OPPOSITION No B 2 330 853

Markant Handels- Und Service GmbH, Hanns-Martin-Schleyer-Str. 2, 77656 Offenburg, Germany (opponent), represented by Weickmann & Weickmann, Richard-Strauss Str. 80, 81679 Munich, Germany (professional representative)

a g a i n s t

Sanboy Comercio De Productos Alimenticios S.L., c. Osca 18-20, 08830 Sant Boi de Llobregat, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative).

On 05/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 330 853 is partially upheld, namely for the following contested goods:

Class 29: Milk and milk products; Preserved frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes.

Class 30: Coffee, tea, cocoa and artificial coffee.

2. Community trade mark application No 11 318 706 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 11 318 706, namely against all the goods in class 29 and some of the goods in Classes 5 and 30. The opposition is based on Community trade mark registration No 6 685 614. 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.

1. The goods

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

Class 32:

Non-alcoholic drinks except for waters and lemonades; fruit drinks and fruit juices; syrups and other preparations for making beverages.

After the limitation of the specification of the list of goods, made by the applicant on 28/02/2014, the contested goods are the following:

Class  5 :	Dietetic substances adapted for medical use, food for babies.
Class  29:	Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats.
Class  30:	Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

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 5

The contested dietetic substances adapted for medical use, food for babies and the opponent’s goods in Class 32 differ with regard to their main purpose since the contested goods are specialised diet-related products or baby products for feeding babies and infants, whereas the opponent’s goods are intended to quench thirst. Consequently, they are neither in competition nor complementary. The goods also differ in their producers and are distributed through different channels. Therefore the contested goods and the opponent’s goods in Class 32 are dissimilar.

Contested goods in Class 29

The contested milk products are similar to the opponent’s fruit drinks in Class 32. The goods have the same purpose, they are in competition, they are distributed through the same sales channels and they target the same end user.

The contested milk can be consumed as a drink which, being non-alcoholic can be in competition with the opponent’s non-alcoholic drinks in Class 32. These goods are consumed by the same end user and often share the same distribution channels. On the other hand they differ in other factors such as producers. On balance, in view of the points they have in common, the goods at issue are similar to low degree.

The contested preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes have some relevant points in common with the opponent’s fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32. The goods under comparison target the same consumers. Moreover, they can originate from the same producer and can be found at the same points of sale. Therefore, they are similar to a low degree.

The contested meat, fish, poultry and game; meat extracts; eggs; edible oils and fats, are products which share nothing with the opponent’s goods which are drinks. The contested goods are all foodstuffs or goods generally belonging to the food industry and they differ in both nature and purpose from the earlier mark’s goods. They do not share commercial origin, method of use or distribution channels. In large supermarkets the competing goods are displayed in different sections. For these reasons these goods are dissimilar.

Contested goods in Class 30

The contested coffee, tea, cocoa and artificial coffee are all used for preparation of drinks which are generally served hot. Given that such drinks are non-alcoholic they can be in competition with the opponent’s non-alcoholic drinks. They can also share the same commercial origin are coffee and tea producers often offer a wider range of products which includes the earlier goods. For these reasons the goods are similar.

The contested rice; tapioca and sago; pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice are various products belonging to the food sector or, in the case of ice, used for cooling (often foodstuffs) which differ in all relevant criteria for comparison. Consequently, these goods have nothing relevant in common with the opponent’s goods in Classes 32. The conflicting goods have different natures, different purposes and different methods of use. They are not complementary to or in competition with each other. Moreover, they are usually not manufactured by the same undertakings. Therefore, these goods are dissimilar.

2. The signs

OMEGA
Earlier trade mark	Contested sign

The relevant territory is European Union.

Visually, the signs are similar to the extent that they coincide in the word ‘OMEGA’. However, they differ in the additional word ‘KIDS’ of the contested sign, as well as in the stylisation of the contested figurative trade mark, where the letters ‘O-M-E-G-A’ are written in blue capital letters and the letters ‘K-I-D-S’ are written in yellow lowercase typeface.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛OMEGA’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the wording ‘KIDS’ of the contested mark, which has no counterpart in the earlier sign.

Conceptually, due to the use of different colours, it is reasonable to assume, that the contested sign will be perceived by the relevant public as the juxtaposition of the words ‘OMEGA’ and ‘KIDS’.

