OPPOSITION Nо B 3 113 780

Tat Hui Foods Pte Limited, 37 Quality Road, 618808 Jurong Town, Singapore (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, FI-00100 Helsinki, Finland (professional representative)

a g a i n s t

Kookabarra Juice, Min – Bât G9 135 Avenue Pierre Sémard, 84000 Avignon, France (applicant), represented by Cabinet Germain & Maureau, 12, Rue Boileau, 69006 Lyon, France (professional representative).

On 02/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 113 780 is partially upheld, namely for the following contested goods:

Class 30: Preparations made from cereals; pastry.

2. European Union trade mark application No 18 155 809 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 the goods of European Union trade mark application No 18 155 809 for the word mark ‘KOOKA’. The opposition is based on European Union trade mark registration No 1 567 460 for the word mark ‘KOKA’. 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: Noodles.

The contested goods are the following:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; jams, compotes; fruit jellies; fruit pulp; fruit salads; fruit chips; fruit puree; vegetable puree; vegetable juice concentrates for food; fruits and vegetables stored in tins or in glass containers.

Class 30: Preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, condiments; spices; ice; sweeteners (natural -); infusions, not medicinal; tea-based beverages; iced tea.

Class 31: Fresh fruits and vegetables; seeds, natural plants and flowers.

Class 32: Mineral and aerated waters; non-alcoholic drinks, fruit drinks and fruit juices; fruit drinks and fruits juices; non-alcoholic vegetable juice drinks; syrups and other preparations for making beverages; fruit-based smoothies.

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.

Contested goods in Classes 29 and 31

The contested goods are different kinds of processed fruit and vegetables (Class 29) as well as fresh fruits and vegetables; seeds, natural plants and flowers (Class 31). The opponent’s noodles are long thin curly strips of pasta and are used especially in Chinese and Italian cooking. They are dissimilar to all of the opponent’s goods in Classes 29 and 31 as they have a different nature and method of use. Contrary to the applicant’s opinion, the mere fact that these goods are, broadly speaking, foodstuffs is not sufficient to render them similar, as they are different categories of foodstuffs (‘noodles’ are a kind of pasta whereas the opponent’s goods are fruits, vegetables, processed or not, as well as seeds, natural plants and flowers). In addition, the goods usually have different commercial origins and are not normally displayed on the same shelves even if they are sold in the same establishments.

Contested goods in Class 30

The contested preparations made from cereals are a broad category including anything that can be made from processed cereals. Therefore, they include, as a broader category, the opponent’s noodles. 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 pastry and the opponent’s noodles have a similar nature and may be distributed through the same channels to the same public. In fact, they can be sold as prepared meals (i.e. prepared noodles meals and savoury pastries) in the same chilled sections of supermarkets. Moreover, they can coincide in producers.

The contested bread and confectionery; ices; honey, treacles; yeast, condiments; spices; ice; sweeteners (natural -); infusions, not medicinal; tea-based beverages; iced tea are considered dissimilar to the opponent’s noodles. As stated above, the mere fact that all these contested goods and the opponent’s noodles are for human consumption is not sufficient for a finding of similarity as the goods belong to different categories of foodstuffs. Therefore, they have a different nature and usually do not originate from the same undertakings. Even if the contested bread and confectionery are products made, inter alia, from flour, like the opponent’s ‘noodles’, they are processed in a completely different way by companies with different expertise and know-how. Furthermore, these goods are sold in different sections of supermarkets and, even if some of them may be used in combination (e.g. the contested condiments and the opponent’s noodles), as the opponent claims, they are neither complementary nor in competition.

In this regard, complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience (e.g. bread and butter), and are not essential for each other (16/12/2013, R 634/2013‑4, ST LAB (fig.) / ST et al., § 20). In such cases, similarity can only be found on the basis of other factors, not on complementarity. Contrary to the opponent’s arguments, the fact that some of these goods (e.g. condiments) may be used in combination with the opponent’s noodles or that they may be offered for sale in the same places is not sufficient for a finding of similarity, as the goods have nothing relevant in common. Although stores (e.g. modern supermarkets) sell goods of all kinds, the relevant public is aware that the goods sold in these places originate from a multitude of undertakings.

Contested goods in Class 32

The contested goods are all kinds of non-alcoholic beverages, and syrups and other preparations to make beverages. They are considered to be dissimilar to the opponent’s noodles. They differ in nature, purpose and usually do not originate from the same undertakings. Furthermore, these goods are sold in different sections of supermarkets. As stated above, contrary to the opponent’s argument, the mere fact that they may be offered for sale in the same places (e.g. restaurants, take-away outlets) is not sufficient to find similarity as the relevant public is aware that these goods originate from different undertakings.

Both the applicant and the opponent refer to previous decisions of the Office to support their arguments regarding the similarity/dissimilarity of the goods. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 whose degree of attention is average.

c) The signs

KOKA	KOOKA
Earlier trade mark	Contested sign

The relevant territory is 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.

When an opposition is based on a European Union trade mark, while conducting the aural comparison, account must be taken of all the different pronunciations of the signs by the relevant public and the signs’ different meanings in all the official languages of the Member States.

In the present case, for a part of the public, such as the English-speaking part of the public, the pronunciation of the signs’ verbal elements, ‘KOKA’ and ‘KOOKA’, differs in the sound of the vowel(s) ‘O’/‘OO’: the single ‘O’ pronounced as /o/ in the earlier mark and the ‘OO’ of the contested sign pronounced as /u/. However, the pronunciation of these verbal elements is highly similar for another part of the public, such as the Italian- and Spanish-speaking public, who will pronounce the vowels ‘OO’ of the contested sign as a long /o/, which is very similar to the sound of the single letter ‘O’ in the earlier mark.

Therefore, the Opposition Division will focus the assessment of the comparison of the signs in relation to the part of the public for which the verbal elements ‘KOKA’ and ‘KOOKA’ are aurally highly similar – such as the Italian- and Spanish-speaking part of the public.

The verbal elements ‘KOKA’ and ‘KOOKA’ are meaningless for the relevant public and are, therefore, distinctive. As word marks, the signs have no elements that could be considered more dominant than other element.

Visually, the signs coincide in the sequence of letters ‘KO(*)KA’, which constitutes the entirety of the earlier mark and four out of five letters of the contested sign. The signs only differ in the contested sign’s additional letter ‘O’ in third position, which is merely a repetition of the previous letter.

Therefore, the signs are visually highly similar.

Aurally, taking into consideration the previous assertions concerning the aural comparison of the marks, they are considered aurally 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

According to the case-law of the Court of Justice, 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, § 23).

The goods have been found partly identical and partly dissimilar. The goods found identical target the public at large, whose level of attention is considered average. The signs are visually and aurally similar to a high degree as they share the same four letters and only differ in the fact that the common letter ‘O’ is repeated in the contested sign. This small difference can be easily overlooked (especially because the additional letter is a mere repetition of the previous letter) and it is clearly not sufficient to counteract the similarities between the signs. Moreover, conceptually, the marks do not convey any semantic content that could set them apart in the perception of the relevant public.

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).

Considering all the above, and also given the identity of the goods, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European trade mark registration No 1 567 460. 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 found to be identical 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

Aldo BLASI

Angela DI BLASIO

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.