OPPOSITION Nо B 3 118 368

 

Blue Skyline Overseas Ltd, 11 Apostolou Andrea Street, Hyper Tower, Office 101, 4007 Limassol (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 München, Germany (professional representative) 

 

a g a i n s t

 

Juewei Food Co., Ltd., Room 1608, Wanbao Building, No. 267, Wanbao Street, Furong Area, Changsha, Hunan, People’s Republic of China (applicant), represented by Balder IP Law, S.L., Paseo De La Castellana 93, 28046 Madrid, Spain (professional representative).

On 03/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 368 is upheld for all the contested goods, namely

 

	Class 29: potato flakes; vegetables, preserved.
2.		European Union trade mark application No 18 186 415 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3.			The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 05/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 186 415 (figurative mark), namely against some of the goods in Class 29. The opposition is based on European Union trade mark No 15 131 162 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PRELIMINARY REMARK

The Opposition Division takes note of the fact that ownership of the earlier European Union trade mark registration No 15 131 162 has been transferred during the proceedings and that the transfer has been recorded in the register of the Office. Consequently, the new owner of the opposing mark, Blue Skyline Overseas Ltd, replaces the previous owner of this trade mark as the opponent in the current proceedings.

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, inter alia, the following:

Class 29: processed vegetables, potatoes.

The contested goods are the following:

Class 29: potato flakes; vegetables, preserved.

The contested potato flakes are included in the opponent's broad category of potatoes. Moreover, the contested vegetables, preserved are included in the opponent's broad category of processed vegetables. These goods are therefore 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 goods for daily consumption in the form of vegetables and processed vegetables. They are rather low-cost groceries being addressed at the public at large. At the same time, these types of groceries are also used by business professionals, such as chefs, catering enterprises, or canteen suppliers. In principle, these relevant consumers will buy the groceries quickly without paying too much attention to them (12/02/2014, T-570/11, La qualite est la meilleure des recettes, EU:T:2014:72, § 30-31). In this context it should be observed that there is no indication that the level of attention when buying groceries is always elevated due to health or sanitary implications (18/02/2016, T-364/14, BIO / BO, EU:T:2016:84, § 17). Consequently, the level of attention is lower than average in the present case.

 

c) The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

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

 

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. Given that the aural similarities between the signs will be higher for the part of the public who will pronounce the letters ‘P’ and ‘B’ in a more similar way as it is the case, for instance, for the German-speaking consumers, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

 

The earlier mark is a figurative sign consisting of the verbal element ‘Yapro’ depicted in a stylised font in red colour. As regards to the colour and type font, the Opposition Division considers these elements to be of merely decorative nature and as such to have little impact on the perception of the mark by the relevant public. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). The verbal element ‘Yapro’ has no meaning for the relevant public under analysis and is therefore of normal distinctive character.

To the extent that the earlier mark includes the registered trade mark symbol, ®, the Opposition Division notes that this is an informative indication that the sign is purportedly registered and is therefore not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a figurative mark, too, consisting of the verbal element ‘YABO’ depicted in capital letters in a fairly standard, bold font. Taking into account that the stylisation is of minimal nature only, it will hardly have an impact, if any at all, on the perception of the sign by the relevant public and therefore plays a secondary role in the overall impression of the sign. The verbal element ‘YABO’ does not have any particular meaning and is therefore of normal distinctive character.

Neither of the signs consist of elements which could be perceived to be more dominant (visually striking) than other elements. 

 

Finally, account has to be taken of the fact that 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, the signs coincide in the string of letters ‘Y-A-*-*-O’ and are of similar lengths (5 versus 4 letters). The signs differ on account of the additional letters ‘P-R’ in the earlier mark and ‘B’ in the contested sign. In this regard, however, it has to be recalled that the letters ‘P’ and ‘B’ show some visual similarities and that the differences of the letters are placed in the middle of the signs where they are typically less noticed. Additionally, the signs differ in their different fonts and in the case of the earlier mark, colour. These differences, as mentioned above already, are of decorative nature and therefore of less impact on the perception of the signs. Taking into account the above-mentioned considerations and in particular the fact that the signs coincide in their beginnings, which is typically the part which catches the consumers attention, first, they are considered to be visually similar to just an average degree.

 

Aurally, similar considerations as for the visual comparison apply. The signs coincide in the pronunciation of the string of letters ‘Y/A/*/*/O’, are of similar length and consist of the same number of syllables (two). To the extent that the signs differ in their fourth letters ‘P’ versus ‘B’ it has to be noted that both of these letters are consonants which, albeit not being identical, will be pronounced in a highly similarly manner, namely [pe:] versus [be:] by the public under analysis, because they are both bilabial plosives, differing only in being voiceless the first and voiced the second. In addition, the signs differ in the pronunciation of the additional letter ‘R’ being the second last letter of the earlier mark. Considering the above, including the different weighting of the various elements of the signs, they are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under analysis 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.

 

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).

The goods have been found identical and are directed at the public at large and professionals alike, who will both apply a below than average degree of attention when being confronted with these goods. The signs are visually similar to just an average and aurally to a high degree, whereas the conceptual comparison remains neutral.

As already elaborated, the signs coincide in its beginnings which is typically the part catching the consumers attention first, and its respective endings. They differ in their middle parts by means of two letters in the earlier mark (‘PR’) and one letter in the contested sign (‘B’), whereas the letters ‘P’ and ‘B’ still show some visual and in particular some aural similarities. Moreover, the signs differ on account of it’s different stylisations (and in the case of the earlier mark colour), which, although they won’t go unnoticed, are of limited impact on the perception of both signs by the relevant public. Despite these differences, the Opposition Division recalls that the relevant goods are relatively cheap products for everyday consumption for which the relevant public typically applies a lower degree of attention. In this regard, account has to be 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 applicant refers to previous decisions of the Office to support its arguments. 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).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, however, the previous cases referred to by the applicant are not relevant for various reasons. None of the cases referred to concerns a public with a lower than average degree of attention when confronted with the relevant goods as it is, however, the case in the present proceedings. Furthermore, most of the cases are referring to signs which either show some conceptual differences or are otherwise similar to different (mainly lower) degrees. Others are relating to goods and services with different degrees of similarities.

 

Considering all the above, and in particular the fact that the relevant goods are all identical and that the level of attention of the relevant public is below average, there is a likelihood of confusion on the part of the German-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 European Union trade mark registration No 15 131 162. It follows that the contested trade mark must be rejected for all the contested goods.

 

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

 

 

Konstantinos MITROU

Holger Peter KUNZ

Christian STEUDTNER

 

 

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.