OPPOSITION No B 3 109 807

Intersnack Group GmbH & Co. KG, Peter-Müller-Str. 3, 40468 Düsseldorf, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Paula Ingredients Spółka z ograniczoną odpowiedzialnością Spółka Komandytowa, Łódzka 145A, 62-800 Kalisz, Poland (applicant), represented by Biuro Usług Patentowych Regina Kozłowska, Ul. Pomorska 4/16, 51-218 Wrocław, Poland (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 807 is partially upheld, namely for the following contested goods:

Class 29: Prepared meals, namely mixes for making hummus comprising dried chickpeas with dried peppers, garlic juice and chilli; mixes for the preparation of hummus comprising dried chickpeas with dried beetroot; powdered mixes for the preparation of pastes containing dried pineapple, dried baked courgette and curry; powdered mixes containing dried pumpkin for the preparation of fritters; vegetable burgers with lentils, carrots, garlic and curry; soups; powdered mixes containing dried pumpkin for the preparation of creamed soups; powdered mixes containing dried red lentils for the preparation of creamed soups; mixes based on dried green peas and curry for making a cream soup; dried slices of potato with pepper and onion; mixes of vegetable crisps; dried fruit mixes with added honey and beet syrup; dried green peas with garlic, basil and kale; dried white beans with tomato, herbes de provence and hot pepper; dried chickpeas with dried beetroot and sesame; dried pumpkin crisps with curry and chilli sprinkles; mixes based on dried apple and cinnamon with vanilla flavouring for making milk-rice desserts; mixes based on dried strawberries and blueberries for making smoothies; mixes based on dried apple and beetroot and dried concentrated raspberry juice for making smoothies; fruit and vegetable mixes in powder form for making smoothies; mixes based on dried raspberries and red currants for making beverages; mixes based on dried tomatoes and peppers for making smoothies; mixes based on dried strawberries, dried concentrated passion fruit juice, dried peppermint extract and linseed for making smoothies; mixes based on dried concentrated pineapple juice and dried peppermint extract for making smoothies.

Class 30: Rice, muesli and grain-based snack food with added fruit and vegetables; chocolate-coated fruits; sweets (desserts), namely puddings, kisiele (gelatine desserts), mousse confections; powdered millet pudding with dried, concentrated strawberry juice, raspberry juice and banana purée; millet pudding, namely millet flakes with dried strawberry, dried banana purée and concentrated raspberry juice for the preparation of puddings; rice desserts with apple and cinnamon; confectionery bars; fruit bars containing date purée and sunflower seeds; fruit bars containing date purée and pumpkin seeds; fruit bars containing date purée and dried peppermint extract; fruit bars containing date purée and cinnamon; porridge; cereal flakes with dried sweet potato and curry; cereal flakes with dried baked tomato and chilli; cereal flakes with dried concentrated raspberry juice, psyllium and plantago ovata seeds, dried blackberry and dried blueberry; cereal flakes with dried strawberry and coconut (vanilla flavoured); mixes of rye and rice flakes with dried banana purée and dried strawberry purée for the preparation of porridge; protein-enriched beverages based on coffee, tea, chocolate or cocoa; sauces; sauces with Mexican-style flavourings; garlic flavoured sauces; mixes of bulgur wheat and quinoa containing dried fruits and vegetables; dried barley with dried red lentils, tomatoes and chilli; millet porridge with dried red beans, hot pepper and coriander; rice-based mixes with dried capers and dried garlic juice; pasta with mushroom sauce and mature cheese.

2. European Union trade mark application No 18 102 913 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 some of the goods of European Union trade mark application No 18 102 913 , namely against all the goods in Classes 5, 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 14 167 027 . 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 European Union trade mark registration No 14 167 027.

a) The goods

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

Class 29: Extruded and pelletised and otherwise manufactured or processed vegetable and potato products; roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachios, almonds, peanuts, coconuts (dried); preserved, dried and cooked fruits and vegetables; weed extracts for food; ginger products being dried fruit; peanut butter.

Class 30: Extruded and pelletised and otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products; ginger products, being confectionery and fruit jellies; savoury biscuits and pretzels; muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; chocolate and chocolate products; sauces.

Class 31: Unprocessed nuts, cashew kernels, pistachios, almonds, peanuts and seeds; algae for human consumption.

