OPPOSITION No B 3 094 731

 

Nordex Holding A/s, Nordre Ringgade 2, 9330 Dronninglund, Denmark (opponent), represented by Chas. Hude A/s, H. C. Andersens Boulevard 33, 1780 København V, Denmark (professional representative) 

 

a g a i n s t

 

Nord (Guangzhou) International Trading Co., Ltd., A09 Of Room 908, Nansha Jinmao Bay (self-compiled T9 Building), No. 5, 511400 2nd Block Of The Middle Of Jinmao, Nansha District, Guangzhou City, China (applicant), represented by Colbert Innovation Toulouse, 2ter Rue Gustave De Clausade Bp 30, 81800 Rabastens, France (professional representative).

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

 

 

DECISION:

 

1.	Opposition No B 3 094 731 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 083 715 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 083 715 (figurative mark), namely against all the goods in Class 29. The opposition is based on European Union trade mark registration No 4 601 051, `DAIRYLAND´ (word 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

 

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

 

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.

The contested goods are the following:

Class 29: Butter; buttercream; cream (dairy products); cheese; milk; yogurt; whey; milk products; curd; protein milk; condensed milk; prostokvasha (soured milk); powdered milk.

Contested goods in Class 29

The contested goods (butter; buttercream; cream (dairy products); cheese; milk; yogurt; whey; milk products; curd; protein milk; condensed milk; prostokvasha (soured milk); powdered milk) are included in the broad category of the opponent’s earlier milk and milk products. Therefore, they are identical.

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 identical are directed at the public at large whose degree of attention is considered to be average

c) The signs

 

DAIRYLAND
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 common elements “DAIRY” and “LAND” are not meaningful in certain territories, for example in those countries where the English language is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non- English-speaking part of the public, such as the Spanish, where due to a lack of concept the elements will be perceived as distinctive.

  

Furthermore, the contested sign is additionally composed of the verbal element ‘Amkle’ and a figurative element. The verbal element “Amkle” is considered to be secondary due to its positioning and size.

As to the figurative devices in the contested sign, 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). Further, the depiction of a coat of arms is also rather laudatory as it will be perceived as a seal of guarantee or as a reference to quality, as may be the case for the stars, which would render these elements weak. Finally, the black label device is non-distinctive as it is commonplace.

Visually, the signs coincide in the elements ‘DAIRYLAND’/’DAIRY LAND’ (although the earlier mark consists of one word, while in the contested sign the two components are separated into two words). However, the two signs differ in the term ‘Amkle’, which is secondary when it comes to the overall impression of the contested sign, as previously stipulated. Further, as reasoned previously, the figurative elements are also of less weighting and therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of ‘DAIRY’ and ‘LAND’ present identically in both signs. The pronunciation differs in the sounds of ‘Amkle’ of the contested mark, which has no counterparts in the earlier sign. However, as ‘Amkle’ is considered to be a secondary element of the contested sign, the signs are highly similar.

  

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.

 

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.

  

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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.

 

e) Global assessment, other arguments and conclusion

 

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.

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 goods are identical and are directed at the average consumer displaying an average degree of attention. The signs are visually and aurally highly similar and the earlier mark has an average degree of distinctive character.

Further, 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).

 

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 between the two marks on the part of the non-English-speaking part of the public such as the Spanish-speaking public. 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 European Union trade mark registration No 4 601 051, `DAIRYLAND´ (word mark). 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

 

 

Vanessa PAGE HOLLAND

Inés GARCIA LLEDO

Claudia SCHLIE

 

 

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.