OPPOSITION Nо B 3 121 028

 

NuttZo LLC, 3525 Del Mar Heights Road 728, CA 92130 San Diego, United States of America (opponent), represented by Ballester IP, Avda. de la Constitución 16, 1°D, 03002 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Ve Interaktif Medya Internet Ve Tanitim Hiz. San. Tic. Ltd. Sti., Çamtepe Mah. Mahmut Tevfi̇k Atay Blv. Gazi̇antep Teknopark A Blok Kat: 2 No: 201, Sahinbey Gaziantep, Turkey (applicant), represented by Inlex IP Expertise, Plaza San Cristobal 14, 03002 Alicante, Spain (professional representative).

On 16/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 121 028 is partially upheld, namely for the following contested goods and services:

 

Class 29: Dried pulses; olive paste; butter; margarine; jams; dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries; tomato paste, pepper paste; dried fruits; shelled fruits; roasted fruits; processed fruits; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; nuts, peanuts and seed based snack bars; nuts and peanut butter, tahini; potato chips. Class 30: Pastry and bakery products, bread, bagels, pastry, pita, sandwich, pie, custard; condiments and flavors for food, sauces including spices, tomato sauces; confectionery, chocolates, biscuits, crackers, wafers, Turkish delight, Turkish delight with chocolate; cookies made of cereals, popcorn, corn chips, breakfast cereals; dried fruits with sugar or chocolate; shelled fruits with sugar or chocolate; roasted fruits with sugar or chocolate; processed fruits with sugar or chocolate; sauced fruits with sugar or chocolate; coated fruits with sugar or chocolate. Class 35: The bringing together, for the benefit of others, of cooked, dried and preserved meat products, beef, sausage, salami, chicken meat, dried pulses, canned olives, olive paste, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of butter, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of margarine, jams, compotes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried vegetables, dried peppers, dried eggplant, dried tomatoes, dried zucchini, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried okra, canned fruits, canned vegetables, tomato paste, pepper paste, tomato extracts, tomato juice for cooking, canned tomatoes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried fruits, fresh or shelled or roasted or processed or sauced or coated with sugar or chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of sunflower seeds, pumpkin seeds, watermelon seeds, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts, peanuts and seed based snack bars, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts and peanut butter, tahini, potato chips, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of pastry and bakery products, desserts, bread, bagels, pastry, pita, sandwich, pie, desserts, pudding, custard, pudding, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of condiments and flavors for food, sauces including spices, tomato sauces, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of confectionery, chocolates, biscuits, crackers, wafers, Turkish delight, Turkish delight with chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of cookies made of cereals, popcorn, corn chips, breakfast cereals, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of molasses, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes. Class 43: All the services in this Class.

2.

European Union trade mark application No 18 138 403 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 138 403 for the figurative sign , namely against all the goods and services in Classes 29, 30, 35 and 43. The opposition is based on, inter alia, European Union trade mark registration No 12 338 943 for the word mark ‘NUTTZO’. 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 and services

 

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

Class 29: Nut butters; nut and seed butters; chocolate nut butter; peanut butter; nut and seed-based snack bars; jams; jellies; snack mix consisting primarily of nuts, seeds, crackers and dried fruit.

Class 30: Crackers; cracker and nut butter combinations.

The contested goods and services are the following:

Class 29: Cooked, dried and preserved meat products; beef, sausage, salami, chicken meat; dried pulses; beans, chickpeas, lentils, peas, kidney beans, black eyed peas, kinoa; canned olives, olive paste; milk of animal origin; vegetable-derived milks; dairy products; cheese, yogurt, buttermilk, butter; edible vegetable oils; olive oil, sunflower oil, corn oil, hazelnut oil, margarine; jams, compotes; dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries; dried vegetables; dried peppers, dried eggplant, dried tomatoes, dried zucchini; dried okra, canned fruits, canned vegetables, tomato paste, pepper paste, tomato extracts, tomato juice for cooking, canned tomatoes; dried fruits; shelled fruits; roasted fruits; processed fruits; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; nuts, peanuts and seed based snack bars; nuts and peanut butter, tahini; potato chips.

Class 30: Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pastry and bakery products, desserts, bread, bagels, pastry, pita, sandwich, pie, desserts, pudding, custard, pudding; condiments and flavors for food, sauces including spices, tomato sauces; confectionery, chocolates, biscuits, crackers, wafers, Turkish delight, Turkish delight with chocolate; cookies made of cereals, popcorn, corn chips, breakfast cereals, processed wheat, barley, oats, rye, rice; molasses; dried fruits with sugar or chocolate; shelled fruits with sugar or chocolate; roasted fruits with sugar or chocolate; processed fruits with sugar or chocolate; sauced fruits with sugar or chocolate; coated fruits with sugar or chocolate.

