OPPOSITION Nо B 3 106 826

 

Frito-Lay Trading Company (Europe) GmbH, Spitalgasse 2, 3011 Bern, Switzerland (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Salih Haslak, Raiffeisenhof 8, 56564 Neuwied, Germany (applicant), represented by Müller Kornblum Teichmann Fleck Feinauer, Friedrichsplatz 9, 68165 Mannheim, Germany (professional representative).

On 06/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 106 826 is partially upheld, namely for the following contested goods:

 

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses). Class 30: All the contested goods in this Class except for: ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; pineapple fritters; banana fritters; prepared foodstuffs in the form of sauces.

2.

European Union trade mark application No 18 129 402 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 of the goods (Classes 29 and 30) of European Union trade mark application No 18 129 402 ‘Cipitos’ (word mark). The opposition is based on Benelux trade mark registration No 318 741, for the word mark ‘CHIPITO’. 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 29: Potato products, whether or not flavoured, not included in other classes.

Class 30: Potato products, whether or not flavoured, not included in other classes, rice, flour and cereal products, whether or not flavoured, not included in other classes.

The contested goods are the following:

Class 29: Meats; dairy products and dairy substitutes; sausage casings, natural or artificial; fish, seafood and molluscs, not live; edible oils and fats; soups and stocks, meat extracts; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; prepared insects and larvae.

Class 30: Ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; sugars, natural sweeteners, sweet coatings and fillings, bee products; pineapple fritters; french toast; flavoured popcorn; snack food products consisting of cereal products; snack food products made from potato flour; snack foods prepared from maize; snacks manufactured from muesli; banana fritters; baozi [stuffed buns]; bibimbap [rice mixed with vegetables and beef]; flaky pastry containing ham; pretzels; brioches; bean jam buns; frankfurter sandwiches; buckwheat jelly (memilmuk); burritos; calzones; chalupas; cheeseburgers [sandwiches]; chimichanga; Chinese steamed dumplings (shumai, cooked); grain-based chips; crisps made of cereals; chow mein; fresh pies; fresh pizza; fresh sausage rolls; stir fried rice cake [topokki]; egg rolls; spring rolls; meat pies; pies containing meat; prepared meals containing [principally] pasta; prepared meals in the form of pizzas; rice-based prepared meals; pastries consisting of vegetables and fish; fajitas; chocolate-based ready-to-eat food bars; enchiladas; empanadas; egg pies; crepes; crackers flavoured with spices; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with vegetables; crackers flavoured with meat; crackers made of prepared cereals; chow mein [noodle-based dishes]; mincemeat pies; gimbap [Korean rice dish]; cereal-based snack food; cereal-based meal replacement bars; chips [cereal products]; toasted cheese sandwich with ham; toasted cheese sandwich; toasted sandwiches; corn kernels being toasted; corn, roasted; meals consisting primarily of pasta; rice based dishes; pellet-shaped rice crackers (arare); vegetable pies; filled bread rolls; Chinese stuffed dumplings (gyoza, cooked); pasta containing stuffings; filled baguettes; frozen pastry stuffed with vegetables; frozen pastry stuffed with meat; chilled pizzas; freeze-dried dishes with the main ingredient being rice; freeze-dried dishes with the main ingredient being pasta; fried corn; prawn crackers; macaroni with cheese; cheese curls [snacks]; rice glue balls; kimchijeon [fermented vegetable pancakes]; caramel coated popcorn with candied nuts; canapes; glutinous rice wrapped in bamboo leaves (zongzi); jiaozi [stuffed dumplings]; cereal snack foods flavoured with cheese; puffed corn snacks; snack foods made from corn and in the form of rings; snack foods made from corn and in the form of puffs; snack foods made from corn; snack food products made from soya flour; snack food products made from rice flour; snack food products made from cereal flour; chicken wraps; chicken pies; hot dog sandwiches; millet cakes; hamburgers contained in bread rolls; hot sausage and ketchup in cut open bread rolls; hamburgers being cooked and contained in a bread roll; flapjacks; oat clusters containing dried fruit; paella; okonomiyaki [Japanese savoury pancakes]; pasta salad; canned pasta foods; noodle-based prepared meals; nachos; steamed buns stuffed with red bean paste; mung bean pancakes (bindaetteok); crackers filled with cheese; caramel coated popcorn; steamed buns stuffed with minced meat (niku-manjuh); sandwiches containing meat; sandwiches containing fish fillet; microwave popcorn; macaroni salad; vegetable flavoured corn chips; corn chips; seaweed flavoured corn chips; lasagne; pumpkin porridge (hobak-juk); stir-fried noodles with vegetables (japchae); glutinous pounded rice cake coated with bean powder (injeolmi); preserved pizzas; shrimp dumplings; sticky rice cakes (chapsalttock); pot pies; puffed cheese balls [corn snacks]; popcorn; candy coated popcorn; pizzas; prepared pizza meals; pita chips; savory pastries; pizza crust; pizza bases; corn-based savoury snacks; cereal-based savoury snacks; prepared savory foodstuffs made from potato flour; green onion pancake [pajeon]; pancakes; stir-fried rice; pies containing game; pies containing vegetables; pies containing poultry; pies containing fish; pies; pastries consisting of vegetables and poultry; pastries consisting of vegetables and meat; pies [sweet or savoury]; pasta dishes; senbei [rice crackers]; pork pies; chocolate-based meal replacement bars; sandwiches containing salad; sandwiches containing minced beef; sandwiches containing chicken; sandwiches containing fish; sandwiches; samosas; risotto; chocolate-coated rice cakes; rice-based snack food; rice salad; rice biscuits; rice cakes; rice crackers; rice crusts; rice dumplings dressed with sweet bean jam (ankoro); rice dumplings; prepared rice dishes; rice crisps; ravioli; ramen [Japanese noodle-based dish]; quiches; quesadillas; dry and liquid ready-to-serve meals, mainly consisting of pasta; dry and liquid ready-to-serve meals, mainly consisting of rice; Korean traditional rice cake [injeolmi]; tortillas; tortilla chips; tortilla snacks; frozen pastry stuffed with meat and vegetables; frozen pizzas; tamales; tacos; taco chips; tabbouleh; sweet rice with nuts and jujubes (yaksik); sushi; crumble; extruded wheat snacks; canned spaghetti in tomato sauce; spaghetti and meatballs; cheese flavored puffed corn snacks; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; snack food products made from cereal starch; multigrain-based snack foods; snack foods made from wheat; snack foods consisting principally of extruded cereals; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack foods consisting principally of bread; ravioli [prepared]; pizzas [prepared]; pasta-based prepared meals; prepared foodstuffs in the form of sauces; meat pies [prepared]; sausage rolls; wraps [sandwich]; poultry and game meat pies; wholewheat crisps; soft pretzels; wontons; wonton chips; frozen meals consisting primarily of pasta; frozen meals consisting primarily of rice; meals consisting primarily of rice; prepared meals containing [principally] rice; pre-baked pizzas crusts; ready to eat savory snack foods made from maize meal formed by extrusion; boxed lunches consisting of rice, with added meat, fish or vegetables; processed unpopped popcorn; uncooked pizzas; turkey sandwiches; onion biscuits.

