OPPOSITION Nо B 3 105 077

Francesco Laurieri, Via G. Agnelli, Z.I. La Martella, SNC, 75100 Matera, Italy (opponent), represented by Marks & Us, Marcas Y Patentes, Ibáñez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Quality Food Group S.P.A., Via Spilimbergo, 221, 33035 Martignacco (UD), Italy (applicant), represented by Brunacci & Partners S.r.l., Via Pietro Giardini, 625, 41125 Modena, Italy (professional representative).

On 27/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 077 is rejected in its entirety.

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

REASONS

On 04/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 131 507 (figurative mark)namely against all the goods in Classes 5 and 30. The opposition is based on European Union trade mark registration No 16 291 891 . 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: Rice; flour; ices; sugar, honey, treacle; salt; mustard; spices; ice; vinegar; sauces [condiments]; sauces; condiments; coffee; tea; cocoa; artificial coffee; tapioca; sago; yeast; baking powder.

The contested goods are the following:

Class 5: Infant formula; medicated candy; diabetic bread adapted for medical use; digestives for pharmaceutical purposes; flour for pharmaceutical purposes; lacteal flour for babies; chewing gum for medical purposes; milk sugar for pharmaceutical purposes; yeast for pharmaceutical purposes; dietetic foods adapted for medical use; bread, crackers, rusks and baked goods enriched with vitamins for therapy purposes; bread, crackers, rusks, cookies and baked goods enriched with dietary fibre; low-sodium bread, crackers, rusks, cookies and baked goods for medical purposes; homogenized food adapted for medical purposes; biological preparations for medical purposes; dietetic beverages adapted for medical purposes; medical preparation for slimming purposes; dietetic substances adapted for medical use.

Class 30: Sponge cake; sponge cake; petit-beurre biscuits; wafers (biscuits); cereal-based snack food; rice-based snack food; bread substitutes; crackers; waffles; gluten free bread, crackers, rusks, cookies and baked goods; wholemeal and multi-grain bread, crackers, rusks, cookies and baked goods; low-sodium bread, crackers, rusks, cookies and baked goods; thin breadsticks; gluten-free crackers; gluten-free biscuits; rusks; sponge cake; sweetmeats [candy]; buns; chocolate; sponge cake; bread rolls; pizza; pralines; caramels; bubble gum; sweetmeats [candy]; farinaceous food pastes; high-protein cereal bars; edible ices; rice; sugar; honey; coffee; artificial coffee; tea; cocoa; flour; cereal preparations; bread; croutons; yeast.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large.

The degree of attention may vary from average to high (e.g. for most of the goods in Class 5), depending on the specialised nature of the goods, the frequency of purchase and their price. Even though part of the contested goods are not pharmaceuticals per se as they are adapted for medical purposes, the case-law in relation to pharmaceutical preparations can be equally applied. The relevant public’s degree of attention will be relatively high, whether or not issued on prescription, as in this case the taking of the goods could affect the state of health (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The elements ‘BAKERS’ and ‘Bakery’ are meaningful in part of the EU, namely for those that understand English, as ‘BAKERS’ means ‘persons whose job is to bake and sell bread, pastries, and cakes’ and ‘Bakery’ means ‘a building where bread, pastries, and cakes are baked, or the shop where they are sold’ and are, therefore, non-distinctive for this part of the public and for the relevant goods.

However, for the non-English-speaking parts of the European Union, such as the Spanish-speaking part of the public, these elements have no meaning and are distinctive.

Moreover, the common element ‘MASTER’ will be understood by the English-speaking part of the public as referring to ‘a person very skilled or famous in a discipline, as an art or science’, and, therefore, can be descriptive of the characteristics of the goods in question, as indicating that they are of very good quality, and, therefore, has a low distinctive character. For another part of the public, such as the Spanish-speaking part of the public, this element will, however, be understood as the (university) master’s degree (information extracted from Diccionario de la lengua Española on 14/04/2021 at https://dle.rae.es/m%C3%A1ster) and is, therefore, weak.