Class 35: Marketing and promotional services, advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of cooked, dried and preserved meat products, beef, sausage, salami, chicken meat, dried pulses, beans, chickpeas, lentils, peas, kidney beans, black eyed peas, kinoa, canned olives, olive paste, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of milk of animal origin, vegetable-derived milks, dairy products, cheese, yogurt, buttermilk, butter, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of edible vegetable oils, olive oil, sunflower oil, corn oil, hazelnut oil, margarine, jams, compotes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried vegetables, dried peppers, dried eggplant, dried tomatoes, dried zucchini, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried okra, canned fruits, canned vegetables, tomato paste, pepper paste, tomato extracts, tomato juice for cooking, canned tomatoes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried fruits, fresh or shelled or roasted or processed or sauced or coated with sugar or chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of sunflower seeds, pumpkin seeds, watermelon seeds, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts, peanuts and seed based snack bars, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts and peanut butter, tahini, potato chips, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of coffee, cocoa, coffee or cocoa based beverages, chocolate based beverages, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of pastry and bakery products, desserts, bread, bagels, pastry, pita, sandwich, pie, desserts, pudding, custard, pudding, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of condiments and flavors for food, sauces including spices, tomato sauces, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of confectionery, chocolates, biscuits, crackers, wafers, Turkish delight, Turkish delight with chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of cookies made of cereals, popcorn, corn chips, breakfast cereals, processed wheat, barley, oats, rye, rice, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of molasses, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

Class 43: Food and beverage services; restaurant, patisserie, cafe and bar services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

 

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that 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.

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.

Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

Goods (or services) are in competition with each other when one can substitute the other. That means that they serve the same or a similar purpose and are offered to the same actual and potential customers. In such a case, the goods/services are also defined as ‘interchangeable’ (04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 42).

Contested goods in Class 29

Jams are included identically in both lists of goods.

Nuts butter is a synonym to the opponent’s nut butters. Therefore, they are identical.

The contested peanut butter is included in the broad category of the opponent’s nut and seed butters. Therefore, they are identical.

The contested margarine; tahini; butter are similar to the opponent’s nut and seed butters. They coincide not only in their nature and purpose, but also in their distribution channels, producers and method of use. Furthermore, they can be in competition with each other.

The contested olive paste; tomato paste, pepper paste; canned olives, dried vegetables; dried peppers, dried eggplant, dried tomatoes, dried zucchini; dried okra, canned fruits, canned vegetables, tomato extracts, tomato juice for cooking, canned tomatoes; compotes are at least similar to a low degree to the opponent’s jams. They can coincide in their purpose, distribution channels and producers. At least some of the goods are in competition.

The contested dried pulses; dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries; dried fruits; shelled fruits; roasted fruits; processed fruits; processed sunflower seeds; processed pumpkin seeds; processed watermelon seeds; nuts, peanuts and seed based snack bars; potato chips are at least similar to a low degree to the opponent’s snack mix consisting primarily of nuts, seeds, crackers and dried fruit. They can coincide in their purpose, distribution channels and producers. At least some of the goods are in competition.

The contested cooked, dried and preserved meat products; beef, sausage, salami, chicken meat are similar to the opponent’s jellies. They can coincide in their purpose, distribution channels and producers. At least some of the goods are in competition.

The contested beans, chickpeas, lentils, peas, kidney beans, black eyed peas, kinoa; milk of animal origin; vegetable-derived milks; dairy products; cheese, yogurt, buttermilk; edible vegetable oils; olive oil, sunflower oil, corn oil, hazelnut oil are dissimilar to the opponent’s goods in Classes 29 and 30. They differ in their nature, purpose, distribution channels, sales outlets, producers and method of use. Furthermore, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 30

Crackers are identically contained in both lists of the goods.

The contested condiments and flavors for food, sauces including spices, tomato sauces are similar to the opponent’s jams in Class 29. They have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

The contested desserts (listed twice), pudding (listed twice); pastry (listed twice) and bakery products, bread, bagels, pita, sandwich, pie, custard; confectionery, chocolates, biscuits, wafers, Turkish delight, Turkish delight with chocolate; cookies made of cereals, popcorn, corn chips, breakfast cereals; dried fruits with sugar or chocolate; shelled fruits with sugar or chocolate; roasted fruits with sugar or chocolate; processed fruits with sugar or chocolate; sauced fruits with sugar or chocolate; coated fruits with sugar or chocolate are similar at least to a low degree to the opponent’s crackers. They coincide in their purpose, distribution channels, sales outlets and producers. Furthermore, some of them can be in competition.

The contested molasses are similar to the opponent’s jellies. They coincide in their purpose, distribution channels, sales outlets and producers. Furthermore, some of them can be in competition.

The contested coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; processed wheat, barley, oats, rye, rice are dissimilar to the opponent’s goods in Classes 29 and 30. They differ not only in their nature, but also in their distribution channels, producers and method of use. Furthermore, hey are neither in competition with each other nor complementary to each other.

Contested services in Class 35

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

These rules apply by analogy to the bringing together, for the benefit of others, of (goods), enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes as these services are in fact a kind of retail services.

