OPPOSITION Nо B 3 122 275

Costa Concentrados Levantinos, S.L., Ctra. de Cambrils, 18, Polígono El Prat, 43330 Riudoms (Tarragona), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Damiano S.P.A., Contrada Zappulla sn, 98070 Torrenova (ME), Italy (applicant), represented by Selarl Hoffman, 26 avenue Kléber, 75116 Paris, France (professional representative).

On 09/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 275 is upheld for all the contested goods.

2. European Union trade mark application No 18 190 217 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 25/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 190 217 ‘AMANDINO’ (word mark), namely against all the goods in Class 29. The opposition is based on, inter alia, Spanish trade mark registration No 3 621 012 ‘AMANDIN’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE CHANGE OF NAME OF THE OPPONENT

The opposition was initially filed by the company Costa Concentrados Levantinos, S.A., which was the owner of the earlier rights at the time of filing the opposition. However, on 30/06/2021, the opponent informed the Office of a change in its name, and submitted extracts of, inter alia, Spanish trade mark registration No 3 621 012 confirming the recordal of the change of name with the Spanish Patent and Trademark Office in June 2021. As a consequence of this change, the new name of the opponent is Costa Concentrados Levatinos, S.L.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 621 012.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 29: Broth, soups and soup preparations; jams, compotes, marmalade, jellies; edible oils and fats; milk and milk products; milk beverages, milk predominating; spiced nuts; processed nuts; pastes made from nuts; butter made of nuts; dried fruit mixes; nut toppings; processed fruits, fungi and vegetables (including nuts and pulses); nut-based snack foods; nut-based food bars.

The contested goods are the following:

Class 29: Dried fruit; almond milk; almond milk-based beverages; almond spreads; almond butter; almond oil (edible-); dried fruit purée; fruit and vegetable spreads.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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 almond butter, almond oil (edible-) are included in the opponent’s broad category of edible oils and fats. Therefore, they are identical.

The contested dried fruit; dried fruit purée; fruit and vegetable spreads are included in, or overlap with, the opponent’s broad categories of processed fruits and vegetables (including nuts and pulses). Therefore, they are identical.

The contested almond milk; almond milk-based beverages, which are a whitish liquid obtained by grinding almonds in water, used in a similar way to milk, and drinks containing almond milk, are similar to a high degree to the opponent’s milk beverages, milk predominating, which are drinks containing milk (the white liquid produced by cows, goats, and some other animals). They coincide in method of use (liquids for drinking), are produced by the same companies, sold through the same distribution channels and target the same relevant public. Furthermore, they are in competition.

The contested almond spreads are a soft edible paste made of almonds that are put on bread and other, similar foods. These goods are similar to a high degree to the opponent’s butter made of nuts, which is any substance with a butter-like consistency made of nuts that is, for example, spread on bread. They coincide in nature and method of use, are produced by the same companies, sold through the same distribution channels and they target the same relevant public. Furthermore, they are in competition.

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 highly similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs and the distinctiveness of the earlier mark

AMANDIN	AMANDINO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

In addition, the distinctiveness of the earlier mark, which in the present case comprises a single verbal element, is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the present assessment will rest on the earlier mark’s inherent distinctiveness.

The verbal elements ‘AMANDIN’ and ‘AMANDINO’, as correctly pointed out by the opponent, have no meaning for the relevant public. It follows that the distinctiveness of the earlier mark must be seen as normal for the relevant goods.

Since neither of the signs has a meaning for the relevant public, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the letters/sounds ‘AMANDIN*’, which form the whole earlier mark. They differ in the contested sign’s last letter/sound ‘*O’, which has no counterpart in the earlier mark.

Therefore, the signs are visually and aurally highly 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) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly highly similar to the opponent’s goods. They target the general public, whose degree of attention is average. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods at issue.

Account should 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 signs have been found to be visually and aurally highly similar, whereas the conceptual comparison remains neutral. The minor difference between the signs, lying only in one letter/sound placed at the end of the contested sign where consumers normally pay less attention than to its beginning, is clearly not sufficient to counteract their similarities and to exclude the likelihood of confusion.

In its observations, the applicant argued ‘that the signs already coexist for years without any confusion’.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the present case, the applicant claimed that the marks coexisted on the market for years but did not submit any evidence to support this claim. Furthermore, the applicant’s references to a French trade mark registration, ‘AMANDINO’, and its use are irrelevant in this case, as the relevant territory for the present assessment in Spain. Moreover, the applicant did not prove that the coexistence could be based upon the absence of any likelihood of confusion between the marks. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 621 012. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 621 012 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Martin MITURA

Agnieszka PRZYGODA

Catherine MEDINA

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.