OPPOSITION No B 2 257 213

Marks and Spencer plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Katjes Fassin GmbH & Co. KG, Dechant-Sprünken-Str. 53-57, 46446 Emmerich, Germany (applicant), represented by Hoyng rokh Monegier Partnerschaftsgesellschaft von Rechtsanwalten Advocaten und Avocats à la Cour mbB, Steinstr. 20, 40212 Düsseldorf, Germany (professional representative).

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

DECISION:

1. Opposition No B 2 257 213 is upheld for all the contested goods.

2. European Union trade mark application No 11 875 218 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 European Union trade mark application No 11 875 218. The opposition is based on European Union trade mark registration No 10 159 788. 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.

1. The goods

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

Class 30: Coffee, tea, cocoa, 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.

The contested goods are the following:

Class 30: Plant flavourings (other than essential oils) for beverages; Baking powder; Pastries; Cookies; Sweetmeats [candy]; Fizzy lollipops; Buns; Bread; hot-cross buns; Butter biscuits; Com flakes; Ice cream; Iced tea; Peanut confectionery; Fondants for confectionery; Fruit gums; Fruit sauces; Pastries; Jellied fruits (confectionery); Groats for human food; Tea-based beverages; Spices; Honey; Yoghurt ices being edible ices; Coffee; Cocoa; Cocoa products; Cocoa-based beverages; Candy for food; Caramels [candy]; Chewing gum, not for medical purposes; Cookies; Biscuits; Confectioneries; Sweetmeat; Crackers; Cakes; Cake mixes in powder form; Liquorice (confectionery); Liquorice sticks (confectionery); Gingerbread; Lollipops; Macaroons (pastry); Maltose; Almond confectionery; Marzipan; Chocolate beverages with milk; Lozenges (confectionery); Petits fours, being cakes; Mint for confectionery; Puddings; Popcorn; Sherbet; Chocolate; Chocolate-based beverages; Sorbets being edible ices; Ices; Confections; Bubble gum (confectionery); Glucose (for food) both loose and in tablet form; Waffles; Wine gums; Pralines; Sugar confectionary; Confectionery for decorating Christmas trees; Rusks.

Earlier European Union trade mark No 10 159 788 is registered for the entire class heading of Class 30 of the Nice Classification. It was filed on 28/07/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

Contested goods in Class 30

The contested baking powder; pastries (mentioned twice); spices; honey; coffee; cocoa; confectioneries; confections; ices are identically contained in both lists of goods (including synonyms).

The contested cookies (mentioned twice); butter biscuits; com flakes; biscuits; popcorn; waffles; rusks; crackers are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested sweetmeats [candy]; sweetmeat; fizzy lollipops; peanut confectionery; fondants for confectionery; fruit gums; jellied fruits (confectionery); candy for food; caramels [candy]; chewing gum, not for medical purposes; liquorice (confectionery); liquorice sticks (confectionery); lollipops; almond confectionery; marzipan; lozenges (confectionery); mint for confectionery; bubble gum (confectionery); wine gums; pralines; sugar confectionary; confectionery for decorating Christmas trees are included in the broad category of the opponent’s confectionary. Therefore, they are identical.

The contested buns; bread; hot-cross buns are identical with or included in the broad category of the opponent’s bread. Therefore, they are identical.

The contested ice cream; yoghurt ices being edible ices; sherbet; sorbets being edible ices are included in the broad category of the opponent’s ices. Therefore, they are identical.

The contested iced tea; tea-based beverages are included in the broad category of the opponent’s tea. Therefore, they are identical.

The contested fruit sauces are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested groats for human food sauces; maltose; cake mixes in powder form are included in the broad category of the opponent’s flour and preparations made from cereals. Therefore, they are identical.

The contested cocoa products; cocoa-based beverages are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested cakes; gingerbread; macaroons (pastry); petits fours, being cakes are included in the broad category of the opponent’s pastry. Therefore, they are identical.