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 Class 29

The contested processed fruits, fungi and vegetables (including nuts and pulses) are at least similar to the opponent’s potato products in Class 29. They are all foodstuffs made of vegetables and/or other horticultural comestible products which are prepared for consumption or conservation. the contested goods include, inter alia, vegetables/fruits/nuts and vegetable/fruit salads which are offered in preserved, frozen, dried or cooked form, as well as vegetable/fruit snack bars ready for instant consumption. Considering this, they can have the same nature (dried or otherwise processed foodstuff), purpose (providing instant satisfaction of hunger), relevant public, distribution channels and may be in competition with the opponent’s goods. They can be often found in the same area of supermarkets and in specialized shops.

In contrast, and contrary to the opponent’s assertions, the rest of the contested goods in this Class (meats; dairy products and dairy substitutes; sausage casings, natural or artificial; fish, seafood and molluscs, not live; edible oils and fats; soups and stocks, meat extracts; birds eggs and egg products; prepared insects and larvae) are dissimilar to the opponent’s goods, since they do not have anything in common. In particular, although they are all foodstuffs, the goods at issue do not have the same nature or producers and they are sold in different sections of supermarkets. Furthermore, they are not in competition. The opponent argues that the contested goods and the opponent’s goods serve the same purpose; however, this is not sufficient for a finding of similarity, as they differ in all the other aspects.

Contested goods Class 30

Taking into account the original version from the Benelux trade mark register (Aardappelprodukten, al dan niet voorzien van smaakstoffen, voor zover niet in andere warenklassen begrepen; rijst-, meel- en graanprodukten, al dan niet voorzien van smaakstoffen, voor zover niet in andere warenklassen begrepen), the opponent´s goods can be divided into four categories, namely, ‘potato products’, ‘rice products’, ‘flour products’ and ‘cereal products’. The great majority of the contested goods are included in or overlap with one of these broad categories as detailed below or are at least similar to the opponent’s. Indeed, not only can the goods at issue coincide in some of the relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods, but also these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold in the same places through the same channels of distribution.

