OPPOSITION No B 2 184 912

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PARTGMBB, Maximiliansplatz 14, 80333 Munich, Germany (professional representative)

a g a i n s t

Shop Stategy srl, Viale Indipendenza 2/E, 95034 Bronte, Italy (applicant), represented by Marks & Us Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative).

On 07/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 184 912 is upheld for all the contested goods, namely

Class 30: Spreads consisting of pistachio paste; pastry and confectionary products made with pistachio; edible ice cream and semi-finished ice cream with pistachio; pistachio honey; sweets with pistachio; pistachio pesto; sauces made with pistachio.

2. European Union trade mark application No 11 324 811 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods European Union trade mark application No 11 324 811 namely against all the goods in Class 30. The opposition is based, inter alia, French trade mark registration No 093 638 441 registered for goods in Class 30. 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 French trade mark registration No 093 638 441. It is worth noting that, unlike the other earlier rights, this mark is not subject to proof of use.

1. The goods

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

Class 5: Dietetic foodstuffs for medical purposes, in particular dietetic bakery products, dietetic confectionery, dietetic chocolate goods.

Class 30: Coffee, tea, cocoa, sugar (including vanilla and vanillin sugar and glucose for food), rice, tapioca, sago, artificial coffee, coffee and tea extracts; cocoa powder; non-alcoholic coffee, tea, cocoa and chocolate-based beverages including instant drinks; puddings, custard powder and blancmanges, desserts mainly consisting of starch; flour and preparations made from cereals (except animal feed); popcorn, corn flakes (for food), cereals for human consumption, in particular oat flakes or other cereal flakes, in particular being breakfast foodstuffs, including the aforesaid goods mixed with dried fruits (including nuts), sugar and/or honey; potato flour, semolina; pasta, prepared pasta meals and pasta preserves; delicatessen salads as well as frozen food, mixed, semi-prepared (including with fillings) and prepared meals, including preserved meals, mainly consisting of pasta, rice, farinacious foods and/or potato flour, including the aforesaid goods with added spices and sauces (including salad dressings) and/or combined with bread or bread rolls; pies namely meat pies, pies mainly filled with meat, fish, fruit or vegetables and empty pie cases: bakery goods, bread, biscuits, cakes, pastries; sweet and/or savoury snacks mainly consisting of cereals, cocoa, cakes, chocolate, sugar honey, potato flour and/or pastries; long-life bakery goods (including with sweet or savoury fillings), in particular crispbreads, crackers and biscuits; pizzas, including preserved or frozen; chocolate; confectionary in particular chocolate products and pralines including confectionery with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or milk products, in particular yoghurt; ices, including in the form of ice cream cakes and powder for edible ices; confectionery, in particular sweetmeats (candy) and chewing gum, not for medical purposes, marzipan; honey, invert sugar cream, fruit syrup, treacle; spreadable cocoa mixtures, spreads, mainly consisting of sugar, cocoa and/or nougat; yeast, baking powder, essences for baking (except essential oils); salt for food, mustard, pepper; vinegar, sauces (including salad dressings), powdered sauces and sauce extracts (including the aforesaid goods for salad dressings), salad dressings; mayonnaise; ketchup, spices and condiments; condiments, in particular bouillon cube based on meat and vegetable as well as spices for soups, preparations based on bouillon in paste, vegetable extracts as additive for meat meals; ice.

The contested goods are the following:

Class 30: Spreads consisting of pistachio paste; pastry and confectionary products made with pistachio; edible ice cream and semi-finished ice cream with pistachio; pistachio honey; sweets with pistachio; pistachio pesto; sauces made with pistachio.

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 30

The contested spreads consisting of pistachio paste are considered identical to the earlier spreads, mainly consisting of sugar, cocoa and/or nougat because the wording of the earlier goods does not exclude pistachio paste and, therefore, as above these should be considered identical.

The contested pastry made with pistachio is identical to the pastries covered by the earlier mark since the former are included in the latter broad category of goods.

