OPPOSITION No B 3 096 580

Hero AG, Karl Roth-Strasse 8, 5600 Lenzburg, Switzerland (opponent), represented by Raffay & Fleck, Grosse Bleichen 8, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Twow B.V., Cruquiuskade 251, 1018 AM Amsterdam, Netherlands (applicant), represented by Intellectueeleigendom.NL, Savannahweg 17, 3542 AW Utrecht, Netherlands (professional representative).

On 06/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 580 is partially upheld, namely for the following contested goods and services:

Class 29: Preserved frozen, dried and cooked fruits and vegetables; jellies; jams; compotes; edible oils and fats.

Class 30: Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour and preparations made from cereals; bread; pastry and confectionery; edible ices; sugar; honey, treacle; yeast; food leavening agents; salt; mustard; vinegar; sauces [condiments]; spices.

Class 43: Restaurants; restaurants; food preparation services.

2. European Union trade mark application No 18 079 622 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 02/10/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 079 622 (figurative mark). The opposition is based on European Union trade mark registration No 13 269 345 (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.

a) The goods and services

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

Class 5: Food for babies; beverages for babies; meals and beverages for babies and infants; dietary supplements for babies and small children; baby formula; baby milk; breast-milk substitutes; milk substitutes for babies; lacteal flour for babies; milk ferments for pharmaceutical purposes; dietary supplements for infants; gluten-free food for babies; gluten-free food preparations and substances adapted for medical use; gluten-free foodstuffs and dietary supplements adapted for medical use; dietary foods for medical use; dietetic substances adapted for medical purposes; low-protein foodstuffs adapted for medical use; medical nutritional supplements; beverages and substances adapted for medical use; foodstuffs adapted for medical use for the sick and for diabetics.

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; snacks, bars and desserts with a vegetable or fruit base, fruit slices; jellies; jams, marmalades and compotes; fruit spread, fruit pulp, fruit puree, fruit purees; milk products containing fruit products, fruit flesh and/or fruit flavourings; meat extracts; milk and milk products.

Class 30: Cereals; cereals; breakfast cereals; cereal bars; snacks based on rice, cereals and corn; honey; flour; bread; sauces; spices.

Class 32: Fruit drinks and fruit juices, lemonades and other non-alcoholic drinks; nectars; syrups and other preparations for making beverages; mineral and aerated waters and other non-alcoholic beverages.

The contested goods and services are the following:

Class 29: Preserved frozen, dried and cooked fruits and vegetables; jellies; jams; compotes; edible oils and fats.

Class 30: Coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour and preparations made from cereals; bread; pastry and confectionery; edible ices; sugar; honey, treacle; yeast; food leavening agents; salt; mustard; vinegar; sauces [condiments]; spices; ice.

Class 43: Restaurants; restaurants; food preparation services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or 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 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

Preserved frozen, dried and cooked fruits and vegetables; jellies; jams; compotes are identically contained in both lists of goods.

The contested edible oils and fats are similar to the opponent’s milk products as they may have the same purpose, since the opponent’s goods include butter. They usually coincide in relevant public and they are in competition (27/09/2018, T‑712/17, GN Laboratories, EU:T:2018:618, § 26).

Contested goods in Class 30

Flour; bread; honey; sauces [condiments]; spices are identically contained in both lists of goods (including synonyms).

The contested rice is included in the broad category of the opponent’s cereals. Therefore, they are identical.

The contested preparations made from cereals include, as a broader category, the opponent’s snacks based on rice, cereals and corn. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested edible ices are similar to a high degree to the opponent’s milk products in Class 29, as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested salt; mustard; vinegar are at least similar to the opponent’s spices, as they at least have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested tapioca; sago are similar to the opponent’s flour, as they usually coincide in producer, distribution channels and method of use. Furthermore, they are in competition.

The contested yeast; food leavening agents are similar to the opponent’s flour, as they usually coincide in producer, relevant public and distribution channels.

The contested coffee; tea; cocoa; artificial coffee are similar to the opponent’s other non-alcoholic drinks [fruit drinks and fruit juices, lemonades] in Class 32, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested pastry and confectionery are similar to the opponent’s cereal bars, as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested sugar; treacle are at least similar to a low degree to the opponent’s honey, as they usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

However, the contested ice, which is frozen water, is dissimilar to the opponent’s goods in Classes 5, 29, 30 and 32. These goods differ in nature and methods of use and do not have the same commercial origins. Furthermore, they are not complementary, in that one is not indispensable for the use of the other, nor are they in competition.

