OPPOSITION No B 2 411 042

Arteta Sp. z o.o., Gen. Zajączka 11/C5, 01-510 Warszawa, Poland (opponent), represented by Jarzynka I Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195 Warszawa, Poland (professional representative)

a g a i n s t

Orgavita XXI SL, Calle Cibeles Urb. Oasis 849, 30710 Los Narejos (Los Alcazares), Spain (applicant), represented by Natividad Cano Serrano, Avenida General Primo Rivera 9, Entlo C, 30008 Murcia, Spain (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 411 042 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 12 794 319. The opposition is based on Community trade mark registration No 5 056 081. 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 and services

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

Class 29: Meat, fish, poultry, game; meat extract; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats.

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.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods and services are the following:

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 31: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Class 32: Beer; mineral and aerated waters and other non-alcoholic beverages; fruit juice beverages; syrups and other preparations for making beverages.

Class 35: Import, export, retailing, wholesaling and sale via global computer networks, of agricultural products, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

Class 39: Transport, distribution, packaging and storage of goods and distribution of agricultural products, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, 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.

The earlier Community trade mark registration No No 5 056 081 is registered for the entire class headings of Classes 30 and 32 of the Nice Classification. It was filed on 04/05/2006. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community 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 8th edition.

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 meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; edible oils and fats are identically contained in both lists of goods.

The contested frozen fruits and vegetables are included in the broad category of the opponent’s preserved fruits and vegetables. Therefore, they are considered identical.

The contested milk products are similar to the opponent’s oils and fats. These goods have the same purpose, are in competition with each other and target the same relevant public.

The contested milk; eggs are dissimilar to the opponent’s goods in Classes 29, 30 and 32, including all the goods in the alphabetical list in Classes 30 and 32. It is true that the contested goods and the opponent’s goods can broadly be referred to as foodstuffs, and/or that they are ingredients used in the process of preparation of foodstuffs. However, in both cases this is not enough to render a level of similarity between the goods under comparison. They have a different nature and purpose. They come from different producers, can be found in different specialised shops or in different sections in big supermarkets. Furthermore, they are neither in competition nor are they complementary.

Contested goods in Class 31

The contested live animals are similar to a low degree to the opponent’s fish in Class 29. These goods have the same distribution channels and are often provided by the same kind of undertakings.

The contested fresh fruits and vegetables in Class 31 are similar to a low degree to the opponent’s dried fruits and vegetables in Class 29. These goods are in competition, have the same distribution channels and often come from the same or economically linked undertakings.

The contested grains and agricultural, horticultural and forestry products not included in other classes; seeds; natural plants and flowers; foodstuffs for animals; malt are dissimilar to the opponent’s goods in Classes 29, 30 and 32, including all the goods in the alphabetical list in Classes 30 and 32. The goods under comparison differ significantly, as they have different natures and purposes. They target a different public via different distribution channels. They are neither in competition, nor are they complementary. In addition, these goods are normally produced or manufactured by different kind of companies.

Contested goods in Class 32

The contested beer; mineral and aerated waters and other non-alcoholic beverages; fruit juice beverages; syrups and other preparations for making beverages are identically contained in the opponent’s list of goods in Class 32 (including synonyms).

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services. Therefore, the contested retailing, wholesaling and sale via global computer networks of beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages are similar to a low degree to the opponent’s beers, mineral and aerated waters and other non-alcoholic drinks, fruit juices, syrups and other preparations for making beverages in Class 32.

The contested retailing, wholesaling and sale via global computer networks of agricultural products and the opponent’s goods in Classes 29, 30 and 32 are considered not similar, including all the goods in the alphabetical list in Classes 30 and 32. Apart from being different in nature, given that services are intangible, whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary. Similarity between retail services and the like of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are dissimilar.

The contested services import export are dissimilar to the opponent’s goods in Classes 29, 30 and 32, including all the goods in the alphabetical list in Classes 30 and 32. These services relate to the movement of goods and normally require the involvement of customs authorities in both the importing and exporting countries. These services are often subject to import quotas, tariffs and trade agreements and are considered to relate to business administration. These services do not relate to the actual retail of the goods; they would be preparatory or ancillary to the commercialisation of such goods. The fact that the subject matter of import-export services and some of the opponent’s goods may be the same is not a relevant factor for finding a similarity. The goods and services under comparison differ significantly. They have different natures and purposes. They target a different public via different distribution channels. They are neither in competition, nor are they complementary.