The Opposition Division will first examine the opposition in relation to the Spanish-speaking part of the public, for whom these elements have no meaning and have a normal degree of distinctiveness, and for whom ‘MASTER’ is weak.

The earlier mark is a figurative mark consisting of the verbal elements ‘CIAO ITALIA MASTER BAKERS’, depicted in gold upper-case letters and placed on three different lines. The verbal elements ‘CIAO ITALIA’ are placed in the middle of the mark and are written in a much larger font than the rest of the words. Below the verbal element ‘ITALIA’, there is a tricoloured (green, white and red) line. On the top and bottom of the mark, there are depictions of gold fancy geometrical motifs. All these elements are placed against a gold-profiled rectangle with a brown background. The word ‘BAKERS’ is meaningless for the Spanish-speaking public and, therefore, distinctive. The remaining verbal elements ‘CIAO ITALIA MASTER’ will, however, be understood by this public. ‘CIAO’ as referring to ‘the Italian informal way of saying goodbye to someone who they expect to see again soon’, ‘ITALIA’ as referring to the country, and ‘MASTER’ as described above. The word ‘ITALIA’ lacks distinctive character as it is descriptive of the geographical origin of the goods, that meaning is reinforced by the colours of the line under the word ‘ITALIA’, which are the colours of the Italian flag. However, the rest of the verbal elements, as they do not have any relation with the relevant goods, are considered to be distinctive. The verbal elements ‘CIAO ITALIA’ are the co-dominant elements of the earlier mark. Finally, the figurative elements are ornamental.

The contested mark is a figurative sign consisting of the verbal elements ‘Italian Master Bakery’, depicted in stylised black letters, placed on three lines and inside a slightly irregular stylised circle. Furthermore, below the word ‘Bakery’ there is a figurative element depicting a tricoloured (green, white and red) heart, overlaying the circle, and on the same level but on the right, there is the depiction of a gondola. The word ‘Italian’ does not exist as such in Spanish but will be associated with the word ‘ITALIANO’/‘ITALIANA’ due to its proximity and will, therefore, be understood by the relevant public as referring to ‘a person or something from Italy’, and is, therefore, non-distinctive. The figurative element depicting a heart with the colours of the Italian flag, together with the depiction of a gondola typical of Venice, Italy, enhance the concept of Italy that comes from the verbal element ‘Italian’. The same considerations as for the earlier right apply to the meaning and distinctiveness of the verbal elements ‘Master’ and ‘Bakery’. The irregular circle could be seen as a bitten cookie, which is weak in relation to the relevant goods.

Visually, the signs coincide in almost the entirety of the words ‘MASTER BAKERS’/‘Master Bakery’, which, however, occupy a secondary position in the earlier sign. The differences in these words reside in their last letters, ‘S v y’, and in their stylisations. The signs also coincide in the letters ‘ITALIA*’, which are co-dominant in the earlier mark. However, the verbal elements ‘ITALIA’ and ‘Italian’ have been considered non-distinctive. Moreover, the signs differ in the distinctive and co-dominant element ‘CIAO’ of the earlier mark, the last letter ‘n’ of the verbal element ‘Italian’ of the contested sign and in their figurative elements.

Although, in general, the verbal element of the sign has a stronger impact on the consumer than its figurative part, the particular graphical composition of the signs and the dominance of their various elements have to be given appropriate significance when the visual impact of the marks is considered. Hence, taking into consideration the overall impression given by the signs, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘ITALIA*’, present identically in both signs. However, ‘ITALIA’ and ‘Italian’ lack distinctive character. The signs further coincide in the sounds of the words ‘MASTER BAKER*’. However, it is probable that these words of the earlier mark would not be pronounced since the relevant public tends to shorten long signs and only pronounce the dominant element of a trade mark (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44), and, it is reasonable to assume, that only the dominant elements ‘CIAO ITALIA’ of the earlier mark will be pronounced by the relevant consumers when referred to aurally. The pronunciation differs in the sound of the last letters ‘S’ of the word ‘BAKERS’ of the earlier mark and ‘y’ of the word ‘Bakery’ and ‘n’ of the word ‘Italian’ of the contested mark and in the co-dominant word ‘CIAO’ of the earlier mark.