The contested goods are the following:

Class 5: Dietetic foods adapted for medical purposes, namely bars, puddings, protein beverages, porridge, fruit, vegetable, rice, muesli and multigrain-based snack food, sauces, soups and cream soups.

Class 29: Prepared meals, namely mixes for making hummus comprising dried chickpeas with dried peppers, garlic juice and chilli; mixes for the preparation of hummus comprising dried chickpeas with dried beetroot; powdered mixes for the preparation of pastes containing dried pineapple, dried baked courgette and curry; powdered mixes containing dried pumpkin for the preparation of fritters; vegetable burgers with lentils, carrots, garlic and curry; soups; powdered mixes containing dried pumpkin for the preparation of creamed soups; powdered mixes containing dried red lentils for the preparation of creamed soups; mixes based on dried green peas and curry for making a cream soup; dried cubes of cheese with dried tomato and herbs; dried slices of potato with pepper and onion; mixes of vegetable crisps; dried fruit mixes with added honey and beet syrup; dried green peas with garlic, basil and kale; dried white beans with tomato, herbes de provence and hot pepper; dried chickpeas with dried beetroot and sesame; dried pumpkin crisps with curry and chilli sprinkles; mixes based on dried apple and cinnamon with vanilla flavouring for making milk-rice desserts; mixes based on dried strawberries and blueberries for making smoothies; mixes based on dried apple and beetroot and dried concentrated raspberry juice for making smoothies; fruit and vegetable mixes in powder form for making smoothies; mixes based on dried raspberries and red currants for making beverages; mixes based on dried tomatoes and peppers for making smoothies; mixes based on dried strawberries, dried concentrated passion fruit juice, dried peppermint extract and linseed for making smoothies; mixes based on dried concentrated pineapple juice and dried peppermint extract for making smoothies.

Class 30: Rice, muesli and grain-based snack food with added fruit and vegetables; chocolate-coated fruits; sweets (desserts), namely puddings, kisiele (gelatine desserts), mousse confections; powdered millet pudding with dried, concentrated strawberry juice, raspberry juice and banana purée; millet pudding, namely millet flakes with dried strawberry, dried banana purée and concentrated raspberry juice for the preparation of puddings; rice desserts with apple and cinnamon; confectionery bars; fruit bars containing date purée and sunflower seeds; fruit bars containing date purée and pumpkin seeds; fruit bars containing date purée and dried peppermint extract; fruit bars containing date purée and cinnamon; porridge; cereal flakes with dried sweet potato and curry; cereal flakes with dried baked tomato and chilli; cereal flakes with dried concentrated raspberry juice, psyllium and plantago ovata seeds, dried blackberry and dried blueberry; cereal flakes with dried strawberry and coconut (vanilla flavoured); mixes of rye and rice flakes with dried banana purée and dried strawberry purée for the preparation of porridge; protein-enriched beverages based on coffee, tea, chocolate or cocoa; sauces; sauces with Mexican-style flavourings; garlic flavoured sauces; mixes of bulgur wheat and quinoa containing dried fruits and vegetables; dried barley with dried red lentils, tomatoes and chilli; millet porridge with dried red beans, hot pepper and coriander; rice-based mixes with dried capers and dried garlic juice; pasta with mushroom sauce and mature cheese.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘namely’ and ‘being’, used in the applicant’s and in the opponent’s lists of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 5

The contested dietetic foods adapted for medical purposes, namely bars, puddings, protein beverages, porridge, fruit, vegetable, rice, muesli and multigrain-based snack food, sauces, soups and cream soups are specifically adapted for medical purposes and intended for special dietary use. For these reasons, they are not interchangeable with normal foodstuffs. For example, foodstuffs for diabetic patients are not just low-fat foodstuffs but they follow specific rules. However, the opponent’s goods are general foodstuffs in Classes 29, 30 and 31. These goods have different distribution channels as the contested goods are (mainly) sold in the pharmacies. Furthermore, they do not target the same relevant public and generally are not manufactured by the same companies. Therefore, they are dissimilar.

