OPPOSITION No B 3 117 574

K+S Aktiengesellschaft, Bertha-von-Suttner-Str. 7, 34131 Kassel, Germany (opponent), represented by Stefan Dressel, Bertha-von Suttner Str. 7, 34131 Kassel, Germany (employee)

a g a i n s t

Nortem Chem, SA, cl Alexander Humboldt, 12B P.I. Salinas de Poniente, 11500 El Puerto De Santa María / Cádiz, Spain (applicant), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 Bis, 3 - 1, 48010 Bilbao (Bizkaia), Spain (professional representative).

On 06/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 574 is upheld for all the contested goods.

2. European Union trade mark application No 18 187 516 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

On 30/04/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 187 516 (figurative mark). The opposition is based on German trade mark registration No 302 018 020 582 (figurative 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 30: Bread, pastry and confectionery; salt; sauces (condiments); spices.

The contested goods are the following:

Class 30: Salts, seasonings, flavourings and condiments; ready to eat savory snack foods made from maize meal formed by extrusion; prepared savory foodstuffs made from potato flour.

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.

Salt(s) are identically included in both lists of goods.

The contested seasonings overlap with the opponent’s spices. Therefore, they are identical.

The contested condiments include, or overlap with, the opponent’s sauces (condiments). Therefore, they are identical.

The contested flavourings are products (e.g. extracts and essences) not intended to be consumed in isolation, which are added to foodstuffs or beverages in order to impart or modify their taste and/or odour. The opponent’s spices (e.g. paprika or cinnamon) are dried plant products with flavouring properties that are also used to impart a taste and/or smell to food. Therefore, these goods have the same purpose and method of use. Furthermore, they target the same public and are likely to be distributed through the same channels. Therefore, they are similar.

The contested ready to eat savory snack foods made from maize meal formed by extrusion; prepared savory foodstuffs made from potato flour are similar to the opponent’s pastry. The goods coincide in purpose, relevant public, distribution channels and producers.

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 and similar are directed at the public at large.

The degree of attention is low because the goods are inexpensive goods purchased on a daily basis.

c) The signs

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 figurative mark containing the verbal element ‘BIOSAL’, which, taken as a whole, is meaningless in the relevant territory and is considered distinctive. However, it is well-known that the prefix ‘BIO’ is often used in the food sector to indicate goods of an organic nature. This verbal component is considered non-distinctive. The verbal component ‘SAL’ will not be perceived as having or referring to any particular meaning. It is distinctive. The findings of the Board of Appeal (05/10/2016, R 1787/2015‑2, SAL DE IBIZA fluxà (fig.) / SAL de IBIZA Cristal de la Vida IBIZA (fig.) et al.). regarding the understanding of the word ‘SAL’ cannot be applied in the present case. This is because the word ‘SAL’ does not appear at the beginning of the sign in a standalone position where it may be immediately noticed and understood by the relevant German-speaking public. The earlier sign has no elements that could be considered dominant (visually eye catching).

The contested sign is also a figurative mark containing the verbal elements ‘BioSalt’, ‘Pearls’ and ‘db’. The verbal component ‘BIO’ will be understood as in the earlier sign and is considered non-distinctive. The English word ‘SALT’, because of its proximity to the German word Salz, is likely to be understood as referring to a strong-tasting substance, in the form of white powder or crystals, which is used to improve the flavour of food or to preserve it. It is considered non-distinctive because it indicates that the relevant goods are, or contain, salt. The verbal element ‘BioSalt’ is the most dominant (visually eye-catching) element. The word ‘Pearls’ may be understood by the relevant public as it is visually and aurally highly similar to the German word ‘Perlen’ and thus can, to some extent, allude to the shape of the salt crystals. The verbal element ‘db’ is meaningless. Both ‘Pearls’ and ‘db’ are considered distinctive. However, their impact on consumers is very limited because of their very small size and position within the contested sign.

The impact of the graphical representations/figurative elements/stylisation of both signs on consumers is also limited. This is because 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 ‘Biosal’ which constitutes the verbal element of the earlier sign in its entirety and, taken as a whole, is distinctive for the relevant goods. The signs differ in the additional letter ‘T’ of the contested sign which is, however, placed at the end of the verbal element. 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. The signs also differ in the elements that have limited impact on consumers (i.e. the verbal elements ‘Pearls’ and ‘db’, and the figurative depictions of both signs).

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in ’BIOSAL’, the only pronounceable, and distinctive, element of the earlier sign. They differ in the pronunciation of the letter ‘T’ of the contested sign. Although all verbal elements are generally subject to a phonetic comparison, it may be the case that the relevant public refers aurally to a sign by some elements and omits others. In the present case the verbal elements ‘Pearls’ and ‘db’ of the contested sign are not likely to be pronounced by the relevant public, given their size and position within the sign. Consumers generally refer to the dominant elements while less prominent elements are not pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44). Moreover, economy of language might be another reason for assuming that some elements will be pronounced while others will be omitted, particularly in the case of very long marks (11/01/2013, T‑568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44).

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning as a whole. The coinciding verbal component ‘BIO’ evokes a concept and although this component is non-distinctive, there is a certain degree of conceptual similarity between the signs.

Although the signs have a descriptive or otherwise non-distinctive element in common, this does not suffice to deny all conceptual similarity between them. This does not alter the conceptual content of the signs (16/12/2015, T‑491/13, TRIDENT PURE / PURE et al., EU:T:2015:979, § 93 and case-law cited; 15/10/2018, T‑164/17, WILD PINK / PINK LADY et al., EU:T:2018:678, § 88-89).The remaining elements of both signs are either equally non-distinctive (‘Salt’), or they are meaningless (‘sal’), or have a limited impact on consumers (‘Pearls’, ‘db’, figurative elements, stylisation).

Therefore, the signs are conceptually similar to a low degree.

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 verbal component ‘BIO’ and the figurative depiction with limited impact, as stated above in section c) of this decision.

The applicant claims that the earlier mark is weak, if not non-distinctive, and refers to the Office’s refusal of registration for the EUTM No 12 214 995 ‘Biosal’ (word mark). However, the refusal of the above mentioned application was due to its meaning in Portuguese and Spanish. Since the relevant territory in the present proceedings is Germany, this argument of the applicant must be set aside.

e) Global assessment, other arguments and conclusion

The goods are identical and similar and the degree of attention of the relevant public is low. The signs are visually similar to a below-average degree, aurally similar to at least an average degree, and conceptually similar to a low degree. The earlier sign has a normal degree of distinctiveness.

Although some of the similarities between the signs lie in the non-distinctive verbal component ‘BIO’, importantly, the verbal element of the earlier sign is entirely reproduced in the contested sign. The difference in the letter ‘T’ of the contested sign may be easily overlooked, particularly because 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). Moreover, although the signs have other differentiating elements, their impact on consumers is limited, as explained above.

Therefore, in view of the overall similarity of the verbal elements ‘Biosal’ and ‘BioSalt’, the relevant public could believe that the identical and similar goods in question come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 018 020 582. 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Christian STEUDTNER

Anna BAKALARZ

Philipp HOMANN

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.