OPPOSITION No B 3 102 046

SC Kandia Dulce SA, Sos. Viilor, nr. 20, sector 5, 050156 Bucharest, Romania (opponent), represented by Paul Cosmovici, Cosmovici Intellectual Property, Eschersheimer Landstraße 42, 60322 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Aura Proizvodi d.o.o., II. Istarske brigade 2/1, 52420 Buzet, Croatia (applicant), represented by Željko Bihar, Admoveo d.o.o., Gracanska cesta 111, 10000 Zagreb, Croatia (professional representative).

On 22/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 046 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 105 503 for the figurative mark , namely against some of the goods in Class 30. The opposition is based on, inter alia, Romanian trade mark registration No 146 230 for the word mark ‘LAURA’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 Romanian trade mark registration No 146 230.

a) The goods

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

Class 30: Cocoa-based ingredients for confectionery; confectionery; chocolate; cocoa or chocolate-based products; chocolate candy; chocolate confectionery containing pralines; chocolate flavored glazes; pralines; candies; chocolate bars ; chocolate bars with various fillings; chocolate filled; chocolate tablets; cocoa; chocolate tablets with various fillings or inclusions; all produced in Romania; chocolate candies; chocolate candies with various fillings; fillings based on chocolate; chocolate ornaments for the Christmas tree; candies for the Christmas tree; chocolate bar; chocolate bar with various fillings; ice cream; chocolate biscuits; biscuits; cereal or flour biscuits; biscuits for human consumption; biscuits containing ingredients with various flavors; sweet or savory biscuits for human consumption, with or without frosting and / or fillings; traditional sweets and biscuits; wafers; biscuits (eugenics); muffins, cakes; beverages with or without coffee, cocoa-based or added beverages, beverages containing various spices; pastry and confectionery containing coffee, cocoa or other spice; main ingredients for the preparation of cocoa-based or cocoa-based shakes; ingredients for the preparation of shake- beverages containing various flavors (cocoa, chocolate); hot chocolate; beaten beverages; cocoa for the preparation of beverages; ice cream beverages; prepared cocoa drinks, and cocoa and coffee beverages; chocolate essences for the preparation beverages; cocoa preparations for making beverages; cocoa powder preparations containing cocoa for use in the preparation of beverages.

The contested goods are the following:

Class 30: Chocolate.

Chocolate is identically contained in both lists of goods.

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.

The degree of attention is considered to be average.

c) The signs

LAURA
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 the word mark ‘LAURA’ which will be associated by the relevant public with a female first name. As this word has no meaning in relation to the relevant goods, it is, therefore, distinctive.

The contested sign is the figurative sign, which will be understood by the relevant public as a female first name or as referring to the distinctive atmosphere or quality that seems to surround and be generated by a person, thing, or place. Either way, it has no meaning in relation to the relevant goods and, therefore, it has an average degree of distinctiveness.

Visually and aurally, the signs coincide in the letters ‘AURA’. However, they differ in the additional first letter ‘L’ of the earlier mark, and in the fanciful script of the contested sign.

Therefore, the signs are visually similar to an average degree and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, either different female names or a female name of the earlier mark and an atmosphere surrounding or generated by a person, thing or place of the contested sign, the signs are conceptually not similar. The mere fact that two names can be grouped under a common generic term of ‘names’ does not constitute conceptual similarity. For example, if FRANK and MIKE are compared: the fact that both are names would not lead to a finding of conceptual similarity; this is because the public is not likely to make the conceptual link between the two words. By contrast, the fact that FRANK and FRANKIE are the same name but the latter is the diminutive of the former is relevant and should lead to a finding of conceptual similarity.

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 trade mark has a reputation as result of its long standing and intensive use in Romania in connection with the goods for which it is registered, namely the goods registered in Class 30. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

Appendix 1: print out of the opponents’ web page https://kandiadulce.ro/en/#desprekandia-, regarding the company’s’ history and brands, including inter alia the figurative mark: and types of products offered and a map of distributors in Romania.

Appendix 2: article of ECONOMICA.NET, in English dated 10/12/2012, regarding the opponent, Kandia Dulce, which states that this is the largest Romanian manufacturer of sweets and that it acquired Heidi Chocolat SA from Swiss Group Läderach.