Contested goods in Class 29

The contested dried slices of potato with pepper and onion; mixes of vegetable crisps; dried fruit mixes with added honey and beet syrup; dried pumpkin crisps with curry and chilli sprinkles are identical to the opponent’s extruded and pelletised and otherwise manufactured or processed vegetable and potato products; preserved, dried and cooked fruits and vegetables, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested dried green peas with garlic, basil and kale; dried white beans with tomato, herbes de provence and hot pepper; dried chickpeas with dried beetroot and sesame and the opponent’s preserved, dried fruits and vegetables can coincide in producer, relevant public and distribution channels. Furthermore, they are in competition. Therefore, they are at least similar.

The contested prepared meals, namely mixes for making hummus comprising dried chickpeas with dried peppers, garlic juice and chilli; mixes for the preparation of hummus comprising dried chickpeas with dried beetroot; powdered mixes for the preparation of pastes containing dried pineapple, dried baked courgette and curry; powdered mixes containing dried pumpkin for the preparation of fritters; vegetable burgers with lentils, carrots, garlic and curry; soups; powdered mixes containing dried pumpkin for the preparation of creamed soups; powdered mixes containing dried red lentils for the preparation of creamed soups; mixes based on dried green peas and curry for making a cream soup; mixes based on dried apple and cinnamon with vanilla flavouring for making milk-rice desserts; mixes based on dried strawberries and blueberries for making smoothies; mixes based on dried apple and beetroot and dried concentrated raspberry juice for making smoothies; fruit and vegetable mixes in powder form for making smoothies; mixes based on dried raspberries and red currants for making beverages; mixes based on dried tomatoes and peppers for making smoothies; mixes based on dried strawberries, dried concentrated passion fruit juice, dried peppermint extract and linseed for making smoothies; mixes based on dried concentrated pineapple juice and dried peppermint extract for making smoothies and the opponent’s extruded and pelletised and otherwise manufactured or processed vegetable and potato products; preserved, dried and cooked fruits and vegetables target the same relevant public, can coincide in producer and distribution channels. Therefore, they are similar.

The contested dried cubes of cheese with dried tomato and herbs are mainly cheese. Although they contain tomato, this is not sufficient to find similarity between them and the opponent’s extruded and pelletised and otherwise manufactured or processed vegetable and potato products or preserved, dried and cooked fruits and vegetables. These goods have a different nature and purpose, target a different relevant public and do not coincide in producers. Furthermore, they do not coincide in distribution channels, as, even in supermarkets, they are sold in different sections. These contested goods have nothing in common with the remaining opponent’s goods in Class 29, which are different types of processed nuts and peanut butter, or with the opponent’s goods in Classes 30 and 31, which are mainly cereal products and confectionery or unprocessed nuts. They have a different nature and different purposes, target a different relevant public, are distributed through different channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 30

The contested rice, muesli and grain-based snack food with added fruit and vegetables; chocolate-coated fruits; confectionery bars; sauces; sauces with Mexican-style flavourings; garlic flavoured sauces are identical to the opponent’s ginger products, being confectionery and fruit jellies; muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains; chocolate products; sauces, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested sweets (desserts), namely puddings, kisiele (gelatine desserts), mousse confections; powdered millet pudding with dried, concentrated strawberry juice, raspberry juice and banana purée; millet pudding, namely millet flakes with dried strawberry, dried banana purée and concentrated raspberry juice for the preparation of puddings; rice desserts with apple and cinnamon and the opponent’s ginger products, being confectionery and fruit jellies can be eaten for a dessert or in between meals and they have the same purpose. They target the same relevant public, can coincide in producer, have the same method of use and are distributed through the same channels. Therefore, they are similar.

The contested fruit bars containing date purée and sunflower seeds; fruit bars containing date purée and pumpkin seeds; fruit bars containing date purée and dried peppermint extract; fruit bars containing date purée and cinnamon and the opponent’s muesli bars, mainly consisting of nuts, dried fruits, processed cereal grains have the same purpose. They target the same relevant public, have the same method of use, can coincide in producer and are distributed through the same channels – since even in supermarkets, they can be sold in the same sections. Furthermore, they are in competition. Therefore, they are at least similar.