The majority of the public in the relevant territory will perceive the word ‘OMEGA’ of both signs as ‘the 24th and last letter of the Greek alphabet (Ω, ω), a long vowel, transliterated as o or ō’ or as ‘the ending or last of a series’ (extracted on 19/01/2016 at http://www.collinsdictionary.com/dictionary/english/omega). It could also be perceived by some of the consumers as an indication of unsaturated fatty acids, namely by those who are familiar with omega-3 or omega-6 fatty acids.

The word ‘KIDS’, contained in the contested sign, is an English term which refers to ‘children or young people’ (see Collins English Dictionary) and will be understood by the significant part of the relevant public.

The signs are conceptually similar to the extent their share the element ‘OMEGA’.

Taking into account the abovementioned visual, aural and 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 element ‘OMEGA’ included in both marks in relation to ‘foodstuffs’ might be perceived, by some of the relevant consumers, as allusive for omega-3 and omega-6 fatty acids, which are known for their nutritional benefits. However, as indicated above, the term ‘OMEGA’ has other meanings (it is a Greek character) and, given that there are no digits or cardinal numbers in the signs, such an association with ‘omega-3’ and ‘omega-6’ fatty acids will not necessarily be made. The majority of the consumers will not perceive the term as referring to a type of fatty substance but consider this word as a fanciful term without any close connection with food. From that perspective, the distinctiveness of this element must be considered to be normal.

The element ‘KIDS’ included in the contested mark will be perceived as referring to the children or young persons. Bearing in mind that the relevant goods are ‘foodstuff’, it can be seen as an indication that these goods target children or young people. The part of the relevant public who understands the meaning of that element will not pay as much attention to this non-distinctive element as to the other element of the mark, ‘OMEGA’. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

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 earlier trade mark has no element that could be clearly considered more distinctive than other elements.

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.

The applicant argues, that the term ‘OMEGA’ alone is lacking of distinctive character. In this respect, the Opposition Division finds that in the present case, since it cannot be determined with certainty that the average consumer will understand this word as a reference to products containing omega fatty acids, and given the absence of a cardinal number and the fact that this word also has at least one other meaning, the distinctiveness of the earlier mark must be seen as normal. It is noted that the applicant has not filed any material that would allow the Opposition Division to conclude otherwise.

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 similar (to various degrees) are directed at the public at large. In the light of the nature of the goods, which include foodstuffs consumed on a daily basis, and are generally inexpensive, the attentiveness of the public is likely to be average.

6. Global assessment, other arguments and conclusion

The contested goods are partly similar (to various degrees) and partly dissimilar to the goods protected by the earlier mark. The level of attentiveness of the public is deemed average.

The signs are visually, aurally and conceptually similar to the extent that they coincide in the word ‘OMEGA’, which represents the earlier mark in its totality. Because the earlier mark is fully included in the contested sign, the first parts of the conflicting marks are identical. In this regard, the 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 (‘OMEGA’) the one that first catches the attention of the reader. Consequently, the fact that the similarity lies in the first word element of the contested sign is particularly relevant when assessing the likelihood of confusion between the marks.

When not followed by a figure, particularly the figures ‘3’ or ‘6’, the term ‘OMEGA’ will not necessarily be associated with a type of fatty substance. Consequently, it must be granted a normal degree of distinctiveness in relation with ‘foodstuff’.

The differences between the marks lie in the additional word ‘KIDS’ and in the stylisation and colours of the contested sign.

As regards the additional verbal element of the contested sign ‘KIDS’ as already mentioned, its concept will be understood by the great majority of consumers. Therefore, for this part of the public, the element ‘KIDS’ is non-distinctive in relation to the goods at hand. This means that consumers will focus their attention on the element ‘OMEGA’ of the contested sign when trying to identify the commercial origin of the goods in question.

It follows, that the similarities between the signs may lead the consumer to believe that the goods that were found to be similar to various degrees come from the same undertaking or from economically-linked undertakings. For example, they might, when seeing the contested application, think that they are looking at a new line of products from the opponent.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, especially considering that the degree of attentiveness will be lower than average.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 6 685 61411 318 706. It follows that the contested trade mark must be rejected for the goods found to be similar to various degrees 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.

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 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

Janja FELC

Eamonn KELLY

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.