OPPOSITION Nо B 3 112 248

Nova Sea AS, P.O. Box 34, 8764 Lovund, Norway (opponent), represented by Patpol SP Z.O.O., Nowoursynowska 162 J, 02-776 Warszawa, Poland (professional representative)

a g a i n s t

Nova Seafood Jankowiak Kibitlewski Spółka Jawna, Tadeusza Apolinarego Wendy 10b, 70-665 Szczecin, Poland (applicant).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 248 is upheld for all the contested goods.

2. European Union trade mark application No 18 153 701 is rejected in its entirety.

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

REASONS

On 24/02/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 153 701 ‘novaseafood’ (word mark). The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 492 041 ‘NOVA SEA’ (word mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating the European Union No 1 492 041 ‘NOVA SEA’.

a) The goods

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

Class 29: Fish, not live; processed fish products; processed food made of fish; shellfish, not live; edible oils and fats.

The contested goods are the following:

Class 29: Fish, seafood and molluscs, not live; fish, not live; frozen fish.

The contested fish, not live (listed twice) is identically contained in the opponent’s list of goods.

The contested frozen fish is included in the broad category of the opponent’s fish, not live. Therefore, they are identical.

The contested seafood, not live includes, as a broader category, the opponent’s fish, not live. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested molluscs, not live are included in the broad category of the opponent’s shellfish, not live. Therefore, they are identical.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered average.

c) The signs

NOVA SEA	novaseafood
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘NOVA’, ‘SEA’ and ‘SEAFOOD’ in the signs at issue are meaningful in territories where English is spoken and understood. Since this has an impact on the distinctiveness of these elements as well as the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, when perceiving a word mark/component, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, any differences in the use of upper- or lower-case letters is in principle irrelevant (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

The verbal element ‘NOVA’, contained in both signs, will be understood as ‘a star showing a sudden large increase in brightness and then slowly returning to its original state over a few months’ (information extracted from Lexico on 18/05/2021 at https://www.lexico.com/definition/nova). As it has no relation to the goods in question, it has a normal degree of distinctiveness.

The verbal element ‘SEA’ of the earlier sign is non-distinctive, because it designates the place from which the goods in question originate.

The verbal element ‘SEAFOOD’ of the contested sign means ‘shellfish and sea fish, served as food’ (information extracted from Lexico on 18/05/2021 at https://www.lexico.com/definition/seafood). Since the goods in question are, broadly speaking, seafood, this verbal element designates the kind of goods in question and is, therefore, non-distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the sequence of letters, ‘NOVASEA****’ contained identically in both signs, and its sound. However, they differ in the sequence of letters ‘*******FOOD’ of the contested sign and its sound, which have no counterparts in the earlier sign. A further visual difference is the space between the letters ‘A’ and ‘S’ of the earlier sign.

As the differing letters of the contested sign form part of a non-distinctive element, while the initial element ‘NOVA’ in both signs has a normal degree of distinctiveness, the signs are visually and aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of the word ‘NOVA’, which is the most distinctive element in both signs. Moreover, the verbal elements ‘SEA’ and ‘SEAFOOD’ of the earlier and contested sign respectively have similar concepts, insofar as the latter refers to food coming from the sea. Therefore, the signs are conceptually highly similar.

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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are identical. The signs are visually and aurally similar to an above-average degree and conceptually highly similar. The earlier sign has a normal degree of distinctiveness, and the degree of attention is average.

The signs coincide in their initial verbal element ‘NOVA’, which has a normal degree of distinctiveness. The initial part of a sign is generally the part that first catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the initial part of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

The signs differ only in the component ‘FOOD’ at the end of the contested sign, which forms part of the non-distinctive verbal element ‘SEAFOOD’. Despite being non-distinctive, the elements ‘SEA’ and ‘SEAFOOD’ of the earlier and contested sign respectively share some visual, aural and conceptual similarities, based on the verbal element/component ‘SEA’. The latter has also a more prominent position, since in both signs it appears just after the initial verbal element ‘NOVA’, while the component ‘FOOD’ appears at the end of the contested sign.

In light of the foregoing, the similarities between the signs clearly outweigh their differences.

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).

Due to the similarities between the signs and the identity of the goods in question, the relevant consumers are likely to believe that the goods bearing the signs at issue originate from the same undertaking or from economically linked undertakings.

In its observations, the applicant argues that similar trade marks for similar or identical goods can coexist freely on the market. It gives the examples of the trade marks ‘SILVER COLA’, ‘PEPSI-COLA’, ‘Afri – Cola’, ‘SDI Junior Cola’, ‘SwissCola’ and ‘DraCola’ on the one hand, and the marks ‘mentamare’, ‘MARE’ and ‘Sofia MARE’ on the other.

However, these trade marks do not share any similar features, even vague ones, with the marks at issue. Therefore, the possibility that the above trade marks might co-exist on the market is not conclusive for the marks at issue. In addition, the applicant has not adduced any evidence that the trade marks at issue coexist freely on the market.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also provides several opinions from its own clients, according to which likelihood of confusion between the marks at issue is excluded.

First, it has to be noted that likelihood of confusion has been assessed in the present case based on the perception of the English-speaking part of the relevant public. Some of the opinions presented by the applicant, however, are from clients from the Netherlands or Norway. These opinions are not indicative of the perception of the English-speaking part of the public.

Second, these opinions in themselves do not conclusively indicate the perception of a significant part of the relevant public. Even if the opinions provided by the applicant were all from English-speaking consumers, they would still not be sufficient to safely exclude a likelihood of confusion, because they do not reflect the perception of the signs by the majority of the public. If a significant part of the relevant public for the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient to conclude that there is a likelihood of confusion pursuant to Article 8(1)(b) EUTMR. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.

Considering all the above, there is a likelihood of confusion on the part of the English-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 international trade mark registration designating the European Union No 1 492 041. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Gueorgui IVANOV

Ivo TSENKOV

Justyna GBYL

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.