The contested confectionery products made with pistachio are also considered identical to the earlier confectionary in particular chocolate products and pralines including confectionery with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or milk products, in particular yoghurt because the goods of the earlier mark are included in the broad term covered the earlier mark confectionary. The term ‘in particular’ used in the opponent’s list of goods indicates that the chocolate products and pralines including confectionery with a filling of fruit, coffee, non-alcoholic drinks, wine and/or spirits, and of milk or milk products, in particular yoghurt 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, EU:T:2003:107).

The contested edible ice cream and semi-finished ice cream with pistachio are identical to the earlier ices, including in the form of ice cream cakes and powder for edible ices because ices are to be understood as ‘ice creams’. Again, the term ‘including’ used in the opponent’s list of goods introduces a non-exhaustive list of examples and therefore, it also covers these contested goods.

The contested pistachio honey is included in the earlier honey. Thus, these goods are also identical.

The contested sweets with pistachio are included in the broad category of the earlier goods confectionery, in particular sweetmeats (candy) and chewing gum, not for medical purposes. Thus, these goods are equally identical.

The contested pistachio pesto; sauces made with pistachio are included in the broad category of the earlier sauces (including salad dressings). Thus, these goods are also identical.

2. 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 are directed at the public at large. Given the frequent, repetitive and habitual pattern of purchasing these goods, the degree of attention is considered to vary from average to below average.

3. The signs

DELICIA
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is the word ‘DELICIA’.

The contested sign is composed of the word ‘Deliziati’ surrounded by two curved lines written on a black rectangle. The point on the second letter ‘i’ is the fanciful depiction of a person wearing a cooking cap.

Part of the relevant consumers may recognise the earlier mark and the verbal element of the contested mark as an allusion to the French adjectives ‘délicieux’ and ‘délicieuse’, meaning ‘delicious’, and the noun ‘délice’, meaning ‘delicacy’. Bearing in mind that the relevant goods are foodstuffs, both terms may be considered weak for these types of goods and as such may impair the distinctive character for this part of the public. Another part will merely see the earlier mark and the verbal element of the contested mark as fanciful and consequently distinctive.

Furthermore, it is to be noted that the figurative element of a head of a person wearing a cooking cap contained in the contested sign will evoke the idea of foodstuffs in general; thus, this image is considered weak in relation to the goods at issue in class 30.

As regards the contested sign, the verbal element ‘Deliziati’ is considered more dominant (visually eye-catching) than the other elements due to its central position and size. The black rectangle is considered to represent a common label.

Visually, the earlier sign consists of seven letters whereas the verbal element of the contested sign has nine letters. Despite being slightly longer by two letters, this divergence is not something that will be readily noticed by consumers given that differences between long signs often go unnoticed. Furthermore, this is all the more plausible as the signs coincide in the initial four letters ‘DELI’ and the combination of the two letters ‘IA” in the same position. However, the earlier sign shows the letter ‘C’ where the contested sign contains the letter ‘Z’. Furthermore, the contested sign has the additional final letters ‘TI’, the black standard rectangle as well as the representative of a cook’s head; these elements are not contained in the earlier sign. However, the first part of the earlier sign and the first part of the dominant verbal element of the contested sign are identical.

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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Since the first part of the earlier mark and the first part of the verbal element of the contested sign coincide the Opposition Division considers the signs visually similar to an average degree.

Aurally, the earlier mark will be pronounced as /de-li-si-a/ in French and the contested sign will be made oral reference to as /de-li-si-a-ti/ or /de-li-zi-a-ti/ in that same language. Therefore, the pronunciation of the signs coincides in the first four syllables /de-li-(s/z/)i-a/, present in both signs with the only difference of the voiced and voiceless sounds /s/ vs /s/ or /z/. The pronunciation differs in the additional final syllable /ti/ of the contested mark, which has no counterpart in the earlier sign. The picture of the cook will not be pronounced when making oral reference to the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, both the earlier mark and the verbal element of the contested sign are invented words and in this respect a conceptual comparison is not possible. However, the relevant public will recognise their common roots with the French adjectives ‘délicieux’ and ‘délicieuse’, meaning ‘delicious’, and the noun ‘délice’, meaning ‘delicacy’. Therefore, the signs are conceptually similar to an average degree at least on account of their allusion to the French words ‘délicieux’, ‘délicieuse’ and ‘délice’. In addition, the contested sign contains the representation of a cook; this semantic content is not present in the earlier sign.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

As stated above, the earlier trade mark, as a whole, is an invented word, that is, it is not an existing French word.

