OPPOSITION Nо B 3 104 555

 

Kaufland Česká Republika, v.o.s., Bělohorská 2428/203, 169 00 Praha 6, Czech Republic (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative) 

 

a g a i n s t

 

S und Y Splendor GmbH, Oldesweg 6a, 22393 Hamburg, Germany (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 24/09/2020, the Opposition Division takes the following

 

 

DECISION:

1.		Opposition No B 3 104 555 is partially upheld, namely for the following contested goods: Class 5: By-products of the processing of cereals for dietetic or medical purposes; candy, medicated. Class 30: Chocolate-based spreads; chocolate spreads containing nuts; sugar; sweetmeats [candy]; confectionery; fondants [confectionery]; candy; fruit jellies [confectionery]; mints for breath freshening; chewing gum for breath freshening; biscuits; waffles; petits fours [cakes]; muesli; high-protein cereal bars; cereal bars; cereal-based snack food; rice-based snack food; senbei [rice crackers].
2.	European Union trade mark application No 18 112 818 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 18 112 818 for the word mark ‘Schöne Kati’, namely against some of the goods of Class 5 and all of the goods of Class 30. The opposition is based on international trade mark registration designating the European Union No 782 205 for the word mark ‘KATY’. 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 30: Tea, cacao, sugar, chocolate, confectionery, biscuits, rice, preparations made from cereals, bread, pastry, ice, honey, treacle.

The contested goods are the following:

 

Class 5: By-products of the processing of cereals for dietetic or medical purposes; candy, medicated.

Class 30: Chocolate-based spreads; chocolate spreads containing nuts; sugar; sweetmeats [candy]; confectionery; fondants [confectionery]; candy; fruit jellies [confectionery]; mints for breath freshening; chewing gum for breath freshening; biscuits; waffles; petits fours [cakes]; muesli; high-protein cereal bars; cereal bars; powders for making ice cream; cereal-based snack food; rice-based snack food; senbei [rice crackers].

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.

As a preliminary remark the Opposition Division notes that the opponent did base it’s opposition (in the notice of opposition), inter alia, on the good flour. According to the extract from Madrid Monitor, as submitted by the opponent, and the relevant online official database, accessible through TMVIEW, however, the EU designation of the earlier mark was not granted for such good. Therefore, the Opposition Division will not take this good into account in the analysis of the opposition.

 

Contested goods in Class 5

The contested candy, medicated is functional candy that delivers health and medical benefits, such as cough and throat sweets with menthol or sugar-free sweets fortified with vitamins and minerals. Although, the contested goods have a specific purpose of healing, alleviating or preventing medical conditions, they have the same method of use as the opponent’s confectionary. Furthermore, they are commonly produced by the same companies in the confectionary sector, may be sold through the same distribution channels and target the same consumers and are therefore similar.

Similar considerations apply as regards to the contested by-products of the processing of cereals for dietetic or medical purposes. By-products of the processing of cereals are manifold (e.g. dietary fibres, minerals, vitamins, proteins) and may serve, apart from being food, functional (medical/dietary) purposes. Although, these goods serve a specific (medical/dietary) purpose they are similar to the opponents preparations made from cereals, because they coincide in their method of use, producer, distribution channels and end users.

Contested goods in Class 30

Sugar; confectionery; biscuits are identically contained in both lists of goods.

The contested cereal-based snack food; muesli; high-protein cereal bars; cereal bars; rice-based snack food; senbei [rice crackers] are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested petits fours [cakes]; are included in the broad category of the opponent’s pastry. Therefore, they are identical.

The contested sweetmeats [candy]; candy; fruit jellies [confectionery]; fondants [confectionery]; mints for breath freshening; chewing gum for breath freshening are included in the broad category of the opponent’s confectionery. Therefore, they are identical.

Chocolate spreads containing nuts; chocolate-based spreads are included in the broad category of the opponent’s chocolate. Therefore, they are identical.

The contested waffles are highly similar to the opponent’s pastry, as these goods coincide in purpose, distribution channels, relevant public and producer. Furthermore, they are in competition.

Powders for making ice cream are specialised products mainly used as a component to produce ice cream. These products are typically directed towards a professional public, e.g. hotels, restaurants and cafes. The contested powders for making ice cream is dissimilar to all of the opponent’s goods. This is because they do not coincide in their nature or purpose. In addition, although the contested goods and the opponent’s goods might be both available in supermarkets, they are usually offered in different sections. Moreover, they differ in nature, purpose and do not come from the same undertakings. They are neither complementary nor in competition. In particular, and contrary to the opponent’s arguments, the contested powders for making ice cream are dissimilar to the opponent’s ice. Ice is to be understood as ‘cooling ice’ and not in the sense of ice cream or edible ices. The purpose and distribution channels of ice are typically different to powders for making ice cream, as is their nature. Moreover, they are neither in competition nor complementary.

