OPPOSITION Nо B 3 127 838

 

Robert De Clerck, Max Temmermanlaan 30, 2920 Kalmthout, Belgium (opponent), represented by Bureau M.F.J. Bockstael Nv, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative) 

 

a g a i n s t

 

Cristobal Meseguer, S.A., Camino De Alejandrico, 14, 30570 Beniaján, Spain (applicant), represented by Roeb y Cia, S.L., Plaza De Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative).

On 22/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 127 838 is upheld for all the contested goods, namely:

 

	Class 16: Bags and articles for packaging, wrapping and storage, of paper and cardboard; Paper bags; Bags of paper for foodstuffs; Bags made of paper for packaging; Bags made of paper for packaging; Bags made of paper for packaging; Bags for packaging made of biodegradable paper. Class 20: Containers of bamboo; Bamboo bags.
2.		European Union trade mark application No 18 233 122 is rejected for all the contested goods. It may proceed for the remaining uncontested goods, namely: Class 20: Bamboo.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 233 122 (figurative mark), namely against all the goods in Class 16 and some of the goods in Class 20. The opposition is based on, inter alia, international trade mark registration No 1 492 846  (figurative mark) designating the European Union. 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.

 

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 international trade mark registration designating No 1 492 846 designating the European Union.

 

a) The goods

 

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

Class 16: Bags for packaging of biodegradable plastic and paper; plastic materials for packaging, not included in other classes; packaging material made of cardboard, paper or plastic; printed matter; reusable polyester bags for packaging.

Class 18: Textile shopping bags; reusable bags of textile for fruit and vegetables.

Class 21: Aluminium bakeware dishes; cups; trays for snacks, meat trays and trays for salads [household or kitchen utensils].

Class 22: Bags of textile for packaging purposes; bags (covers, pouches), of textile for packaging; polyester nets for packaging goods.

The contested goods are the following:

 

Class 16: Bags and articles for packaging, wrapping and storage, of paper and cardboard; Paper bags; Bags of paper for foodstuffs; Bags made of paper for packaging; Bags made of paper for packaging; Bags made of paper for packaging; Bags for packaging made of biodegradable paper.

Class 20: Containers of bamboo; Bamboo bags.

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 16

 

The contested Bags and articles for packaging, wrapping and storage, of paper and cardboard; Bags made of paper for packaging [Bolsas y papel de envolver] are included in the broad category of, or at least overlap with, the opponent’s packaging material made of cardboard, paper or plastic. Therefore, they are identical.

The contested Paper bags; Bags of paper for foodstuffs; Bags made of paper for packaging [Bolsas de papel para embalar]; Bags made of paper for packaging; Bags for packaging made of biodegradable paper are included in the category of, or overlap with, the opponent’s Bags for packaging of biodegradable plastic and paper. Therefore, they are identical.

Contested goods in Class 20

The contested containers of bamboo include various goods made of bamboo that could also be used as containers for food. Therefore, the contested containers of bamboo are similar to at least an average degree to the opponent’s trays for snacks, meat trays and trays for salads [household or kitchen utensils] in Class 21. These sets of goods can coincide in at least their purpose and nature. Furthermore, they can coincide in producer, relevant public and distribution channels.

The contested Bamboo bags are similar to the opponent’s Textile shopping bags; reusable bags of textile for fruit and vegetables in Class 18. These sets of goods coincide in their nature and may have the same intended purpose. Furthermore, they are directed at the same relevant public and 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 similar are directed both at the public at large and at business customers. The degree of attention is considered to be average. Given that the general public is more prone to confusion, the examination will proceed on this basis.

 

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

In the present case, the common element ‘EARTH’, as well as the words ‘save’ and ‘bag’ of the signs, will be associated with a meaning by at least part of the relevant public (such as the English-speaking public in the EU) and this will affect their distinctive character. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the EU public, which does not speak English and for whom the verbal elements included in the marks have no meaning and are inherently distinctive, such as the Spanish, Bulgarian and Polish-speaking part of the public.

 

Both marks are figurative. The earlier mark consists of the conjoined word elements ‘EARTH’ and ‘SAVE’, written in uppercase letters. As they are represented in blue and green colour, respectively, they will be viewed as conjoined elements rather than one indivisible whole. Centrally above them are two small overlapping leaves, also in blue and green, respectively. The letter ‘A’ of ‘SAVE’ is replaced by a triangle with the sign ‘!’ inside, i.e. the danger warning sign in green. Bearing in mind this stylised representation, it remains possible that some part of the public sees it simply as a warning sign and not as a letter. Below these verbal elements is a representation of a human hand holding some soil and a green plant with three leaves.

The contested sign consist of the verbal elements ‘earth’, written in lowercase letters, and the slightly smaller ‘bag’, written below, in uppercase letters and to the right. The letter ‘A’ of ‘BAG’ is replaced by a triangle, and it is therefore possible that some part of the public sees it simply as such and not as a letter. Next to the verbal elements of the contested sign is a graphic representation of a plant with leaves, branches and soil. As pointed out by the applicant, this graphic representation can also be perceived as a schematic and fanciful image of a human face with a nose, eyes and lips. However, this perception is not immediate and requires some additional interpretation and effort. As this perception is not the most likely and at least an important part of the relevant examined public will probably not notice this during normal purchasing, for reasons of procedural economy and in order to avoid a lengthy examination with a different findings about concepts and distinctiveness, the Opposition Division finds it appropriate to focus the comparison of the signs on the mentioned important part of the relevant examined public, which will only perceive a representation of a plant in the contested sign.