The Opposition Division finds that the distinctiveness of the earlier mark must be seen as normal for those consumers who will merely see the signs as fanciful. However, the distinctive character of the earlier mark is reduced for those consumers who recognise in the sign the allusive character of the word ‘delicia’ to the extent that, when associated with the meaning of the French words ‘délicieux’, ‘délicieuse’ and ‘délice’ as explained in section b) above, it will allude to foodstuffs and in particular to a praiseworthy characteristic of the goods.

5. Global assessment, other arguments and conclusion

The goods are identical and the signs are visually similar to an average degree and aurally highly similar and both evoke a similar concept for part of the public.

As stated above the dominant element of the contested mark is its verbal element. In relation to the letters ‘z’ and the last letters ‘ti’ of this verbal element, which have no counterpart in the earlier sign, it is to be noted that the public pays less attention to the ending of signs, while, in terms of recognition and recall, the beginnings of trade marks tend to be of more importance. In this sense, it is a general principle that the first part of a sign is generally the part which catches consumers’ attention and will be remembered more clearly than the rest of the sign. This is to say that the difference in the ending of the contested sign may well go unnoticed by the relevant public. In this respect, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, § 26). In the particular case at hand, this conclusion is reinforced by the fact that the level of attention of the relevant consumer may vary from average to below average.

In addition, the visual similarity between signs may also have an increased importance where the goods are ordinary consumer products (e.g. goods in Classes 29 and 30) that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. This is applicable to the current scenario bearing in mind that the figurative elements of the contested sign merely represent a common label.

In its observations, the applicant denies that the earlier mark is distinctive for the goods at issue. It claims that trade marks such as ‘DELIZIOSO’ and ‘DELIZIA’ have been refused by the EUIPO on the grounds of Article 7(1) EUTMR for goods in class 30. The earlier sign informs consumers without further reflection that the goods have great taste, that they are delicious. Therefore, according to the applicant, these kinds of marks lack distinctiveness and therefore the EUTMA applied for can coexist with the earlier marks. These marks include for example ‘DELIZIOSO’, DELICE DE ST. JACQUES’, DELIZIE DI VIENNA’ and ‘DELIZIA’ all applied for goods in class 30. The applicant argues that there are at least ten EUIPO rulings refusing the name ‘DELICIA’ for goods in class 30; therefore, the applicant is of the opinion that the EUIPO would rather find that ‘DELICIA’ lacks distinctiveness.

In the present case, the Opposition Division finds that the previous cases referred to by the applicant are not comparable to the present proceedings because the decisions make reference to different marks (none of them being the invented word ‘DELICIA’) and take into account different territories where the terms in question may indeed be descriptive, again, this is not the case here.

In addition, in its observations, the applicant further argues that the earlier trade mark has a low distinctive character given that there are many trade marks that contain or consist of the word ‘DELICIA’. In support of its argument the applicant refers to several trade mark registrations in the European Union and France, such as ‘DELIZIO’, ‘DELICIA’, ‘DELICIUS’ DELICEO DE CANDEREL’ etc.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the arguments submitted do not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘DELICIA’. Under these circumstances, the applicant’s claims must be set aside.

As stated under d) above the Opposition Division finds that the earlier mark has a normal degree of distinctiveness for part of the public. For those consumers who understand the allusive meaning to the French words ‘délicieux’, ‘délicieuse’ and ‘délice’ the distinctive character may be reduced. However, it is to be noted that the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, judgment of 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T 134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited).

Finally, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). Therefore, the contested trade mark must be rejected for the goods found to be identical, as the identity of goods will counterbalance the differences between the signs to the extent that the consumers will be confused about the commercial origin of the goods in question.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 093 638 441 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 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Vanessa PAGE

Claudia SCHLIE

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.