

Opposition No B 3 093 548 is upheld for all the contested goods, namely: Class 30: Substitutes (chocolate -); chocolate biscuits; chocolate flavourings; chocolate spreads; instant cocoa powder; chocolate creams; prepared cocoa and cocoa-based beverages; chocolate coffee; chocolate brownies; cocoa drinks; chocolates; chocolate beverages; chocolate mousses; chocolate sweets; chocolate bars; drinks based on cocoa; drinking chocolate; chocolate; cocoa powder; cocoa products; cocoa preparations; chocolate wafers; preparations based on cocoa; cocoa beverages with milk; cocoa-based beverages; chocolate pastes; imitation chocolate; chocolate powder; chocolate sauce; cocoa; drinking cocoa paste; drinks containing cocoa; cocoa mixes; beverages made from cocoa; chocolate shells; chocolate coating; candy with cocoa; aerated chocolate; cocoa beverages; beverages (cocoa-based -).

 

2.	European Union trade mark application No 18 073 120 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

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 073 120 for the word mark ‘BOCA LABO’, namely against some of the goods in Class 30. The opposition is based on international trade mark registration No 1 323 833 designating the European Union for the word mark ‘BOCCA’. 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: Caramels [candy], other than caramels [candy] made with coffee or coffee flavour; chocolates, other than chocolates made with coffee or coffee flavour.

The contested goods are the following:

 

Class 30: Substitutes (chocolate -); chocolate biscuits; chocolate flavourings; chocolate spreads; instant cocoa powder; chocolate creams; prepared cocoa and cocoa-based beverages; chocolate coffee; chocolate brownies; cocoa drinks; chocolates; chocolate beverages; chocolate mousses; chocolate sweets; chocolate bars; drinks based on cocoa; drinking chocolate; chocolate; cocoa powder; cocoa products; cocoa preparations; chocolate wafers; preparations based on cocoa; cocoa beverages with milk; cocoa-based beverages; chocolate pastes; imitation chocolate; chocolate powder; chocolate sauce; cocoa; drinking cocoa paste; drinks containing cocoa; cocoa mixes; beverages made from cocoa; chocolate shells; chocolate coating; candy with cocoa; aerated chocolate; cocoa beverages; beverages (cocoa-based -).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The expression ‘other than’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

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 substitutes (chocolate -); chocolate spreads; chocolate creams; chocolates; chocolate mousses; chocolate sweets; chocolate; chocolate pastes; imitation chocolate; chocolate sauce; aerated chocolate; chocolate biscuits; chocolate brownies; chocolate bars; chocolate wafers; chocolate shells; chocolate coating; candy with cocoa are at least similar to the opponent’s chocolates, other than chocolates made with coffee or coffee flavor, since they will target the same consumers and have the same distribution channels. Furthermore, these goods usually have the same or similar nutrition purpose as they satisfy the same need of carbohydrates and, in addition, they will most likely be in competition with each other for the same reason. Finally, they will most likely have the same manufacturers.

The contested instant cocoa powder; prepared cocoa and cocoa-based beverages; cocoa drinks; chocolate beverages; drinks based on cocoa; drinking chocolate; cocoa powder; cocoa products; cocoa preparations; preparations based on cocoa; cocoa beverages with milk; cocoa-based beverages; chocolate powder; cocoa; drinking cocoa paste; drinks containing cocoa; cocoa mixes; beverages made from cocoa; cocoa beverages; beverages (cocoa-based -); chocolate coffee; chocolate flavourings are various types of drinks or preparations for drinks, including powders, mixes and flavorings, on cacao or chocolate base. These goods are similar to the opponent’s goods in Class 30, in particular to the opponent’s chocolates, other than chocolates made with coffee or coffee flavour, since they have similar or the same nature of chocolate- or cocoa-based products. Moreover, they coincide in their distribution channels, relevant public and manufacturers.

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 at least similar or similar are directed at the public at large. The degree of attention may vary from average to below average, depending on the price and the frequency of purchase of the goods. By way of example, some of the products are very cheap and are bought on a daily basis, which is why consumers will not be as attentive to these goods as to others.

c) The signs and distinctiveness of the earlier mark

BOCCA	BOCA LABO
Earlier trade mark	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 verbal elements used to form the conflicting signs above are not meaningful in certain territories, for example in those countries where Slavic languages are spoken by the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slavic-speaking countries within the European Union such as Bulgaria and Poland. For these consumers the marks’ verbal elements are meaningless and, hence, distinctive in relation to the goods compared above.

Moreover, 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, that is to say, it is deemed to be normal, as follows also from the previous paragraph.

 

Visually and aurally, the signs coincide in the string of letters ‘BOC*A’, as well as in the sounds thereof, whereas they differ, both from a visual and a phonetical perspective, in the additional verbal element ‘LABO’ in the contested sign. Moreover, the earlier mark contains a second consonant ‘C’ that has no visual counterpart in the contested sign. However, this additional letter will not produce an additional sound by pronouncing the word, or at least a clearly differing sound that would have an impact on the aural perception of the sign. At most, it will lead to a prolongated sound of that same letter.

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. In the present case, this finding is particularly relevant as the signs nearly coincide in their first sole or first verbal elements.

Consequently, the signs are visually and aurally similar to an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

 

 

e) Global assessment, other arguments and conclusion

 

The goods are (at least) similar and the degree of attention paid by the public will vary between average and below average, for the reasons indicated above. The earlier mark enjoys a normal degree of distinctiveness.

The marks are visually and aurally similar to an average degree and a conceptual comparison cannot be carried out in respect of the consumers on which the assessment has focused. Following the above findings, the differing components of the signs may have less impact in the overall impression created by the signs because they are in not so prominent positions, namely they are towards the end of the word or placed as a second element following the coinciding string of letters. It is to be noted that the difference in the consonant ‘C’ repeated twice in the earlier mark may be easily overseen by consumers and, as previously said, it will not produce an additional sound or at least not a significantly differing one. 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).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, it is 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 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 Slavic-speaking countries within the EU and particularly on the Bulgarian and Polish consumers. 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 international trade mark registration No 1 323 833 designating the European Union. 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

Manuela RUSEVA

Vít MAHELKA

 

 

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.