As mentioned above, none of the verbal elements contained in the signs has a meaning for the relevant examined public and their inherent distinctiveness is normal. As to the representations of leaves, the green triangular warning sign and the human hand holding a plant of the earlier mark, as well as the graphic representation of a plant contained in the contested sign, these pictorial elements are likely to perceived as indications of the environmentally-friendly, natural, ecological and/or biological nature of the goods and their distinctive character is weak, at best. It is also recalled 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). As to the rectangular frame of the earlier mark, it is non-distinctive as it is a simple geometrical shape commonly used on labels in the respective market sector. In spite of the slightly unusual stylizations of the letter ‘A’ (of ‘SAVE’ and ‘BAG’), the remaining letters of the signs are written in fairly ordinary computer fonts and do not attribute any added distinctiveness to the words as such. Likewise, the colours of the earlier mark are weakly distinctive, at best, as their function is fairly ornamental and/or decorative, especially the green colour which is commonly used in the market to denote the ecological or biological origin of goods.

 

Bearing in mind the size and positioning of the elements within the marks, although some of the elements are smaller than others (such as in the earlier mark), it cannot be said that there are elements, within either mark, that are completely overshadowed by others, or that they would hardly be noticed. Therefore, it is considered that the marks do not have any element(s) that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the inherently distinctive element ‘EARTH’ that has an independent distinctive role in both marks and appears in the beginning of both marks. 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 (from top to bottom), 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 differ in the verbal element ‘SAVE’ of the earlier mark and ‘BAG’ of the contested sign, which are distinctive but appear in a second position. The signs also differ in all the aforementioned figurative elements (leaves, triangle, hand holding a plant, graphic representation of a plant) but these are weakly distinctive, at best and their relevance as differences is less important. In addition, the plant representation in both marks bears some resemblance, as it has three leaves in both signs that are positioned in a similar manner. As to the differing fonts of the letters, these do not attribute much added distinctiveness, as they are fairly standard. While the signs differ also in their colour schemes and overall layout – two conjoined words and a hand with a plant vs. two words one above the other and more schematic plant, these differences between the signs are due to elements that are less distinctive and/or weak, at best.

Bearing in mind the aforesaid, including the fact that the coinciding element in the signs appears in their beginning and has an independent distinctive role therein and is clearly visually distinguishable in both marks, but also accounting for the mentioned differences and their respective positioning, relevance and distinctive capacity within the signs, it is considered that the signs are visually similar to a lower than average degree.

Aurally, the signs coincide in the sound of the element ‘EARTH’, appearing in their beginning and having an independent distinctive role therein. The signs may further coincide in the sound of their seventh letter ‘A’ (if recognized as such in the signs). The signs differ in the sound of their remaining letters. Bearing in mind that the coincidences between the signs are in their beginning to which consumers pay more attention, it is considered that the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As mentioned, neither of the verbal elements included in the signs has a meaning for the public under analysis. The signs differ in the concepts of a hand and a warning triangle present in the earlier mark and not found in the contested sign, but both signs share the concept of a plant with three leaves and to that extent there is a certain, albeit very low similarity at best. Nevertheless, as explained above, all these concepts are on account of weakly distinctive elements, at best and their relevance, be it as conceptual differences or conceptual similarities, is not particularly strong or relevant. This is because consumers will tend to focus their attention on the fanciful verbal elements as main indicators of the commercial origin of the goods in question.

 

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 some non-distinctive and weakly distinctive elements in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

In the present case, the contested goods are identical and similar (to at least an average degree) to the opponent’s goods. The relevant goods are directed at the public at large and the degree of attention is average. The earlier mark has a normal degree of inherent distinctiveness.

 

The signs are visually similar to a lower than average degree and they are aurally similar to an average degree. Conceptually, they share the concept of a plant with three leaves and to that extent there is a certain, albeit very low similarity at best. Nevertheless, as explained above, since the concepts are on account of weakly distinctive elements, at best, the relevant public is likely to focus their attention on the inherently distinctive and fanciful verbal elements.

The similarities between the signs are on account of the normally distinctive element ‘EARTH’, which appears in the beginning of both signs and has an independent distinctive role therein. While it is indeed true that the signs differ in certain aspects, these differences are not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). In the present case, the coinciding verbal element in the signs is a ‘relevant’ coincidence from the perspective of the relevant consumer – this element occupies an independent distinctive role in the beginning of both marks and is clearly recognisable therein.

Account is 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).

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

 

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the similarity between the signs is sufficient to induce a likelihood of confusion on the part of the relevant public in connection with identical and similar (to at least an average degree) goods.

To support its arguments, the applicant refers to several examples from EUIPO’s Trade Mark Guidelines showing previous decisions of the Office and the Courts, in which no visual similarity was found between the marks. 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).

 

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the signs are not the same and therefore not comparable to those compared in the present case.

Considering all the above, there is a likelihood of confusion on the part of the non-English speaking part of the general public in Spain, Bulgaria and Poland. As stated above in section c) of this decision, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 492 846 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier international trade mark registration No 1 492 846 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 right 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

 

 

Justyna GBYL

Liliya YORDANOVA

Anna PĘKAŁA

 

 

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.