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 to varying degrees are directed at the public at large. 

 

Given the fact that some of the goods may serve medical purposes, and may have an impact on the consumer’s health, the degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

 

KATY	Schöne Kati
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Both signs are word marks. The earlier mark consists of the word ‘KATY’, whereas the contested sign consists of the words ‘Schöne’ and ‘Kati’. All these elements will be associated with a certain meaning in the German language. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German speaking part of the public, such as the public in Austria and Germany.

The words ‘KATY’ and ‘Kati’ will be both, and despite the slightly different spelling, associated with the same female first name (either as a variation of the same first name, or as abbreviations for the name ‘Katharina’). Since these verbal elements have no meaning in relation to the relevant goods, they are both distinctive. The additional (German) word ‘Schöne’ in the contested sign means ‘beauty’ or ‘beautiful’ in English and will be understood as a reference to someone or something that is very attractive. When considered individually, the word ‘Schöne’ may be perceived as a reference to the qualities of the goods. However, consumers normally perceive a mark as a whole and do not proceed to analyse its various elements. Therefore, account should be taken of the fact that the words ‘Schöne’ and ‘Kati’ will be perceived as a logical and conceptual unit, in which the adjective ‘Schöne’ merely qualifies the name following it, namely ‘Kati’. Consequently, since the elements of the contested sign convey, altogether, one meaning, they will capture the same attention of the relevant public.

Both signs are word marks, which by means of definition, do not have any dominant (visually eye-catching) elements. Furthermore, the protection of a word mark concerns the word as such, as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. The fact that the earlier right is depicted in capital letters only is therefore immaterial.

 

Visually, the signs coincide in the letters ‘K-A-T-*’, which represent almost the entire earlier mark (safe for one letter). The signs differ in the additional letters ‘S-C-H-Ö-N-E’ in the contested sign and the respective last letter in their elements ‘KAT-Y’ versus ‘Kat-i’. Taking into account the above considerations and the fact that the signs only coincide in three letters, the Opposition Division finds them to be visually similar to a low degree.

 

Aurally, the signs coincide in the pronunciation of the words ‘KATY’ and ‘Kati’. Although, the signs are spelled with a different last letter (‘Y’ versus ‘i’), these letters are pronounced exactly the same way in the German language. The signs differ in the pronunciation of the additional letters ‘S-C-H-Ö-N-E’ of the contested sign. Taking into account that the earlier mark is entirely incorporated (aurally) in the contested sign, they are aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a reference to the same female first name, or an abbreviation of the same first name, the signs are conceptually similar to a high degree. The fact that the elements ‘KATY’ and ‘Kati’ are spelled in a slightly different way is diminutive. Furthermore, the existence of the additional word ‘Schöne’ in the contested sign does not change the above mentioned conclusion. This element will likely be perceived as a qualifying adjective, referring to an attribute of the person it relates to, namely to Kati being beautiful. Still the contested sign refers to the very same first name as the earlier mark.

 

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 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

 

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).

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.

The goods that are identical or similar to varying degrees target the public at large as well as professionals. The degree of attention may vary from average to high and the earlier mark has been found to be distinctive to a normal degree.

The signs are visually similar to a low and aurally similar to an average degree. From a semantic point of view the signs are conceptually similar to a high degree. The signs coincide in their reference to the female first name ‘Katy/i’ and only differ in this regard in their respective last letter, which however has no impact neither aurally nor conceptually. The sings differ on account of the additional word ‘Schöne’ in the contested sign, which, although being placed in first position which is normally the part catching the consumer’s attention first, has been found to only qualify the second word element, namely ‘Kati’. Consumers will therefore focus more on the word ‘Kati’ rather than its qualifying adjective. Moreover, account must be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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).

Taking into account the visual and aural, as well as the strong conceptual similarities of the signs, the Opposition Division finds that there is a likelihood of confusion on the German speaking part of the public for the goods which are identical or similar to varying degrees. The opposition is therefore partly well founded on the basis of the opponent’s international trade mark registration designating the European Union No 782 205. 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.

Consequently, the contested trade mark 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.

 

 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

 

 

Boyana NAYDENOVA

Holger Peter KUNZ

Christian STEUDTNER

 

 

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.