Appendixes 3 and 4: lists of searches in TMview, for the company ‘KANDIA DULCE SA’. The lists include some Romanian trade marks one of them having the trade mark name ‘1890 KANDIA EXCELLENT’ applied for on 01/09/2001 and registered. The remaining Romanian marks include eight trade marks with the element ‘LAURA’, all of them registered between 1997 and 2016.

Appendix 5: results of a search in Google for the words ‘ciocolata laura’, which shows images of the opponent’s products under the trade mark ‘Laura’, for example ; and several web pages offering products (chocolates and sweets) under the trade mark ‘Laura’. Copy of information in Romanian about ‘Kandia’ from Wikipedia and some screen shots of the opponent’s web pages showing its different chocolate products under the trade mark ‘Laura’, e.g. as follows: .

Appendix 6: copy of EUIPO’s file information of the opponent’s refused EUTM application for the trade mark .

Appendix 7: copy in Romanian of Kandia Dulce’s product catalogue, undated, where different chocolate products showing the trade mark appear, e.g. as follows: .

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use. The documents filed, (some printouts of the opponent’s website and an undated catalogue, its lists of registered marks and an article on the opponent’s company, Kandia Dulce and the acquisition of another company), provide no information on the extent of such use and consequently do not furnish sufficient information on market awareness of the trade mark. There is no evidence of publicity investment, sales volumes, the market share of the trade mark, the number of visits to websites or market research supporting the opponent’s claim that the mark enjoys a high degree of recognition among the relevant public.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods under comparison are identical. They target the public at large with an average degree of attention and the earlier mark’s distinctiveness is normal.

The signs are visually similar to an average degree, aurally similar to a high degree but conceptually different. The conceptual difference between the signs is crucial, as it can counteract the visual and phonetic similarities between them when at least one of the signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (14/10/2003, T 292/01, Bass, EU:T:2003:264, § 54). In this case both signs have clearly different meanings.

The Court has previously held that where one mark conveys a clear and specific concept, whereas the other conveys a clearly unrelated concept, or no concept at all, such conceptual differences may neutralise in a large measure visual or aural similarities (26/04/2018, T 554/14, MESSI (fig.) /MASSI et al., EU:T:2018:230, § 73; 12/01/2006, C 361/04 P, Picaro, EU:C:2006:25, § 20; 23/03/2006, C 206/04 P, Zirh, EU:C:2006:194, § 35; 18/12/2008, C 16/06 P, Mobilix, EU:C:2008:739, § 98; 16/10/2013, T 328/12, Maxigesic, EU:T:2013:537, § 63 et seq.; 19/01/2017, T 701/15, LUBELSKA (fig.) / Lubeca, EU:T:2017:16, § 40).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C 334/05 P, Limoncello, EU:C:2007:333, § 35).

For a likelihood of confusion to be found, it is not, in general, sufficient for any degree of similarity to be demonstrated; the similarity must be such that the relevant public might consider that the goods and services offered originated from the same undertaking or economically linked undertakings. Considering all the above, in view of the conceptual difference between the marks that will be immediately grasped by the relevant public for the reasons set out above in section c) of this decision, even if the signs are visually similar to an average degree and aurally highly similar on account of their coincidence in most of their letters, even for identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

 Romanian trade mark registration No 64 379 for the figurative mark for the following goods in Class 30: coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; pastry and confectionery; edible ice cream; honey, molasses syrup; yeast, baking powder; ice.

 Romanian trade mark registration No 74 827 for the figurative mark for the following goods in Class 30: coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; pastry and confectionery products, edible ice cream; honey, molasses syrup; yeast, baking powder; salt, mustard; vinegar, sauces (spices); spices, ice.

 Romanian trade mark registration No 87 963 for the figurative mark for the following goods in Class 30: chocolate and chocolate products, coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, edible ice cream; honey, molasses syrup; yeast, baking powder; salt, mustard; vinegar, sauces (spices); spices; ice.

 Romanian trade mark registration No 138 618 for the word mark ‘LAURA CARAMELINE’ for the following goods in Class 30: chocolate and cocoa products, coffee; confectionery and confectionery products, candy.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain additional figurative elements or further words such as ‘CARAMELINE’, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine the other grounds on which the opposition is based, namely Article 8(5)EUTM

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will examine the opposition in relation to Romanian trade mark registration No 146 230 for which the opponent claimed repute in Romania.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Romania.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. As above explained, despite showing some use of the trade mark, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Aurelia PEREZ BARBER

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.