The contested glucose (for food) both loose and in tablet form are included in the broad category of the opponent’s sugar. Therefore, they are identical.

The contested puddings; chocolate beverages with milk; chocolate; chocolate-based beverages are identically protected by the opponent’s mark, as these goods are covered by the alphabetical list of Class 30 in the 9th edition of the Nice classification

The contested plant flavourings (other than essential oils) for beverages are included in the broad category of the opponent’s flavorings, other than essential oils, for beverages covered by the alphabetical list of Class 30 in the 9th edition of the Nice classification. They are 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. The degree of attention will vary from low, for some cheap goods for everyday consumption, to average.

3. The signs

GREEN EAR GUARANTEE	GREEN EAR BEAR
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). 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 Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

Both marks are word marks. The words ‘GREEN’ and ‘EAR’ in the earlier mark and the words ‘GREEN’, ‘EAR’ and ‘BEAR’ in the contested sign, which will all be perceived as meaningless by the relevant non-English-speaking public, have a normal degree of distinctiveness in relation to the relevant goods in Class 30. The word ‘GUARANTEE’, in the earlier mark, might be understood by at least part of the relevant public as ‘a promise or assurance that certain conditions will be fulfilled’ because it is similar to the equivalent words in some languages, such as ‘garantie’ in French and ‘garantia’ in Spanish. Taking into account that this word can be seen as an indication that certain conditions or characteristics of the relevant goods in Class 30 are guaranteed, it is considered laudatory and weak in relation to the relevant goods.

The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs are similar in that they are composed of three words, of which the first two words, ‘GREEN EAR’, which are distinctive, are identical. The marks differ in their third words, ‘GUARANTEE’ in the earlier mark, which has a weak distinctiveness for at least part of the relevant public, and ‘BEAR’ in the contested sign.

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.

Both marks consist of three words and are, therefore, long marks. The length of the signs may influence the effect of the differences between them, as it is considered that usually the public is less aware of differences between long signs.

Therefore, the signs are visually highly similar.

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 first two words, ‘GREEN EAR’, present identically in both signs, which is particularly relevant, since consumers pay more attention to the beginning of marks, as explained above. The pronunciation differs in the sound of the third word, ‘GUARANTEE’ in the earlier mark, which has a weak distinctiveness for at least part of the relevant public, and ‘BEAR’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, while part of the public in the relevant territory will perceive the word ‘GUARANTEE’ in the earlier mark as having the meaning indicated above, 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 for this part of the relevant public.

For the remaining part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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. 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 a weak element in the mark for part of the relevant public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As has been concluded above, the goods are identical and the degree of attention of the relevant public will vary from low to average.

The marks in dispute are visually and aurally similar to a high degree, since they coincide in the words ‘GREEN EAR’, which have a normal degree of distinctiveness and appear at the beginning of the marks, where they will attract the primary attention of the relevant public. The marks differ in their third and final words, ‘GUARANTEE’ in the earlier mark and ‘BEAR’ in the contested sign. However, these differences are not sufficient to counteract the similarities, as they appear at the end of the marks. As mentioned above, the relevant public is less aware of differences between long marks. Moreover, for part of the relevant public, the word ‘GUARANTEE’ has a low degree of distinctiveness.

In addition, according to the principle of imperfect recollection, average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Furthermore, the Court has set out the essential principle that 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 (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This is particularly relevant in the present case, as the conflicting goods are identical.

Taking into account the above, it is considered that the relevant public might be led to believe that the conflicting goods, which are identical, come from the same or economically linked undertakings. This consideration applies, not only when consumers exhibit a low degree of attention, but also when they exhibit an average degree of attention.

Consequently, there is a likelihood of confusion on the part of the non-English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 159 788. It follows that the contested trade mark must be rejected for all the contested goods.

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

Dorothée SCHLIEPHAKE

Saida CRABBE

Jessica LEWIS

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.