- Cereal products and flour products include:

processed grains, starches, and goods made thereof, baking preparations and yeasts; french toast; flavoured popcorn; snack food products consisting of cereal products; snack food products made from potato flour; snack foods prepared from maize; snacks manufactured from mueslihob; baozi [stuffed buns]; flaky pastry containing ham; pretzels; brioches; bean jam buns; frankfurter sandwiches; burritos; calzones; chalupas; cheeseburgers [sandwiches]; chimichanga; Chinese steamed dumplings (shumai, cooked); grain-based chips; crisps made of cereals; chow mein; fresh pies; fresh pizza; fresh sausage rolls; egg rolls; spring rolls; meat pies; pies containing meat; prepared meals containing [principally] pasta; prepared meals in the form of pizzas; pastries consisting of vegetables and fish; fajitas; chocolate-based ready-to-eat food bars; enchiladas; empanadas; egg pies; crepes; crackers flavoured with spices; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with vegetables; crackers flavoured with meat; crackers made of prepared cereals; chow mein [noodle-based dishes]; mincemeat pies; cereal-based snack food; cereal-based meal replacement bars; chips [cereal products]; toasted cheese sandwich with ham; toasted cheese sandwich; toasted sandwiches; corn kernels being toasted; corn, roasted; meals consisting primarily of pasta; vegetable pies; filled bread rolls; Chinese stuffed dumplings (gyoza, cooked); pasta containing stuffings; filled baguettes; frozen pastry stuffed with vegetables; frozen pastry stuffed with meat; chilled pizzas; freeze-dried dishes with the main ingredient being pasta; fried corn; prawn crackers; macaroni with cheese; cheese curls [snacks]; kimchijeon [fermented vegetable pancakes]; caramel coated popcorn with candied nuts; canapes; jiaozi [stuffed dumplings]; cereal snack foods flavoured with cheese; puffed corn snacks; snack foods made from corn and in the form of rings; snack foods made from corn and in the form of puffs; snack foods made from corn; snack food products made from soya flour snack food products made from cereal flour; chicken wraps; chicken pies; hot dog sandwiches; millet cakes; hamburgers contained in bread rolls; hot sausage and ketchup in cut open bread rolls; hamburgers being cooked and contained in a bread roll; flapjacks; oat clusters containing dried fruit; okonomiyaki [Japanese savoury pancakes]; pasta salad; canned pasta foods; noodle-based prepared meals; nachos; steamed buns stuffed with red bean paste; mung bean pancakes (bindaetteok); crackers filled with cheese; caramel coated popcorn; steamed buns stuffed with minced meat (niku-manjuh); sandwiches containing meat; sandwiches containing fish fillet; microwave popcorn; macaroni salad; vegetable flavoured corn chips; corn chips; seaweed flavoured corn chips; lasagne; stir-fried noodles with vegetables (japchae); preserved pizzas; shrimp dumplings; pot pies; puffed cheese balls [corn snacks]; popcorn; candy coated popcorn; pizzas; prepared pizza meals; pita chips; savory pastries; pizza crust; pizza bases; corn-based savoury snacks; cereal-based savoury snacks; prepared savory foodstuffs made from potato flour; green onion pancake [pajeon]; pancakes; pies containing game; pies containing vegetables; pies containing poultry; pies containing fish; pies; pastries consisting of vegetables and poultry; pastries consisting of vegetables and meat; pies [sweet or savoury]; pasta dishes; pork pies; chocolate-based meal replacement bars; sandwiches containing salad; sandwiches containing minced beef; sandwiches containing chicken; sandwiches containing fish; sandwiches; samosas; ravioli; ramen [Japanese noodle-based dish]; quiches; quesadillas; dry and liquid ready-to-serve meals, mainly consisting of pasta; tortillas; tortilla chips; tortilla snacks; frozen pastry stuffed with meat and vegetables; frozen pizzas; tamales; tacos; taco chips; tabbouleh; crumble; extruded wheat snacks; canned spaghetti in tomato sauce; spaghetti and meatballs; cheese flavored puffed corn snacks; snack food products made from maize flour; snack food products made from rusk flour; snack foods made of whole wheat; snack food products made from cereal starch; multigrain-based snack foods; snack foods made from wheat; snack foods consisting principally of extruded cereals; snack foods consisting principally of bread; ravioli [prepared]; pizzas [prepared]; pasta-based prepared meals; meat pies [prepared]; sausage rolls; wraps [sandwich]; poultry and game meat pies; wholewheat crisps; soft pretzels; wontons; wonton chips; pre-baked pizzas crusts; ready to eat savory snack foods made from maize meal formed by extrusion processed unpopped popcorn; uncooked pizzas; turkey sandwiches; onion biscuits.

