OPPOSITION No B 1 989 683

Fomento Agrícola Andaluz S.A.T., N° 2824, Apartado de Correos 69, 41440 Lora del Rio (Sevilla), Spain (opponent), represented by Clarke, Modet & Co., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Intersnack Group GmbH & Co. KG, Peter-Müller-Str. 3, 40468 Düsseldorf, Germany, (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On XX/XX/XXXX, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 989 683 is partially upheld, namely for the following contested goods:

Class 29: Extruded and pelletised or otherwise manufactured or processed potato products for snacks; Roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachio kernels, almonds, peanuts without the use of chocolate; Preserved, dried and cooked fruits.

Class 30: Muesli bars, mainly consisting of prepared cereal grains, including with the addition of nuts and/or dried fruit without the use of chocolate.

Class 31: Unprocessed nuts, cashew nuts, pistachio kernels, almonds, peanuts and seeds.

2. Community trade mark application No 10 394 823 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 30: Tapioca, manioc, rice, maize, wheat or other cereal products manufactured or prepared in the extrusion and pelleting process or in some other manner for snacking purposes without the use of chocolate; Savoury biscuits and pretzels.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 10 394 823. The opposition is based on Community trade mark registration No 3 647 311 and Spanish trade mark registration No 1 158 980. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 3 647 311 which is not subject to proof of use.

1. The goods and services

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

Class 29: Preserved, dried and cooked fruits.

Class 31: Agricultural and horticultural products; fresh fruits and vegetables.

Class 39: Transport, distribution, storage, warehousing and packaging of agricultural and horticultural products, fresh fruits and vegetables, except those containing nuts and milk cream, white sauce, cream-based white sauce, milk cream and any dairy product or derivative.

The contested goods are the following:

Class 29: Extruded and pelletised or otherwise manufactured or processed potato products for snacks; Roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachio kernels, almonds, peanuts without the use of chocolate; Preserved, dried and cooked fruits.

Class 30: Tapioca, manioc, rice, maize, wheat or other cereal products manufactured or prepared in the extrusion and pelleting process or in some other manner for snacking purposes without the use of chocolate; Savoury biscuits and pretzels; Muesli bars, mainly consisting of prepared cereal grains, including with the addition of nuts and/or dried fruit without the use of chocolate.

Class 31: Unprocessed nuts, cashew nuts, pistachio kernels, almonds, peanuts and seeds.

The term ‘including’, used in the applicant’s list of goods in Class 30, 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 (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

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 29

The contested preserved, dried and cooked fruits are identically contained in both lists of goods and services.

The contested roasted, dried, salted, spiced, coated and processed nuts, cashew kernels, pistachio kernels, almonds, peanuts without the use of chocolate are included in the broad category of the opponent’s preserved, dried and cooked fruits. Therefore, they are considered identical.

The contested extruded and pelletised or otherwise manufactured or processed potato products for snacks are similar to a low degree to the opponent’s preserved, dried and cooked fruits as they can coincide in producer end user and distribution channels.

Contested goods in Class 30

The contested muesli bars, mainly consisting of prepared cereal grains, including with the addition of nuts and/or dried fruit without the use of chocolate are similar to a high degree to the opponent’s preserved, dried and cooked fruits as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested tapioca, manioc, rice, maize, wheat or other cereal products manufactured or prepared in the extrusion and pelleting process or in some other manner for snacking purposes without the use of chocolate; savoury biscuits and pretzels are processed foodstuff with cereals as their main ingredient. The opponent’s goods are processed fruits (Class 29), and land products which have not been subjected to any form of preparation for consumption (Class 31). They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

The contested tapioca, manioc, rice, maize, wheat or other cereal products manufactured or prepared in the extrusion and pelleting process or in some other manner for snacking purposes without the use of chocolate; savoury biscuits and pretzels are also dissimilar to the opponent’s services.

Transport and distribution services refer to a fleet of trucks or ships used to move goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the contested goods. The nature, purpose and method of use of these services and goods are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar.

Storage, warehousing and packaging services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. These services are not similar to these contested goods in Class 30 even if they could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and they are not in competition. Therefore, these services are dissimilar.

