OPPOSITION No B 3 119 875

Princes Limited, Royal Liver Building, Pier Head, Liverpool L3 1NX, United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

S.P.A. Industria Meridionale Conserve Alimentari (I.M.C.A.), Via Provinciale S. Marzano, SNC, 84016 Pagani (SA), Italy (applicant), represented by Francesco Musella, Via Dei Fiorentini N.10, 80133 Napoli, Italy (professional representative).

On 04/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 119 875 is rejected in its entirety.

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

REASONS

On 13/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 163 718 (figurative mark), namely against all the goods in Class 29 and some of the goods in Class 31. The opposition is based on European Union trade mark registration No 5 684 485 ‘DON MARIO’, and United Kingdom trade mark registrations No 2 207 518, No 1 323 231 and No 1 323 230, all of them for the word mark ‘DON MARIO’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period, EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision. It follows that United Kingdom trade mark registrations No 2 207 518, No 1 323 231 and No 1 323 230 no longer constitute a valid basis of the opposition and the Opposition must be dismissed insofar as it is based on these earlier registrations.

Therefore, the present Opposition shall continue based on European Union trade mark registration No 5 684 485 ‘DON MARIO’.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

Class 29: Meat, fish, poultry and game; meat extracts; stocks; preserved, dried and cooked fruits and vegetables; jellies; jams, compotes; fruit purees; preserved, dried, cooked and stewed fruits; soups; sweet or salted appetizers made of potatoes, flavoured or natural, potato chips; cheese pastes; butter; preserved, dried, cooked, frozen or canned ready made dishes, partially or wholly made of meat, fish, ham, poultry or game; shellfish, seafood (mussels, crabmeat, clams, oysters); edible oils, olive oils, edible fats.

Class 30: Coffee, tea, sugar, rice, tapioca, sago, artificial coffee; preparations made from cereals, bread, pastry and honey, treacle; yeast, baking-powder; cake mixes; biscuits; pies; tarts; pizzas; unsweetened cereal preparations; salted ready-made dishes partially or totally made of pastry; cooking sauces; salt, mustard, spices; honey; pasta (plain or flavoured and/or filled); prepared meals totally or partially composed of pasta; vinegar, sauces (condiments), pasta sauces, spices.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; still or aerated waters (mineral or non-mineral waters); vegetable juices; vegetable-based drinks, lemonade, tonic water, ginger beer, sorbets (drinks), preparations for making drinks, syrups for drinks, alcohol-free fruit or vegetable extract drinks.

The contested goods are the following:

Class 29: Sausage skins and imitations thereof; meat; processed fruits, fungi and vegetables (including nuts and pulses); prepared insects and larvae; edible oils and fats; fish, seafood and molluscs, not live; dairy products and dairy substitutes; birds eggs and egg products; soups and stocks, meat extracts; tomato preserves; processed tomatoes; peeled tomatoes; condensed tomatoes; tinned tomatoes; tomato concentrates [puree]; tomato preserves; preserves, pickles; preserves of game; fish, tinned [canned (am.)]; canned meat; vegetables, tinned [canned (am.)]; fruits, tinned [canned (am.)]; preserves of poultry; seafood preserves; tomato extracts; tomato purée; tomato paste; tomato juice for cooking.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; fresh tomatoes; unprocessed tomatoes; fresh grape tomatoes; fresh cherry tomatoes; fresh plum tomatoes.

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 Class 29

Meat, edible oils and fats, fish, soups and stocks and meat extracts are identically contained in both lists of goods (including synonyms).

The contested processed fruits and vegetables (including nuts and pulses); tomato preserves; processed tomatoes; peeled tomatoes; condensed tomatoes; tinned tomatoes; tomato concentrates [puree]; tomato preserves; preserves, pickles; vegetables, tinned [canned (am.)]; fruits, tinned [canned (am.)]; tomato extracts; tomato purée; tomato paste and tomato juice for cooking are identical to the opponent’s preserved, dried and cooked fruits and vegetables because the contested goods include, are included in, or overlap with the opponent’s goods.

The contested seafood and molluscs, not live and seafood preserves include, are included in, or overlap with the opponent’s seafood (mussels, crabmeat, clams, oysters). Therefore, the goods are identical.

The contested preserves of game; fish, tinned [canned (am.); canned meat and preserves of poultry are included in the respective broad categories of the opponent’s meat, fish, poultry and game. Therefore, the goods are identical.

The contested dairy products include, as a broader category, the opponent’s butter. 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 dairy substitutes are a broad category that includes a variety of goods such as margarine. Therefore, the contested dairy substitutes (including, inter alia, margarine) and the opponent’s butter have the same purposes and methods of use and they are in competition, as consumers normally choose between a dairy product (such as butter in the present case) or its substitute. They normally target the same consumers through the same distribution channels and sections of shops, and they originate from the same undertakings. These goods are considered highly similar.