Contested services in Class 43

The contested restaurants (listed twice); food preparation services are similar to a low degree to the opponent’s mineral and aerated waters and other non-alcoholic beverages in Class 32, as they usually coincide in producer and distribution channels. Furthermore, they are complementary (15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46).

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.

The degree of attention varies from lower than average (since some of the goods at issue are cheap staple foods, e.g. salt) to average.

c) Distinctiveness of the earlier mark and the comparison of 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 elements comprising the signs have meanings in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The verbal element ‘HERO’ of the earlier mark means ‘a man distinguished by exceptional courage, nobility, fortitude, etc.’ (information extracted from Collins Dictionary on 24/04/2021 at https://www.collinsdictionary.com/dictionary/english/hero). This verbal element is not descriptive or allusive to any of the relevant goods and is, therefore, distinctive.

The verbal element ‘Heroes’ of the contested sign is the plural form of the word ‘HERO’, so the above considerations regarding the meaning of ‘HERO’ apply accordingly to this element and, therefore, it is distinctive for the goods and services at issue.

The verbal element ‘Vegano’ is an adjective that describes the noun ‘Heroes’ in the contested sign. This verbal element will be associated with the English word ‘vegan’ meaning ‘a person who refrains from using any animal product whatever for food, clothing, or any other purpose’ (information extracted from Collins Dictionary on 24/04/2021 at https://www.collinsdictionary.com/dictionary/english/vegan). This may indicate that the goods at issue target vegans, and the services in Class 43 are for serving vegan food and drink. This element has a reduced distinctiveness for the goods and services at issue.

The verbal element in the earlier mark is depicted in a stylised white font on a blue oval-like background. The verbal elements in the contested sign are depicted over two lines in a stylised white font, which is outlined in black. The letters ‘V’ and ‘G’ of ‘Vegano’ each include a representation of a leaf. The figurative components are inherently weak, since they will be perceived by consumers as merely decorative, have no striking characteristic as such, and are meant to embellish and draw the public’s attention to the verbal elements of the signs. It follows that the public will afford more trade mark significance to the verbal elements than to the signs’ stylisation and figurative elements.

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 opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Neither the earlier mark nor the contested sign has an element that could be considered clearly more visually dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the letter sequence ‘HERO**’ and its pronunciation. This comprises the sole verbal element of the earlier mark and the first four letters of the second verbal element in the contested sign. The signs differ in the last two letters, ‘****ES’ of the second verbal element of the contested sign and the first verbal element ‘Vegano’ placed at its beginning. They also differ in their pronunciation. Furthermore, the signs differ in their figurative elements, which have less impact, as established above. In addition, the impact of the word ‘Vegano’, despite appearing at the beginning of the contested sign, will be minimal, since it describes the noun ‘Heroes’ and has a reduced distinctiveness.

Therefore, and taking into consideration the distinctiveness of the additional element of the contested sign ‘Vegano’ and the figurative components of the signs, as well as the normal distinctiveness of the coinciding element in relation to the relevant goods and services, the signs are visually and aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be perceived by the relevant public as referring to the same distinctive concept of ‘HERO’/’Heroes’, the signs are conceptually similar to a high degree. The adjective ‘Vegano’ in the contested sign, which describes the noun that follows it, does not alter this finding.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large, whose degree of attention varies from lower than average to average. The signs are visually and aurally similar to a below average degree, and conceptually similar to a high degree. The earlier mark enjoys a normal degree of distinctiveness.

The signs coincide in the letter sequence ‘HERO**’, which comprises the only verbal element of the earlier mark and is the first four letters of the element ‘Heroes’, which is a distinctive element in the contested sign. The plural form ‘Heroes’ in the contested sign does not create a striking difference and cannot be given much weight. The figurative differences between the signs play a secondary role and have less impact on the consumer, as explained above. Further, the additional verbal element ‘Vegano’ has only a reduced distinctiveness and, therefore, consumers will focus their attention on the verbal element ‘Heroes’, as they will perceive it as the main indicator of commercial origin contained in the contested sign.

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. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-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 No 13 269 345. 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 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 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

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

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.