OPPOSITION Nо B 3 122 234

 

Aldi Einkauf SE & Co. oHG, Eckenbergstr. 16, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen, Germany (professional representative) 

 

a g a i n s t

 

Tamira Gida Sanayi Ve Ticaret Anonim Sirketi, Intizam Mah. Altiparmak Cad. Ipek Apt. No: 42 / 6, Osmangazi / Bursa, Turkey (applicant), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative).

On 13/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 122 234 is partially upheld, namely for the following contested goods:

 

	Class 30: Chocolate.
2.	European Union trade mark application No 18 186 900 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 25/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 186 900 (figurative mark). The opposition is based on German trade mark registration No 910 463 ‘Tamara’ (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.

 

 

a) The goods

 

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

 

Class 29: Jams of fruits, chocolate and sugar, marmalades.

Class 32: Syrups of fruits, vegetable juices for the kitchen and/or as beverages, non-alcoholic fruit juices.

The contested goods are the following:

Class 30: Confectionery; chocolate; biscuits; crackers; wafers; cake.

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.

 

The contested chocolate are similar to a low degree to the opponent's jams of fruits, chocolate and sugar because they can coincide in relevant public, distribution channels and producer.

The contested confectionery; biscuits; crackers; wafers; cake are aimed at human consumption as well as the opponent’s goods in Classes 29 and 32. However, these goods have different distribution channels and producers, and they are not in competition with each other or complementary to each other. Consequently, they must be considered dissimilar.

 

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 similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

 

  

c) The signs

 

Tamara
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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 earlier mark is a word mark, ‘TAMARA’. The contested sign is, instead, figurative. It consists of the highly stylized depiction of a black flower under which the word ‘Tamira’ is depicted using lower case black characters, with the exception of the first capital letter ‘T’.

While the earlier mark ‘Tamara’ will be understood as a feminine given name, the word ‘Tamira’ will be most likely regarded as meaningless. In any case, both signs and their elements are distinctive since they have no meaning or will be understood as not having any descriptive or laudatory character in relation to the goods, including the concept of the flower that bears the figurative element of the contested sign.

The contested sign has no element that could be considered clearly more dominant than other elements. However, account must be taken of the fact that 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).

Visually, the signs coincide in the letters ‘Tam-ra’, which are placed in the same position in the earlier mark ‘Tamara’ and in the contested sign’s word element ‘Tamira’. However, they differ in the fourth letter of ‘Tamara’ and ‘Tamira’, which are respectively ‘a’ and ‘i’, and in the figurative element of the contested sign.

Therefore, the signs are, at least, visually similar to an average degree.

  

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Tam-ra’, present identically in both signs in the same order. The pronunciation differs in the sound of the fourth letter ‘a’ of the earlier mark and in the sound of the fourth letter ‘i’ of the element ‘Tamira’ of the contested sign.

Consequently, the signs are aurally highly similar.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are conceptually not 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.

e) Global assessment, other arguments and conclusion

 

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods in Class 30 have been found partly similar to a low degree and partly dissimilar. They are directed at the public at large whose degree of attention will be average. The signs are aurally highly similar and visually similar, at least, to an average degree. From a conceptual perspective, the signs are not similar.

However, the visual and aural similarities are all the more increased by the circumstance that the whole of the earlier word mark ‘Tamara’ coincides in five out of six letters of the verbal element of the contested sign. As regards the contested sign’s figurative element, for the reasons explained in section c) of the present decision, it is considered that it will not have the same impact as the verbal element ‘Tamira’, which is the element the public will more easily refer.

Taking into account the visual and aural similarity of the signs, the average degree of distinctiveness of the earlier trade mark, the average degree of attention of the relevant public, it cannot but be concluded that there is a likelihood of confusion on the part of the public, notwithstanding the fact that the goods have been found only similar to a low degree.

In fact, 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).

Therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree 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

 

 

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Christophe DU JARDIN

 

 

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.