OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 1 873 481


Agroekola EOOD, Dragalevtsi district, Lagadina Str.3, Sofia, Bulgaria (opponent), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)


a g a i n s t


Wilmar Trading Pte Ltd., 56 Neil Road, Singapore 088830, Singapore (applicant), represented by Bojinov & Bojinov Ltd., 38 Alabin Str., 1000 Sofia, Bulgaria (professional representative).


On 25/02/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 1 873 481 is upheld for all the contested goods.


2. Community trade mark application No 9 571 621 is rejected in its entirety.


3. The applicant bears the costs, fixed at EUR 650.



REASONS:


The opponent filed an opposition against all the goods of Community trade mark application No 9 571 621. The opposition is based on Community trade mark registration No 9 221 111. The opponent invoked Article 8(1)(a) and (b) CTMR.



IDENTITY – ARTICLE 8(1)(a) CTMR


According to Article 8(1)(a) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.


  1. The goods


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


Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; soy protein isolates; processed soya beans; preparations made from soya, soy protein products and food products containing soy protein, all for human consumption; isolated soy protein for fish, meat and poultry products; Animal protein; Edible soy proteins; Food preparations containing soya and milk proteins; Protein derived from soya beans for use as substitutes for dairy products; Protein for use as a food additive; Soy protein for use as a food additive; Soya protein food products for use as substitutes for food; cacao butter; Cocoa butter for food purposes; Preparations of lactose for whitening cocoa; Preparations of vegetable fat and lactose for creaming cocoa; Preparations of vegetable fat for creaming cocoa; cocoa butter substitutes made from palm material.


Class 30: Coffee, tea, cocoa; cacao substitutes; cacao based beverages; Aerated beverages [with coffee, cocoa or chocolate base]; Beverages consisting principally of cocoa; Cocoa based creams in the form of spreads; cocoa based beverages with milk; Cocoa for use in making beverages; Drinking cocoa paste; Foodstuffs containing cocoa [as the main constituent]; Preparations with a cocoa base for making alcoholic beverages; Cocoa mixes; cocoa products; sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bakery goods containing soy proteins.


Class 31: Agricultural, horticultural and forestry products and grains not included in other Classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt; foodstuffs for animals, especially substances containing proteins for feeding animals; Vegetable protein hydrolyzates for consumption by animals; Protein prepared from soya beans for consumption by animals; Cocoa beans (unprocessed- ); Horticultural mulches made from cocoa shell waste; Cocoa beans, raw.


The contested goods are the following:


Class 29: Edible oils; edible fats of plant origin; margarine; shortening of plant origin; vegetable ghee [edible fats]; vanaspati [edible fats]; hydrogenated vegetable oils; nuts, prepared; cashew kernels, processed; peanuts, processed; peanutbutter; fruit, preserved; raisins; fruits, tinned; salads; potato chips; vegetables, dried; vegetables, preserved; vegetables, cooked; mushrooms, preserved; tofu; beans, preserved; albumen for food; eggs; cheese; crustaceans [not live]; shellfish [not live]; fish (food products made from); fish, preserved; soups; fruit jellies; cranberry sauce [compote].


Class 30: Yeast; leaven; salt; mustard; vinegar; garden herbs, preserved.


Class 31: Rice, unprocessed; beans, fresh; fruit, fresh; nuts [fruits]; peanuts [fruits]; cashew nuts; garden herbs, fresh; mushrooms, fresh; vegetables, fresh; grains [cereals]; grains [seeds]; cereal seeds, unprocessed; sesame; barley; copra; malt for brewing and distilling; plant seeds; plants; flowers, natural; flowers, dried, for decoration; crustaceans [live]; shellfish [live]; live animals; fish, live; pet food; foodstuffs for animals; by-products of the processing of cereals, for animal consumption; agricultural, horticultural and forestry products and grains not included in other classes.


Contested goods in Class 29


The contested edible oils; fruit, preserved; vegetables, dried; vegetables, preserved; vegetables, cooked; eggs are identically contained in both lists of goods (including synonyms).


The contested edible fats of plant origin; margarine; shortening of plant origin; vegetable ghee [edible fats]; vanaspati [edible fats]; hydrogenated vegetable oils are included in the broad category of the opponent’s edible oils and fats. Therefore, they are identical.


The contested nuts, prepared; cashew kernels, processed; peanuts, processed; raisins; peanut butter; fruits, tinned; salads are included in, or overlap with, the broad category of the opponent’s preserved and dried fruits. Therefore, they are identical.


The contested potato chips are included in the broader category of the opponent’s cooked vegetables. Likewise, the contested mushrooms, preserved; beans, preserved are included in the broader categories of the opponent’s preserved fruits and vegetables. The contested tofu is included in the category of the opponent’s food preparations containing soya and milk proteins. The contested albumen for food is included in the opponent’s broader category eggs. The contested cheese is included in the broader category of the opponent’s milk products. Therefore, these sets of goods are considered identical.


The contested crustaceans [not live]; shellfish [not live]; fish (food products made from); fish, preserved are included in the broad category of the opponent’s fish. Therefore, they are identical.


The contested soups are included in, or overlap with, the broad category of the opponent’s cooked fruits and vegetables. Therefore, they are identical.


The contested fruit jellies are included in the broad category of the opponent’s jellies. The contested cranberry sauce [compote] is included in the category of the opponent’s fruit sauces. Therefore, these sets of goods are identical.


Contested goods in Class 30


The contested yeast; salt; mustard; vinegar are identically contained in both lists of goods (including synonyms).


The contested leaven is included in, or overlaps with, the category of the opponent’s yeast, baking-powder. Therefore, they are identical.


The contested garden herbs, preserved are included in, or overlap with, the category of the opponent’s spices. Therefore, they are identical.


Contested goods in Class 31


The contested fruit, fresh; vegetables, fresh; plant seeds; grains [seeds]; plants; flowers, natural; live animals; foodstuffs for animals; agricultural, horticultural and forestry products and grains not included in other classes are identically contained in both lists of goods (including synonyms).


The contested rice, unprocessed; copra are included in the opponent’s broader category agricultural products and grains not included in other Classes. The contested beans, fresh; nuts [fruits]; peanuts [fruits]; cashew nuts; garden herbs, fresh; mushrooms, fresh are included in the broad category of the opponent’s fresh fruits and vegetables. The contested grains [cereals]; cereal seeds, unprocessed; sesame; barley are included in the opponent’s grains not included in other Classes; seeds. The contested malt for brewing and distilling is included in the opponent’s broader category malt. The contested flowers, dried, for decoration are included in the opponent’s natural plants and flowers. The contested crustaceans [live]; shellfish [live]; fish, live are included in the opponent’s live animals. The contested pet food; by-products of the processing of cereals, for animal consumption are included in the opponent’s foodstuffs for animals. Therefore, these sets of goods are considered identical.


  1. The signs



ULTRA CHOCO


ULTRA CHOCO



Earlier trade mark


Contested sign


The signs are identical.


  1. Global assessment, other arguments and conclusion


The signs were found to be identical and the contested goods are identical to the goods covered by the earlier trade mark.


Given the identity of the signs and the identity of the goods, the opposition is upheld pursuant to Article 8(1)(a) CTMR for all the contested goods.


Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 9 221 111. It follows that the contested trade mark must be rejected for all the contested goods.


Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) CTMR.



COSTS


According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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


Deirdre QUINN

Liliya YORDANOVA

Natascha GALPERIN




According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.


The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.

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