OPPOSITION Nо B 3 098 626

 

Sunoko.o.o., Trg Marije Trandafil 7, 21000 Novi Sad, Serbia (opponent), represented by Ip Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative) 

 

a g a i n s t

 

Shandong Tangpin International Trading Limited, No. 79, 16th Street, Area A, Clifford Estate, Panyu District, Guangzhou, Guangdong, China (applicant), represented by Al & Partners S.r.l., Via C. Colombo Ang. Via Appiani (Corte del Cotone), 20831 Seregno (mb), Italy (professional representative).

On 23/10/2020, the Opposition Division takes the following

 

 

DECISION: 

 

1.

Opposition No B 3 098 626 is partially upheld, namely for the following contested goods: Class 29: Fruits, tinned; fruit preserved in alcohol; tahini [sesame seed paste]; vegetable salads; tofu; yuba [tofu skin]; seeds, prepared; soya milk; soya bean oil for food; edible fats; jellies for food. Class 30: Soya sauce; seasonings; chow-chow [condiment]; sauces [condiments]; chili powders; sauces for food; sugar; maltose; honey; moon cakes; cereal preparations; starch for food; cooking salt; baking powder; condiments.

 

2.	European Union trade mark application No 18 091 313 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 all the goods of European Union trade mark application No 18 091 313  (figurative mark). The opposition is based on international trade mark registration designating, inter alia, Croatia, No 1 139 685, . 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 Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating Croatia No 1 139 685.

 

a) The goods and services

 

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

 

Class 29: Edible oils.

Class 30: Flour, sugar, salt, bread, molasses.

Class 31: Seeds, wheat, corn, sunflower, barley, sugar beet, malt, soya, fodder (soya cakes, sunflower cakes, turnip cakes, turnip fodder).

Class 33: Alcoholic beverages.

Class 35: Business management; business administration; office functions.

The contested goods are the following:

Class 29: Meat; tuna, not live; fish, tinned; fruits, tinned; fruit preserved in alcohol; tahini [sesame seed paste]; snacks of edible seaweed; vegetable salads; tofu; yuba [tofu skin]; seeds, prepared; gherkins; pickles; kelp [processed]; soya milk; soya bean oil for food; edible fats; jellies for food; mushrooms, preserved; dried bamboo fungus; casseroles [food].

Class 30: Soya sauce; seasonings; chow-chow [condiment]; sauces [condiments]; chili powders; sauces for food; artificial coffee; tea; sugar; maltose; honey; moon cakes; sushi; cereal preparations; udon noodles; starch for food; cooking salt; baking powder; condiments.

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 fats include, as  broader category the opponent’s edible oils. 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 soya bean oil for food are included in the broad category of the opponent’s edible oils. Therefore, they are identical.

The contested fruits, tinned; fruit preserved in alcohol; jellies for food are at least similar to a low degree with the opponent’s molasses as these may have the same purpose and method of use.

The contested tahini [sesame seed paste] is similar to a low degree with the opponent’s seeds in Class 31, as they usually coincide in producer and distribution channels.

The contested vegetable salads; tofu; yuba [tofu skin]; soya milk are similar to a low degree with the opponent’s soya in Class 31 as they usually coincide in producer and distribution channels.

The contested seeds, prepared are similar to a low degree with the opponent’s seeds in Class 31, as they usually coincide in producer and distribution channels.

The contested meat; tuna, not live; fish, tinned; snacks of edible seaweed; gherkins; pickles; kelp [processed]; mushrooms, preserved; dried bamboo fungus; casseroles [food] comprise a wide range of foodstuff that do not have anything in common with any of the opponent’s goods and services. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 30

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

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

The contested moon cakes; cereal preparations are at least similar to the opponent’s bread, as they coincide, at least, in relevant public and distribution channels. Furthermore they are in competition.

The contested starch for food; baking powder are similar to the opponent’s flour, as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested soya sauce; seasonings; chow-chow [condiment]; sauces [condiments]; chili powders; sauces for food; condiments are at least similar to a low degree to the opponent’s edible oils in Class 29 as they have the same purpose and usually coincide in relevant public.

The contested artificial coffee; tea; sushi; udon noodles do not have anything in common with any of the opponent’s goods and services. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 and similar in various degrees are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

Earlier trade mark	Contested sign

The relevant territory is Croatia.

 

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’s verbal component ‘ČINI ŽIVOT SLAĐIM’ will be perceived by the relevant consumers with the meaning of ‘makes life sweeter’. Consequently, this element detains a limited degree of distinctiveness insofar as it will be perceived as a purely laudatory slogan referring to positive aspects deriving by the consumptions of the opponent’s products.

The sign’s additional verbal elements ‘SUNOKO’ and ‘SONOKO’ will be perceived as meaningless, and therefore distinctive.

The earlier mark’s figurative element resembling a stylized star detains a limited distinctiveness since it merely refers to the high quality of the relevant products (15/02/2017, T-568/15, 2 START 2S (fig.) / ONE STAR (fig.) et al., EU:T:2017:78, § 72; 07/07/2015, T-521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48).

The contested sign contains elements that can be generically perceived as the typeface of Asiatic languages, that will not be pronounced or understood. However, the subject components detains a limited distinctiveness insofar as they can recall the Asiatic origin of the relevant goods.

Backgrounds such as those in the signs in conflict are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

The earlier mark’s verbal element ‘SUNOKO’ is dominant (visually outstanding) whereas the contested sign’s has no element that can be considered more dominant than others.

 

Visually and aurally, the signs coincide in the sequence of letters ‘S*NOKO’ whereas they differ in the contested trade mark’s verbal elements ‘ČINI ŽIVOT SLAĐIM’. The signs also differ in their respective graphical elements and stylizations.

Therefore, and taking into account the above principles and assessment on the degree of distinctiveness of the sign’s elements, they are visually and aurally similar to an above average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs respective verbal and figurative elements will be associated with a dissimilar meaning, the signs are conceptually not similar.

  

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal , despite the presence of some elements with a limited distinctiveness, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 have been found partly identical, partly similar in various degrees and partly dissimilar. They target the general consumers. The degree of attention paid is average. The degree of distinctiveness of the earlier mark is also average.

The signs under comparison have been found visually and aurally similar to an above average degree. Specifically, the contested sign reproduces the sequence of letters ‘S*NOKO’ present in the most distinctive and dominant element of the earlier trade mark.

The signs are not conceptually similar. However, this factor plays a limited relevance since the subject dissimilarities are focused in elements that detain a reduced degree of distinctiveness.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to a low degree only, it must be kept in mind that 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 degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating Croatia No 1 139 685.

 

It follows from the above that the contested sign must be rejected for the goods 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.

 

 The opponent has also based its opposition on the following earlier trade mark’s designations:

 

 International trade mark registration No 1 139 685 designating Bulgaria, Greece, Hungary, Romania, Slovenia, Slovakia,  .

 

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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.