Contested goods in Class 31

The contested unprocessed nuts, cashew nuts, pistachio kernels, almonds, peanuts are included in the broad category of the opponent’s fresh fruits. Therefore, they are considered identical.

The contested seeds are included in the broad category of the opponent’s agricultural and horticultural products. Therefore, they are considered identical.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs are figurative marks. The earlier mark comprises two words, ‘IMPERIAL’ and ‘GOLD’ depicted in black and the contested sign comprises just a single word, ‘IMPERIAL’ in white. As for the figurative elements, the earlier mark comprises the representation of a black and white crown while the contested sign represents the word ‘IMPERIAL’ set against a purple background of a rectangular label with an uneven frame in a light colour.

Visually, the signs are similar to the extent that they coincide in the word ‘IMPERIAL’ which constitutes the sole verbal element of the sign applied for and the first word of the earlier mark. Furthermore, in both signs the word ‘IMPERIAL’ is written in lower case characters. However, the signs differ in the additional word ‘GOLD’ of the earlier mark, in the different stylisation of the signs and in the figurative elements, a crown device placed above the verbal elements in the earlier mark and a colored frame in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of the word ‘IMPERIAL’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the additional word ‘GOLD’ of the earlier mark, which has no counterpart in the contested sign.

Conceptually, the word ‘IMPERIAL’ means “of or relating to an empire” or “of a superior size of quality” and this word is the same in English, Spanish, French and German. The additional term ‘GOLD’ of the earlier mark refers to the precious metal in English but can also refer to something precious, beautiful. Furthermore, the figurative element of a crown device in the earlier mark reinforces the concept of ‘imperial’. Since the signs will be associated with similar meanings, inasmuch as they both refer to the concept of ‘imperial’, the signs are conceptually similar.

For the rest of the public in the relevant territory, only the figurative element of a crown device in the earlier mark would have a meaning but the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual, aural and for part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

5. 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 to various degrees are directed at the public at large.

Although some of the goods are inexpensive and purchased daily, it must be noted that nowadays, due to the increasing number of consumers suffering from allergies and intolerance to various foodstuff, a part of the general public will most likely pay particular attention not only to the ingredients of a food product but also to its properties and possible associated health risks. Therefore, the degree of attention of the relevant public is deemed at least average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C 251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. 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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment of 20/09/1998, C 39/97, ‘Canon’, paragraph 17 et seq.).

The goods have been found to be partially identical, partially similar to various degrees and partially dissimilar and the goods at stake are directed at the public at large with at least an average degree of attention.

The signs are similar to the extent that they coincide in the word element ‘IMPERIAL’ written in lower case characters. The signs differ in their respective figurative elements and in the additional word ‘GOLD’ of the earlier mark.

Conceptually, the signs are similar for the English-, Spanish-, French- and German- speaking public but for the rest of the public in the relevant territory, the signs are not conceptually similar

As to the differences stemming from the figurative elements, it must be noted 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 (judgment of 14/07/2005, T-312/03 ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4, ‘Best Tone’ paragraph 24; decision of 13/12/2011, R 0053/2011-5 ‘Jumbo’, paragraph 59).

It should also be taken into account that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Furthermore, consumers normally perceive a mark as a whole and do not analyse its details. This is all the more true when, as in the present case for part of the public, the signs have no concept that could serve to deflect consumers’ attention from the identical word ‘IMPERIAL’ in the marks.

Moreover, the entire verbal element of the contested sign is wholly included in the earlier mark and it appears at its beginning, the part of the signs that first catches the public attention.

Therefore, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Considering all the above, the Opposition Division considers that the visual and aural dissimilarities between the signs are not enough to counteract the similarities. There is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on Spanish trade mark registration No 1 158 980 for the word mark “IMPERIAL GOLD FOMENTO AGRICOLA ANDALUZ, S.A.T. Nº 2824 LORA DEL RIO (SEVILLA)” for asparagus.

This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further additional words such as ‘FOMENTO AGRICOLA ANDALUZ’ which are not present in the contested trade mark. Moreover, it covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods. Consequently it is not necessary to analyse the related proof of use.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Vanessa PAGE

Loreto URRACA LUQUE

Cristina CRESPO MOLTÓ

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.