The contested porridge; cereal flakes with dried sweet potato and curry; cereal flakes with dried baked tomato and chilli; cereal flakes with dried concentrated raspberry juice, psyllium and plantago ovata seeds, dried blackberry and dried blueberry; cereal flakes with dried strawberry and coconut (vanilla flavoured); mixes of rye and rice flakes with dried banana purée and dried strawberry purée for the preparation of porridge; mixes of bulgur wheat and quinoa containing dried fruits and vegetables; dried barley with dried red lentils, tomatoes and chilli; millet porridge with dried red beans, hot pepper and coriander; rice-based mixes with dried capers and dried garlic juice; pasta with mushroom sauce and mature cheese and the opponent’s extruded and pelletised and otherwise manufactured or processed tapioca, manioc, rice, maize, wheat or other cereal products can coincide in producer, target the same relevant public and are distributed through the same channels. Therefore, they are at least similar.

The contested protein-enriched beverages based on coffee, tea, chocolate or cocoa and the opponent’s chocolate and chocolate products can coincide in producer, relevant public and distribution channels. Therefore, they are similar.

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 or similar are directed at the public at large.

The degree of attention is average given that the relevant goods are for everyday consumption and are purchased on a regular basis.

c) The 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 signs are figurative marks. The earlier mark is composed of the verbal element ‘Pauly’, depicted in rather standard white title-case letters and is placed against a background resembling a leaf that is mainly red with a small triangular band of green at the bottom. The figurative device mainly serves as a background for the verbal element and it has a low degree of distinctiveness.

The contested sign is composed of the verbal elements ‘PAULA’, depicted in standard, blue, upper-case letters, and ‘INGREDIENTS’, depicted in much smaller, standard, red, upper-case letters below the letters ‘ULA’, and a red horizontal line below the letters ‘PA’. The red horizontal line is a basic geometrical shape and has no capacity to indicate the commercial origin of the goods.

The verbal element ‘PAULA’ of the contested sign will be perceived as a female given name. It is not related in any way to the relevant goods and has an average degree of distinctiveness. The verbal element ‘INGREDIENTS’ of the contested sign in English refers to ‘the things that are used to make something, especially all the different food you use when you are cooking a particular dish’ (information extracted from Collins Dictionary on 08/12/2020 at https://www.collinsdictionary.com/dictionary/english/ingredient). It will be understood by part of the relevant public, either because they are familiar with the English word ‘ingredients’ or because a similar equivalent exists in their language, such as ‘ingredientes’ in Spanish and Portuguese, ‘ingrediente’ in Romanian, ‘ingredienti’ in Italian and ‘ingrédients’ in French. Consequently, the verbal element ‘INGREDIENTS’ will be seen by part of the relevant public as merely referring to the ‘components’ which are combined in the making of the applicant’s foodstuffs and its distinctiveness is low (30/03/2015, R 1062/2014‑2, NATURALIA INGREDIENTS / NATURALIA et al., § 37). However, it cannot be excluded that another part of the relevant public will perceive the verbal element ‘INGREDIENTS’ as a meaningless and distinctive term. Nevertheless, due to its size and subordinate position, the verbal element ‘INGREDIENTS’ is a secondary element whereas the verbal element ‘PAULA’ is the most eye-catching and, consequently, dominant element in the contested sign.

The verbal element ‘Pauly’ of the earlier mark may be seen by part of the public, such as the Spanish-speaking part of the public, as a variant of a female name ‘Paula’ in another language, especially taking into account that similar variants of this name exists in, for example, French as ‘Paule’ or in Italian as ‘Paola’. The other part of the relevant public, such as the English-speaking part of the public, may perceive the verbal element ‘Pauly’ as a friendly way of saying ‘Paul’, a male given name. It is also not excluded that part of the relevant public might perceive the verbal element ‘Pauly’ as a meaningless and fanciful term. The verbal element ‘Pauly’ is not related in any way to the relevant goods and it has an average degree of distinctiveness.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘PAUL*’ of the only verbal element of the earlier mark and of the dominant verbal element of the contested sign. They differ in the last letters of this verbal element, ‘y’ of the earlier mark versus ‘A’ of the contested sign. The signs also differ in the secondary verbal element ‘INGREDIENTS’ of the contested sign, which has a low degree of distinctiveness for part of the public, in the figurative element of the earlier mark (background), which is weak, and in the graphic depiction of the signs.

