OPPOSITION Nо B 3 109 847

Walmart Apollo, LLC, 702 Southwest 8^th Street, 72716 Bentonville, United States of America (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, HX1 2HY Halifax, United Kingdom (professional representative)

a g a i n s t

Lumico, Meerstraat 82, 1840 Londerzeel, Belgium (applicant), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 847 is upheld for all the contested goods.

2. European Union trade mark application No 18 120 310 is rejected in its entirety.

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

REASONS

On 27/01/2020, the opponent filed an opposition originally against all the goods and services of European Union trade mark application No 18 120 310 (figurative mark). However, after a limitation requested by the applicant, the opposition is maintained against the whole scope of protection of the mark applied for, namely all the goods in Class 29. The opposition is based, inter alia, on European Union trade mark registration No 16 202 145 ‘GEORGE’ (word mark). The opponent invoked Article 8(1)(b), Article 8(4) 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.

a) The goods and services

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

Class 35: Retail, wholesale and online retail services connected with the sale of: meat, poultry and game, meat extracts, prepared meals, snacks and snack foods.

The contested goods, after the limitation requested by the applicant on 28/01/2020, are the following:

Class 29: Meat, poultry, game; smoked meats; dried meat; meat; meat extracts; canned meat; meat substitutes; meat based prepared meals and snack foods; charcuterie.

From the outset, it is noted that the applicant argues that ‘since the opponent’s trade mark is not registered for the goods in Class 29 there exists no basis for a comparison between the goods in Class 29’ and those on which the opposition is based. However, 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. Indeed, the Nice Classification serves purely administrative purposes and, as such, does not in itself provide a basis for drawing conclusions as to the similarity of goods and services. It follows that the applicant’s argument in this respect should be set aside.

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.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Consequently, the above condition is fulfilled for the contested meat, poultry, game; smoked meats; dried meat; meat; meat extracts; canned meat; meat based prepared meals and snack foods; charcuterie to the extent that they are the object of the opponent’s retail services connected with the sale of meat, poultry and game, meat extracts, prepared meals, snack foods. In this respect, it is noted that the contested meat based prepared meals and snack foods are included in the broader category of prepared meals, snack foods, which are the object of the opponent’s retail services. Moreover, the contested smoked meats; dried meat; canned meat are specific types of processed and/or preserved meat, while charcuterie refers to cold cooked meats. As such, these goods are included in the broader category of or overlap with meat, which constitutes the subject of the opponent’s retail services. It follows that these goods and services are similar.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or the same sections of department stores or supermarkets. Furthermore, the goods are of interest to the same consumers.

In the present case, some commonalities exist between the contested meat substitutes and the opponent’s retail services connected with the sale of meat. Meat substitutes are non-animal protein food products, derived from soya beans, wheat gluten, yeast, or other sources, and usually flavoured and textured to resemble natural muscle protein. Those goods are, therefore, similar to meat, with which they not only share at least the same distribution channels and to some extent the same public, but also are in competition. These contested goods and the opponent’s retail services connected with the sale of meat may be offered through the same grocery chains. Moreover, they target (at least to some extent) the same public, who are accustomed to buying both meat and meat substitutes to vary their diet. It follows that these goods and services must be found similar to a low degree.

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 and services found to be similar (including to a low degree) are directed at the public at large.

The degree of attention is at most average, on account of the frequency of purchase and the relatively low price of the goods and services at issue.

c) The signs

GEORGE
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 verbal element ‘GEORGE’ of the earlier mark is an English male first name. It will be perceived as such by the non-English speaking part of the public due to its close correspondence with the national equivalent given names (for instance Georges in French), and because it is also commonly used throughout the European Union. In addition, as the opponent points out, celebrities such as George Clooney and politicians such as former US President George W. Bush are very well known around the world, including throughout the European Union. Therefore, this word will be recognised by all consumers as a male first name.

The verbal element ‘GEORGES’ of the contested mark is the French version of the English given name ‘George’ and will be perceived as such by the French-speaking part of the public. Furthermore, it is likely to be perceived as a misspelling of the name ‘George’ by a significant part of the public in the European Union.

However, to avoid unnecessary examination of the possible scenarios in which the word ‘GEORGES’ may not be understood as a name by different segments of the public, the Opposition Division finds it appropriate to limit the examination to the English- and French-speaking consumers in the European Union who will perceive both verbal elements in the marks as referring to the same male given name. For this part of the public, the signs will be conceptually linked, and confusion between them is more likely to occur.

The names ‘GEORGE’ of the earlier mark and ‘GEORGES’ of the contested sign have no connection whatsoever with the opponent’s services and the contested goods, respectively. Therefore, they are considered distinctive.

The contested sign’s red banner will be perceived as having a merely functional or aesthetic purpose, but not as an indication of commercial origin. Admittedly, the red colour of the banner will not go unnoticed when consumers first encounter the mark. However, contrary to the applicant’s argument, consumers will immediately search for a verbal element when encountering the mark. Therefore, the public’s attention will be drawn to the verbal element ‘GEORGES’, since signs will in principle be associated with and referred to by their verbal elements rather than describing their figurative components (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). This is even more so when, as in this case, the figurative element in question consists of a feature that is commonplace in trade marks such as a simple banner. In light of the above, it can be concluded that the verbal element ‘GEORGES’ is the contested sign’s most distinctive element.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the fact that the verbal element of the signs are almost identical, since they differ only in the contested sign’s last letter ‘S’. The signs further differ in the contested sign’s colour and banner.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛GEORGE’, present identically in both signs. The pronunciation differs in the sound of the contested mark’s letter ‛S’, which has no counterpart in the earlier sign. However, for the French-speaking part of the public, the letter ‘S’ will be silent, and therefore the pronunciation of the signs will be the same.

Therefore, the signs are aurally highly similar, if not identical, at least for part of the public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same given name, the only semantic nuance being that the names are in different languages. It follows that the signs are conceptually highly similar, if not identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 services 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).

The goods and services have been found similar to a low degree and to an average degree, respectively. The signs are visually highly similar, aurally highly similar or identical for a part of the public, and conceptually highly similar, if not identical. This is because the signs’ verbal elements are almost identical, the only difference being the contested mark’s last letter ‘S’. The main visual difference is the contested mark’s figurative elements, which, however, are not distinctive.

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. Account is also 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).

In the present case, bearing in mind that the consumers’ degree of attention will be at most average, it cannot be excluded that the relevant public, encountering the signs at issue, will believe that they originate from the same or economically related undertakings.

The applicant argues that there are several registered trade marks (including EU trade marks) for the name ‘GEORGE’ or ‘GEORGES’ covering goods in Class 29, and it submits evidence in this respect. According to the applicant, this would make ‘the risk of conceptual confusion on the part of the public highly unlikely’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to the widespread use of trade marks that include the word ‘GEORGE’ or ‘GEORGES’, nor is this circumstance decisive in concluding whether consumers will confuse the marks. Therefore, the applicant’s argument must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English- and French-speaking part of the 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 EUTM registration No 16 202 145. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.

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

Félix ORTUÑO LÓPEZ

Claudia ATTINÀ

Chiara BORACE

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.