The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

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.

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 in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

 

A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

 

Retail services of specific goods and goods found to be dissimilar (or only similar to a low degree) are dissimilar . Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Bearing in mind the above, the contested the bringing together, for the benefit of others, of cooked, dried and preserved meat products, beef, sausage, salami, chicken meat, dried pulses, canned olives, olive paste, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of butter, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of margarine, jams, compotes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried snack fruits, fruit chips, dried figs, dried apricots, dried dates, dried grapes, dried blueberries, dried mulberries, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried vegetables, dried peppers, dried eggplant, dried tomatoes, dried zucchini, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried okra, canned fruits, canned vegetables, tomato paste, pepper paste, tomato extracts, tomato juice for cooking, canned tomatoes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dried fruits, fresh or shelled or roasted or processed or sauced or coated with sugar or chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of sunflower seeds, pumpkin seeds, watermelon seeds, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts, peanuts and seed based snack bars, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of nuts and peanut butter, tahini, potato chips, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of pastry and bakery products, desserts, bread, bagels, pastry, pita, sandwich, pie, desserts, pudding, custard, pudding, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of condiments and flavors for food, sauces including spices, tomato sauces, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of confectionery, chocolates, biscuits, crackers, wafers, Turkish delight, Turkish delight with chocolate, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of cookies made of cereals, popcorn, corn chips, breakfast cereals, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of molasses, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes are similar at least to a low degree to the respective opponent’s goods in Classes 29 and 30. The appropriate comparison of the goods was undertaken above. It should be explained that in this comparison the opponent’s were found either similar or similar at least to a low degree.

The remaining contested services, namely the bringing together, for the benefit of others, of beans, chickpeas, lentils, peas, kidney beans, black eyed peas, kinoa, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of milk of animal origin, vegetable-derived milks, dairy products, cheese, yogurt, buttermilk, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of edible vegetable oils, olive oil, sunflower oil, corn oil, hazelnut oil, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of coffee, cocoa, coffee or cocoa based beverages, chocolate based beverages, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of processed wheat, barley, oats, rye, rice, enabling customers to conveniently view and purchase those goods; all of the aforementioned services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes are dissimilar to the opponent’s goods in Classes 29 and 30. The appropriate comparison of the goods was undertaken above. It should be explained that in this comparison above the goods in question were found dissimilar.

The remaining contested services, namely marketing and promotional services, advertising; business management; business administration; office functions have no points in common with the opponent’s goods in Classes 29 and 30.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

Office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

The aforesaid contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The contested services and the opponent’s goods differ in their distribution channels, producers/providers and method of use. Furthermore, they are neither in competition with each other nor complementary to each other. Therefore, the aforesaid services are dissimilar to the opponent’s goods.

Contested services in Class 43

The contested food and beverage services; restaurant, patisserie, cafe and bar services are similar to a low degree to the opponent’s crackers in Class 30. The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (04/06/2015, T‑562/14, YOO/ YO, EU:T:2015:363, § 25, 27; 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Goods/services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking. Consequently, they usually coincide in producer and distribution channels. Furthermore, they are 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 and services found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention is average.

c) The signs

 

NUTTZO
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 elements ‘NUTTZO’ and ‘NUTSSO’, as well as their parts, are meaningless in various territories, for example in those countries where Polish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking public.

As the signs have no meaning for the relevant public, they are distinctive for the goods and services in question.

The contested sign, although it was applied for as a word mark, is depicted in normal characters and, therefore, its stylization plays no role in the comparison.

Visually, the marks coincide in the string of letters ‘NUT**O’. The signs differ in their middle letters, namely ‘***TZ*’ and ‘***SS*’. The stylization of the contested sign is very commonplace and plays no role in the comparison as indicated above.

Taking into account all the above, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘NUT**O’, present identically in the signs. The pronunciation differs in the sound of the final letters of the contested sign, namely ‘***TZ*’ and ‘***SS*’. It should be noted that these letters can be pronounced similarly in Polish. The intonation and length is quite similar.

Taking into account all the above, the signs are considered aurally similar to an above average 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 and 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

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 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 goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at the public at large whose degree of attention is average. The signs are visually similar to an average degree and aurally they are highly similar. The conceptual comparison remains neutral. The earlier mark’s distinctiveness is normal.

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).

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).

The conflicting signs coincide in their first three and the last letters what, as explained above, makes them visually similar to an average degree and aurally similar to an above average degree. The conceptual comparison remains neutral. Beginnings are always more memorable to the public. Furthermore, the middle letter can be overlooked or overheard. The stylization of the letters in the contested sign plays no role in the comparison as it is they are depicted in standard characters. Accordingly, the Opposition Division finds that the differences between the signs are not sufficient to outweigh the striking similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark, even those found to be similar to a low degree.

The rest of the contested goods and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Julia GARCÍA MURILLO

Michal KRUK

Saida CRABBE

 

 

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.