The contested processed fungi are similar to the opponent’s cooked vegetables. Although, botanically, fungi are not vegetables, in terms of nutrition they are considered to be vegetables, because they provide many of the same nutritional attributes. Therefore, the goods at issue are in competition. They target the same consumers, and are found in the same retail outlets, usually placed near each other on the same shelves. Moreover, they are usually produced by the same undertakings.

The contested sausage skins and imitations thereof are similar to the opponent’s meat. Meat is a broad category which includes raw meat and semi-processed meat products, which are used in the production of sausages, such as sausage skins and imitations thereof. These goods target both the meat industry (including meat processing factories, butchers’ shops where sausages are prepared for consumers’ convenience) and the general public, or more precisely, culinary enthusiasts who prepare sausages at home. Meat and sausage skins/intestines originate from the same undertakings (slaughterhouses sell not only meat but also various by-products, such as animal intestines), they are sold in the same places and target the same public who uses these goods for the same purpose.

The contested birds eggs and egg products are similar to a low degree to the opponent’s poultry. The goods have the same relevant public and producers. Moreover, they share the same distribution channels.

The contested prepared insects and larvae target a very specialised public and they are sold through specialised shops, mainly online. They are dissimilar to the opponent’s foodstuffs in Classes 29 and 30 and non-alcoholic beverages and beer in Class 32. The goods have different natures, purposes, methods of use and producers. Furthermore, they are neither in competition nor complementary.

Contested goods in Class 31

The contested agricultural crops and horticulture products are broad categories of goods that contain, among others, vegetables and fruits that are essentially the fresh ingredients necessary for the production of the opponent’s preserved, dried and cooked fruits and vegetables. For example, agricultural crops result from the cultivation of the soil and farming and are in part intended for human consumption and include fresh fruit and vegetables (e.g. maize, potatoes). Horticultural products include fruits, berries, nuts, vegetables (including different types of tomatoes), flowers, trees, shrubs, and turf.

The opponent’s preserved, dried and cooked fruits and vegetables are goods derived originally from the agriculture and horticulture sectors, which are in principle raw or unprocessed products. Consequently, the above contested goods in this class may be in competition with some of the opponent’s goods in Class 29 since the final consumer can choose between fresh (raw) or processed products that are in a different stage of preparation (e.g. cooked, preserved, dried). Indeed, consumers can either purchase the plant, seed or edible part thereof, to further process it into cooking/drying at home, or buy cooked and processed fruits or vegetables. Moreover, despite the difference in their producers, these goods can be found in the same sales outlets (07/09/2018, R 2329/2014‑5, Jardin de pedrissa / La pedriza (fig.) et al., § 69). Therefore, the contested agricultural crops, horticulture products; fresh tomatoes; unprocessed tomatoes; fresh grape tomatoes; fresh cherry tomatoes; fresh plum tomatoes are considered similar to a low degree to the opponent’s preserved, dried and cooked fruits and vegetables.

The category of the contested forestry products refers to raw and unprocessed goods from the forestry sector concerned with the growing of trees in order to obtain raw material for human or animal use, such as tree trunks, unsawn timber, wood chips and bark. Therefore, the contested forestry products are dissimilar to the opponent’s foodstuffs in Classes 29 and 30 and non-alcoholic beverages and beer in Class 32. They do not have any relevant factor in common.

The contested aquacultural crops refer to algacultures, such as seaweeds, and belong to a slightly different market niche from those of the opponent’s traditional foodstuffs in Classes 29 and 30. The goods are neither in competition nor complementary and will not be available through the same distribution channels. They are considered dissimilar to any of the opponent’s goods in Classes 29 and 30. They have even less in common with the opponent’s remaining goods in Class 32.

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 or similar to varying degrees are directed at the public at large. The degree of attention is average.

c) The signs

DON MARIO
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).

Both signs include the verbal element ‘DON’. This element could have different meanings in the relevant territory. For example, in English it could be ‘a member of the teaching staff at a university or college’ (information extracted from Collins Dictionary on 20/04/2021 at https://www.collinsdictionary.com/dictionary/english/don). However, nowadays ‘DON’ is often used as a mark of esteem for a person of personal, social or official distinction. Indeed, it is the Italian or Spanish mark of esteem equivalent to, for example, ‘Mister’ in English, ‘Monsieur’ in French or ‘Herr’ in German. It is used before the given name (Don Camilo, Don Quijote) or the given name and the surname, although not before the surname in isolation (28/04/2016, R 2002/2015‑1, DONTORO dog friendship (fig.) / TORO et al., § 36). It will be recognised in the above-mentioned way across Europe, due to its widespread use, for example in the title of the famous Spanish novel ‘Don Quixote’ by Miguel de Cervantes, or the character of ‘Don Vito Corleone’ in ‘The Godfather’ (08/08/2018, R 305/2018‑5, DON SIMON TRIO / TRIO et al., § 33).