However, 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). Therefore, the verbal element ‘Pauly’ of the earlier mark is the element of the sign that they will refer to and will have more impact on the consumers whilst in the contested sign, the consumers will refer to it by the verbal element ‘PAULA’. This is due to its distinctiveness and dominant position within the contested sign. The verbal elements ‘Pauly’ and ‘PAULA’ differ only in one out of five letters and that differing letter appears at the end of the verbal elements.

Taking into account the position and distinctiveness of the verbal elements ‘Pauly’ and ‘PAULA’, the position and the distinctiveness of the differing elements and the fact that the verbal elements ‘Pauly’ and ‘PAULA’ differ only in the last letters, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘PAUL*’, present identically in both signs, and in that the verbal elements ‘Pauly’ and ‘PAULA’ are of the same length, that is to say, they both are two syllable words. The pronunciation differs in the sounds of the last letters ‘y’ of the earlier mark versus ‘A’ in the contested sign as well as in the verbal element ‘INGREDIENTS’ of the contested sign, which has no counterpart in the earlier mark. However, it has been confirmed by case-law that consumers naturally tend to shorten long marks in order to reduce them to elements that are easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). Taking this into account as well as the subordinate position and limited distinctiveness for a part of the public of the verbal element ‘INGREDIENTS’, consumers are likely to refer verbally to the contested sign as ‘PAULA’ only.

Taking into account that the difference between ‘Pauly’ and ‘PAULA’ lies only in the sounds of their last letters, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the relevant public that perceives the verbal element ‘Pauly’ of the earlier mark as a variant of the female name ‘Paula’ in another language, will associate both signs with a similar meaning. To that extent the signs are therefore conceptually highly similar for this part of the public.

For the part of the relevant public that perceives the verbal element ‘Pauly’ of the earlier mark as a friendly way of saying ‘Paul’, a male forename, there is a conceptual link between the verbal elements ‘Pauly’ and ‘PAULA’ as the latter is a female version of the name ‘Paul’. Since this part of the public will associate both ‘Pauly’ and ‘Paula’ with the male and female versions of the same forename, the signs are conceptually similar at least to a low degree for this part of the public (07/09/2016, T‑204/14, VICTOR / VICTORIA et al., EU:T:2016:448, § 31).

For the part of the public that will perceive ‘Pauly’ as a meaningless and fanciful verbal element, the contested sign evokes a concept of a female given name. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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 a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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 are partly identical, partly similar and partly dissimilar. It should be noted that similarity of goods is a necessary condition for the application of Article 8(1) EUTMR. The goods that are identical or similar target the public at large. The public’s degree of attentiveness is average. The signs are visually similar to an average degree, aurally highly similar and conceptually, depending on the public’s perception of the verbal element ‘Pauly’, the signs are either highly similar or similar at least to a low degree or not similar.

As explained above in section c) of this decision, due to the dominant position and the tendency of the consumers to shorten the signs, and because the verbal element ‘INGREDIENTS’ has a low degree of distinctiveness for at least part of the public, consumers will perceive and will refer to the contested sign by the verbal element ‘PAULA’ whilst they will perceive and will refer to the earlier mark as ‘Pauly’. Visually and aurally, the verbal elements ‘Pauly’ and ‘Paula’ differ only in one letter at their endings. Furthermore, as explained above in section c) of this decision, there is a conceptual link between the signs either for the part that perceives ‘Pauly’ as a variant of the female name ‘Paula’, such as the Spanish-speaking public, or for the part that associates it with ‘Paul’, which is a male version of the female name ‘Paula’.

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 common practice on the market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours or by adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. The part of the public that perceives the conceptual link between the signs on account of variants of female name ‘Paula’ or on account of male and female versions of the names ‘Paul’ and ‘Paula’ will perceive the contested sign as a variation of the earlier mark, or vice versa. Even the part of the relevant public that perceives ‘Pauly’ as a meaningless term and only rarely has the chance to directly compare two trade marks and must rely on the imperfect recollection that they have kept in their mind, is likely to mentally register the fact that they have the letters ‘PAUL*’ in common, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or economically linked) commercial origin to the goods. 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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 German trade mark registration No 302 018 020 279 for the word mark ‘Pauly Käsli’.

Since this mark covers 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

Zuzanna STOJKOWICZ

Birute SATAITE-GONZALEZ

Loreto URRACA LUQUE

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.