OPPOSITION No B 3 102 647

Birra Forst S.P.A., Via Venosta, 8, 39022 Forst/Lagundo, Italy (opponent), represented by Fiammenghi - Fiammenghi S.R.L., Via delle Quattro Fontane, 31, 00184 Roma, Italy (professional representative)

a g a i n s t

Henningsen A/S, Bavnevej 50, 6580 Vamdrup, Denmark (applicant), represented by Greyhills Rechtsanwälte Partnerschaftsgesellschaft mbB, Severinskloster 5, 50678 Köln, Germany (professional representative).

On 18/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 647 is partially upheld, namely for the following contested goods and services:

Class 28: Candle holders for Christmas trees; decorations for Christmas trees; decorations for Christmas trees; decorations for Christmas trees; decorations for Christmas trees; decorations for Christmas trees; non-edible Christmas tree ornaments; decorations and ornaments for Christmas trees.

Class 35: Retailing and wholesaling, including via the internet, of candle holders for Christmas trees, decorations for Christmas trees, hanging decorations for Christmas trees, ornaments for Christmas trees, Christmas tree decorations, Christmas tree adornments, non-edible decorations for Christmas trees, and decorations and adornments for Christmas trees; retailing and wholesaling, including via the internet, of Christmas trees; advertising; public relation services.

2. European Union trade mark application No 18 082 920 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 082 920 for the figurative mark , namely against all the goods and services in Classes 28 and 35. The opposition is based on, inter alia, Italian trade mark registration No 2 015 000 085 769 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Italian trade mark registration No 2 015 000 085 769 for the figurative mark .

a) The goods and services

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

Class 28: Christmas trees of synthetic material, Bells for Christmas trees, Christmas tree stands, Candle holders for Christmas trees, Ornaments for Christmas trees, except illumination articles and confectionery, Artificial snow for Christmas trees.

Class 35: Outdoor advertising, Rental of advertising time on communication media Updating of advertising material, Updating and maintenance of data in computer databases, Shop window dressing, Commercial administration of the licensing of the goods and services of others, Business management assistance, Compilation of information into computer databases, Business management consultancy, Professional business consultancy, Dissemination of advertisements Direct mail advertising Provision of an online marketplace for buyers and sellers of goods and services Business information Information (Business -) Providing business information via a web site Commercial information and advice for consumers [consumer advice shop] Layout services for advertising purposes Rental of advertising space Marketing Publicity material rental Rental of billboards [advertising boards] Rental of sales stands Presentation of goods on communication media, for retail purposes Production of advertising films Organization of exhibitions for commercial or advertising purposes Design of advertising materials Sales promotion Publication of publicity texts Writing of publicity texts Procurement services for others [purchasing goods and services for other businesses] Commercial intermediation services Telemarketing services.

The contested goods and services are the following:

Class 28: Candle holders for Christmas trees; Decorations for Christmas trees; Decorations for Christmas trees; Decorations for Christmas trees; Decorations for Christmas trees; Decorations for Christmas trees; Non-edible Christmas tree ornaments; Decorations and ornaments for Christmas trees.

Class 35: Retailing and wholesaling, including via the internet, of candle holders for Christmas trees, decorations for Christmas trees, hanging decorations for Christmas trees, ornaments for Christmas trees, Christmas tree decorations, Christmas tree adornments, non-edible decorations for Christmas trees, and decorations and adornments for Christmas trees; Retailing and wholesaling, including via the internet, of Christmas trees, natural Christmas trees, felled Christmas trees, harvested Christmas trees, agricultural, horticultural and forestry products and grains, not included in other classes, live animals, fresh fruits and vegetables, seeds, live plants and natural flowers, foodstuffs for animals and malt; Advertising; Public relations 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 28

The contested candle holders for Christmas trees; decorations for Christmas trees (listed five times); non-edible Christmas tree ornaments; decorations and ornaments for Christmas trees are identical to the opponent’s candle holders for Christmas trees; ornaments for Christmas trees, except illumination articles and confectionery respectively either because they are identically contained in or covered by both lists of goods (including synonyms).

Contested services in Class 35

The broad categories of the contested advertising; public relation services include the opponent’s outdoor advertising. Since the Office cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

Retail 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 retailing and wholesaling, including via the internet, of candle holders for Christmas trees, decorations for Christmas trees, hanging decorations for Christmas trees, ornaments for Christmas trees, Christmas tree decorations, Christmas tree adornments, non-edible decorations for Christmas trees, and decorations and adornments for Christmas trees are similar to the opponent’s candle holders for Christmas trees; ornaments for Christmas trees, except illumination articles and confectionery respectively in Class 28.

Furthermore, the contested retailing and wholesaling, including via the internet of Christmas trees (which may concern those of synthetic material) are therefore similar to the opponent’s Christmas trees of synthetic material in Class 28 for the same reasons as those outlined above.

There may also be a low degree of similarity between the retail services concerning specific goods and other specific goods that are similar or even similar to a low degree if there is a close connection between them on the market from the perspective of the consumer. This will usually be the case if they are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and are of interest to the same consumer. However, such goods and services are dissimilar when the goods at issue are not offered in the same places, do not belong to the same market sector and target a different consumer.

In this respect, even if the opponent’s Christmas trees of synthetic material in Class 28 may be similar, or similar to a low degree, to at least some of the goods that are subject to the contested retailing and wholesaling, including via the internet, of natural Christmas trees, felled Christmas trees, harvested Christmas trees, agricultural, horticultural and forestry products and grains, not included in other classes, live animals, fresh fruits and vegetables, seeds, live plants and natural flowers, foodstuffs for animals and malt (such as natural Christmas trees) and be of interest to the same consumers, they are not commonly offered through the same distribution channels or in the same sections of department stores or supermarkets and do not belong to the same market sectors. Therefore, the remaining contested retail services cannot be considered to be similar to any of the opponent’s goods in Class 28.