The coinciding verbal element ‘DON’ is followed by the given names ‘Mario’ in the earlier sign and ‘Mariano’ in the contested sign, the latter being also used as a surname. These names will be clearly recognised as such in the relevant territory, inter alia, because they are known from the names of famous persons such as the Italian prime minister Mario Draghi, the Spanish former prime minister Mariano Rajoy, the football players Mario Basler from Germany and Mario Mandzukic from Croatia or with the main character of the popular game ‘Super Mario’ or because of the close equivalents in other languages, (e.g. in Bulgarian, Czech, Polish and Slovakian, where ‘Mariano’ translates into ‘Marian’).

The combination of the verbal element ‘DON’ with the above names will lead the consumers to the conclusion that the verbal elements of the marks are given names, preceded by the Italian or Spanish mark of esteem equivalent to, for example, ‘Mister’ in English, ‘Monsieur’ in French or ‘Herr’ in German.

The verbal element ‘DON’ as well as the names ‘Mario’ and ‘Mariano’ do not have any meaning for the goods in question. However, as explained above, ‘Don’ is well known to be a courtesy title before the name of a man. Accordingly, when another word follows this standard prefix, it is rather this second element which bears decisive importance in identifying the man at hand (see by analogy, 19/11/2015, R 4/2015‑4, MADAME BRIOCHE / MADAME GAUFRETTE et al., § 14). As such, it will be understood merely as a title qualifying the verbal elements ‘Mario’ and ‘Mariano’, which are the elements that serve to identify the persons in question, and accordingly they are the most distinctive elements in both signs, taking further into account that the figurative elements of the contested sign which merely consist of a simple frame with a geometrical shape and the use of colours and a specific, yet rather common typography, are of limited distinctiveness given their purely decorative nature. These word elements, are neither descriptive nor laudatory. (see by analogy, decision of 20/02/2021, R 1084/2020‑4, Melchiori / Don melchor et al., § 49).

Finally, the verbal element ‘Don’ in the contested sign, placed above the letters ‘ar’ of the verbal element ‘Mariano’, is written in small characters whereas the verbal element ‘Mariano’ is significantly larger and occupies a central position within the sign. Therefore, ‘Mariano’ is the dominant element of the contested sign.

Visually and aurally, the signs coincide in the letters/sound of the verbal element ‘DON’ and in the letters/sounds ‘M-A-R-I-(*-*)-O’. The first four letters of ‘MARIO’ and ‘MARIANO’ are in the same position whereas the letter ‘O’ occupies the last position in both signs but is not placed in the same order considering the additional letters that separate it from the sequence ‘MARI’ in the contested sign, namely ‘A’ and ‘N’, placed in the fifth and sixth position in the verbal element ‘Mariano’. Contrary to the opponent’s opinion, this creates a noticeable visual and phonetical difference in the length of the verbal elements of the signs, as well as different rhythm and intonation of their pronunciation. The signs also differ in the figurative elements of the contested sign described above. Therefore, and taking also into account the dominant position of the verbal element ‘Mariano’ and the differing layout of the contested sign, the signs are visually similar to at most an average degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Contrary to the opponent’s opinion, conceptual similarity cannot result simply because both marks contain names, even of the same kind (i.e. a given name). Moreover, the General Court has accepted that names have a concept. The signs will be perceived as forenames preceded by a courtesy title. The relevant public will clearly perceive the different concepts of the names ‘Mario’ and ‘Mariano’. Although they are identical in their beginnings and coincide in their last letter, these are two different names for two different people. One is not the diminutive of the other and the marks do not represent the same name. Therefore, even if both signs contain the concept of ‘Don’, as a whole they each refer to different people and they are conceptually dissimilar.

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 claimed that ‘the mark DON MARIO is highly distinctive in respect of the goods in question as it has no obvious or immediate connection with those goods’. However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link with the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). In any event, in the absence of any evidence to prove such a claim, 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

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).

In the present case the goods are found to be partly identical or similar to varying degrees and partly dissimilar. The degree of attention of the relevant public is average. The signs are visually similar to at most an average degree, aurally similar to an average degree and conceptually dissimilar. The distinctiveness of the earlier mark is normal.

Both signs include male given names, ‘Mario’ and ‘Mariano’ respectively. As explained above, the coinciding verbal element ‘DON’ will not attract the attention of the relevant public due to its function as a qualifier of the names that follow it. On the contrary, the public’s attention will be drawn to the names, especially in the contested sign, where ‘Mariano’ has a dominant position. Considering also the different layouts of the signs, despite the visual and phonetic similarities between these names, the relevant public will clearly distinguish between them and consequently also differentiate between the signs. The public will perceive in the marks two different names belonging to two different persons. Therefore, the conceptual differences between the signs will offset their phonetic and visual similarities.

Considering all the above, even for the goods found to be identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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, it 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

Martina GALLE

Claudia SCHLIE

Angela DI BLASIO

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.