Therefore, the signs are aurally similar to a below-average degree.

Conceptually, having regard to the semantic analysis of the signs as carried out above when identifying the distinctive elements, for the relevant public, the signs will convey the same concepts of ‘MASTER’ and of ‘Italy’ due to the colours of the Italian flag used in the marks and of the words ‘ITALIA’/‘ITALIAN’. However, the concept of ‘Italy’ has almost no relevance for the reasons explained above. As a consequence, the signs are considered to be conceptually similar to a low degree on account of the word ‘MASTER’.

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 his 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 non-distinctive element, and a non-distinctive figurative element in the earlier mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

According to the case-law, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22, et seq.).

In the present case, the goods have been assumed to be identical. The level of attention is average and the earlier mark enjoys a normal degree of distinctive character.

The signs are visually similar to a very low degree and aurally similar to a below average degree to the extent that they virtually coincide identically in the words ‘MASTER BAKERS’/‘Master Bakery’ and ‘ITALIA’/‘Italian’. However, the words ‘MASTER BAKER’ occupy a secondary position in the earlier sign, whereas the other verbal elements ‘CIAO ITALIA’ are the dominant verbal elements and will be the one the relevant consumers refer to when encountering the earlier sign. Moreover, the words ‘ITALIA’/‘Italian’ are considered non-distinctive.

Furthermore, the structure of a sign may influence the effect of the differences between them. The structure of the signs will be easily noted and distinguished from each other.

Therefore, the public will immediately note the existing differences between the signs, namely in the structures and compositions, the figurative elements and the stylisation of the signs. According to established case-law, figurative or stylistic elements of a composite sign cannot summarily be dismissed as negligible for the purpose of the comparison of the signs to the extent to which they can add to the differentiation between them or even contribute to a different overall impression (08/02/2007, T‑88/05, Nars, EU:T:2007:45, § 61). Therefore, even if the above figurative elements are not completely distinctive, they clearly create a very different overall impression of the signs.

The opponent referred to the principle of interdependence, which implies that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that the goods are identical, as assumed in this case, cannot compensate for the differences between the signs.

The opponent also argued that these kinds of goods are normally ordered orally, and, therefore, the visual impact is not crucial in this case. However, the fact that the relevant goods are very often ordered orally does not mean that the visual impression of the signs can be overlooked in the present case. In fact, the relevant goods are not only sold in bakeries, where they would be ordered orally, but in supermarkets as well, where they would be purchased after at least some visual inspection.

Based on the overall assessment of the two signs, the Opposition Division takes the view that the differing elements, including the verbal and figurative elements, will enable consumers, even those displaying an average degree of attention, to safely differentiate between the signs.

Considering all of the above, it is concluded that there is no likelihood of confusion on the part of the Spanish-speaking part of the public for whom ‘BAKERS’/‘Bakery’ have no meaning.

This absence of a likelihood of confusion applies equally to the part of the public for which the elements ‘BAKERS’/‘Bakery’ are understood and non-distinctive and for which the word ‘MASTER’ is non-distinctive. This is because, as a result of the weak character of these elements, that part of the public will perceive the signs as being even less similar from a visual and phonetic point of view and the low degree of conceptual similarity that may be established on account of the weak elements will not be sufficient to prevail over the differences in the marks. The differences between the signs and the overall perception of the marks are of such a nature that there is no likelihood of confusion. Moreover, for the part of the public for which ‘BAKERS’/‘Bakery’ is understood but distinctive, the marks comprise totally distinct design styles and the visual differences are so striking, it is highly unlikely that a consumer would confuse them.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected in relation to the earlier European Union trade mark registration No 16 291 891 .

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, he 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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.