Furthermore, as regards the opponent’s services in Class 35, they are essentially advertising, marketing and promotional services or services that are aimed at supporting or helping other businesses to carry out or improve business and are usually provided by advertising companies, business consultants and employment agencies as well as companies providing assistance with the internal day-to-day operations of organizations. The remaining contested retailing and wholesaling, including via the internet, of natural Christmas trees, felled Christmas trees, harvested Christmas trees, agricultural, horticultural and forestry products and grains, not included in other classes, live animals, fresh fruits and vegetables, seeds, live plants and natural flowers, foodstuffs for animals and malt consist of services that allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. These services are not usually provided by the same undertakings as those providing services of advertising, business management, business administration as described above and do not usually share the same distribution channels. Furthermore, they are not complementary or in competition, and, even if they may to some extent target the same relevant public (e.g. commercial enterprises), this is not in its own sufficient to find similarity between them.

Therefore, the abovementioned contested services are dissimilar to all the opponent goods and services in Class 28 and 35.

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 are directed at the public at large and/or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average (e.g. in relation to the goods concerned in Class 28) to high (e.g. in relation to outdoor advertising in Class 35 which will not be frequently purchased, is likely to be relatively expensive and may have an important impact on the consumers’ business).

c) The signs

Earlier trade mark	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).

The earlier mark is a figurative mark composed of the verbal element “FORST” written in fairly stylised green capital letters. Inside the letter “O” a fanciful figurative element depicting three little crowns in white and three trees in green, is placed.

The contested sign is a figurative mark composed of the verbal element “BioForst”, written in standard green letters with the capitalisation of the letters “B” and “F”. Above the letters “orst” a fanciful figurative element depicted in different graduations of green and reminiscent of a forest of trees is placed.

Although the contested sign is composed of one verbal element, the relevant consumer will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The prefix “Bio” is usually used in commerce to refer to organic and/or natural and environmentally friendly products. This has been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 45‑46).

Therefore, it can be assumed that the relevant public will readily discern the component ‘Bio’ in the contested sign as referring to organic and/or natural products or services related to such goods.

Moreover, in the present case the separation between the verbal elements “Bio” and “Forst” is even more noticeable due to the capitalisation of the letters “B” and “F” and due to the different graduations of green used to depict the two words (clearer for the word “Bio” and darker for the element “Forst”).

What is more, bearing in mind the relevant goods and services, the component ‘Bio’ in the contested sign is non-distinctive, as it indicates that they are related to products of organic origin and/or are produced using natural methods or are services related to such goods.

Contrary to the applicant’s claim, the common verbal element “FORST” will not be perceived as referring to 'forest' since 'forst' is not an established or common abbreviation of this word (or of the equivalent Italian word 'foresta') and will therefore rather be perceived as a fanciful word without any particular meaning by the public in the relevant territory and it is, therefore, distinctive to a normal degree.

As to the distinctiveness of the figurative elements in the marks, it should be noted that the trees are weak in relation to the goods and services at issue (mostly related to Christmas trees and decorations for Christmas trees and may otherwise be perceived as alluding to the intended field of activity of the services provided). Furthermore, in view of the very small size of the three crown devices in the earlier mark, they are likely to go unnoticed by consumers who will not proceed to analyse all the details of the earlier mark but will rather perceive the overall impression produced by it. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign 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 signs do not have any elements that are clearly more dominant (visually eye-catching) than others.

Visually and aurally, the signs coincide in the distinctive verbal element “FORST”. They differ in the additional verbal element “Bio” placed at the beginning of the contested sign, as well as in the respective figurative elements. However, as explained above, these additional elements will have less impact in the overall impression produced by the signs on consumers. Therefore, the signs are visually similar to an average degree and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element 'Bio' of the contested sign as explained above which is not present in the earlier mark, it is non-distinctive. Furthermore, the signs somehow coincide in the meaning conveyed by the representation of the trees in their respective figurative elements. However, for the reasons explained above these figurative elements are of a less importance in the consumers’ perception of the signs who will rather be attracted by the coinciding word 'FROST', which has no meaning. Therefore, the signs are conceptually similar at most to a low degree.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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

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 contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. They target the public at large as well as professionals. The degree of attention may vary from average to high. The signs are visually similar to an average degree, aurally similar to high degree and conceptually similar at most to a low degree for the reasons explained above in section c) of the present decision. The differing verbal element (Bio) and the respective figurative elements cannot outweigh the similarities between the signs on account of the prevailing coinciding element 'FROST', which is the most distinctive element in both signs. The similarities between the signs are thus sufficient to lead the public to believe that the conflicting goods and services that are identical or similar come from the same or economically linked undertakings.

In addition, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product or service lines or to endow a trade mark with a new fashionable image.

Although the public may perceive certain differences between the marks, 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public in relation to the goods and services that have been found identical or similar. Therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 2 015 000 085 769 for the figurative mark .

It follows from the above that the contested mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the services 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

Italian trade mark registration No 2 015 000 085 804 for the figurative mark , covering goods and services in Classes 28 and 35, and Italian trade mark registration No 2 015 000 085 949 for the figurative mark also covering goods and services in Classes 28 and 35.

Since these marks cover the same scope of goods and services as those already assessed, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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

Aldo BLASI

Enrico DERRICO

Sam GYLLING

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.