- Rice products

bibimbap [rice mixed with vegetables and beef]; buckwheat jelly (memilmuk); stir fried rice cake [topokki]; rice-based prepared meals gimbap [Korean rice dish]; rice based dishes; pellet-shaped rice crackers (arare); freeze-dried dishes with the main ingredient being rice; rice glue balls; pumpkin porridge (hobak-juk); glutinous rice wrapped in bamboo leaves (zongzi); snack food products made from rice flour; paella; glutinous pounded rice cake coated with bean powder (injeolmi); sticky rice cakes (chapsalttock); stir-fried rice; senbei [rice crackers]; risotto; chocolate-coated rice cakes; rice-based snack food; rice salad; rice biscuits; rice cakes; rice crackers; rice crusts; rice dumplings dressed with sweet bean jam (ankoro); rice dumplings; prepared rice dishes; rice crisps; dry and liquid ready-to-serve meals, mainly consisting of rice; Korean traditional rice cake [injeolmi]; sweet rice with nuts and jujubes (yaksik); sushi; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; frozen meals consisting primarily of pasta; frozen meals consisting primarily of rice; meals consisting primarily of rice; prepared meals containing [principally] rice; boxed lunches consisting of rice, with added meat, fish or vegetables.

Dissimilar goods

As to the contested goods ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; pineapple fritters; banana fritters; prepared foodstuffs in the form of sauces the opponent states that some are basic components of the earlier goods of the opponent and, therefore, the goods at hand are similar.

These goods and the earlier goods have a different nature and are manufactured by different companies. The goods in question usually originate from different entities and are neither complementary nor in competition. The mere fact that all these goods are foodstuffs and that they are directed at the public at large does not lead to the finding of any degree of similarity, since they are not sold in the same or even neighbouring sections in supermarkets or grocery stores and they do not satisfy the same needs of the public. Therefore, these goods 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.

 

The goods relate to everyday products, namely food, targeting the public at large. The level of attention of the public will be average.

In the present case, the goods found to at least similar are directed at both, the public at large and professionals (e.g. chefs/cooks, or confectioners).

The degree of attention of attention paid by consumers during the purchase of the goods is deemed to vary from average to lower than average. A lower than average degree of attention is likely to be paid in relation to very cheap products, commonly purchased, such as pasta.

c) The signs

 

CHIPITO	Cipitos
Earlier trade mark	Contested sign

 

The relevant territory is Benelux.

 

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).

 

As the comparison affects two word marks, it is worth reminding that in case of word marks it is the word as such that is protected and not its written form, being irrelevant whether they are represented in upper or lower case letters when these depictions do not depart from the usual way of writing.

Both terms are meaningless in all the languages of the relevant territory and therefore, they are distinctive to a normal degree.

Visually the signs coincide in the string of letters ‘C-IPITO-‘ that is six out of eight letters. However, they differ in the additional letter ‘H’ in second position in the earlier mark and the final ‘S’ of the contested sign, which have no counterparts. Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in /c-ipito/ and differ in the sound of the additional /h/ present at the beginning of the earlier mark which makes the sound of /ch/ and the last letter of the contested sign /s/. Moreover, the sequence of three syllables, rhythm and intonation of the signs is very similar. The signs are similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

 

e) Global assessment, other arguments and conclusion

 

 In the present case, the goods have been found to be at least similar and others goods are dissimilar and they are directed at the public at large that will display a degree of attention ranging from low to average when purchasing them.

The marks are visually and aurally similar to a high degree while the conceptual aspect remains neutral. It has been established that the earlier mark enjoys an average degree of distinctiveness.

Both signs are composed of one word, which is of similar length and has a similar structure. It should be noted that the signs coincide in almost all letters and sounds.

Therefore, it cannot be excluded that public may confuse the signs taking further into account 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).

Moreover, account is 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). Applying the aforementioned principle of imperfect recollection, the differences above described may go unnoticed by the consumers. Therefore, it cannot outweigh the similarity between the signs.

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 Benelux trade mark registration. 

 

It follows from the above that the contested trade mark must be rejected for the goods found to be at least 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.

 

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

 

 

Martina GALLE

Gonzalo BILBAO TEJADA

Erkki MÜNTER

 

 

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.