Contested services in Class 39

The contested transport and distribution; distribution of agricultural products, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, 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 are not considered similar to the opponent’s goods in Classes 29, 30 and 32, including all the goods in the alphabetical list in Classes 30 and 32. Transport services refer to a fleet of trucks or ships used to move goods from A to B. The same is applicable to distribution services whereby the ordered goods are distributed to the clients. These services are provided by specialist transport companies whose business is not the manufacture and sale of those 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.

Packaging and storage of goods refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the goods in Classes 29, 30 and 32 which could be packed or stored, including all the goods in the alphabetical list in Classes 30 and 32. 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.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark, consisting of the word ‘Agrovita’, written in a slightly fancy white bold typeface in title case, placed inside of a dark green banderole and underneath a figurative element in the form of a piece of fruit with a leaf.

The contested sign is a figurative mark, consisting of the word ‘OrgaVita’, written in a slightly fancy bold greenish typeface with the letters ‘O’ and ‘V’ being capital letters and the rest lowercase. On top of the sign, connected to the letter ‘V’ appears a figurative element in the form of three leafs together or the form of a flower.

Visually, the marks coincide in the last four letters ‘-V-I-T-A’ and in the first four letters of the earlier mark that are also contained in the contested sign, however, in entirely different positions. The first letter ‘A’ is the fourth letter in the contested sign, the second letter ‘g’ is the third letter in the contested sign, the third letter ‘r’ is the second letter in the contested sign and the fourth letter ‘o’ is the first letter in the contested sign. Furthermore, the colours, as the earlier mark is in dark green and white versus olive and light green in the contested sign, and the figurative elements, as explained above, of the marks are not shared.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the marks coincide in the pronunciation of the last syllables /VI-TA/. However, even though the first four letters are also present in the contested sign, due to their different positions, the first two syllables of the earlier mark /A-gro/ differ from the ones in the contested sign /Or-ga/, even more since in the earlier mark the first syllable contains only one letter and the second three, while in the contested sign both syllables are composed of two letters.

Conceptually, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (judgment of 13/02/2007, T-256/04, ‘Respicur’, paragraph 57). Therefore, it is reasonable to assume that the earlier mark will be split into two elements, ‘Agro’ and ‘vita’. In the earlier mark the element ‘Agro’, even though it is an English prefix that refers to ‘agriculture’, which is ‘the science or occupation of cultivating land and rearing crops and livestock; farming’ (see Collins English Dictionary online), it is either very similar to the equivalent words in other languages, for example ‘agricoltura’ (in Italian), ‘agricultură’ (in Romanian), ‘agricultura’ (in Spanish and Portuguese), ‘agriculture’ (in French), or it is universally understood by all the consumers in any Member State, because it is a basic English word commonly used worldwide. The prefix ‘Agro’ is often used in words such as ‘agrotype’, ‘agroindustry’, ‘agroecology’, ‘agrosystem’, ‘agrobiotechnology’, agrobiology’, etc. The element ‘vita’ comes from the Latin word ‘vitae’ and means ‘life’ (see Collins English Dictionary online) or ‘something lively, dynamic or vital power’. Furthermore, it is very similar to the English word ‘vital’, which means: ‘essential to maintain life; energetic; essential’ (see Collins English Dictionary online). It is also perceived in other languages, because of the identical word ‘vital’, such as in Portuguese, Danish, Spanish, French, Romanian, or because it is similar to the equivalent word in other languages, such as ‘vitaal’ (in Dutch), ‘vitale’ (in Italian), or because it is an English word that is widespread and used universally. Furthermore, the figurative element in the earlier mark in the form of a piece of fruit, probably an apple, is perceived as such.

As regards the contested sign, the public will also split it into two elements ‘Orga’ and ‘Vita’, even more as these elements can be easily separated since each element starts with a capital letter followed by lowercase letters. A part of the public would perceive the element ‘Orga’ as being an abbreviation of the word ‘organic’ that means: ‘of, relating to, derived from, or characteristic of living plants and animals’. For another part of the public that would not perceive the abbreviation, the element is meaningless. The element ‘Vita’ will be perceived as having the same meaning as in the earlier mark. The figurative element in the form of some leafs or a flower are perceived as such and could partially reinforce the concept of ‘organic’. Therefore, the relevant public will attribute the same concept of ‘VITA’ included in the marks and to that extent the marks are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar to a certain extent.

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 dominant (visually eye‑catching) than other elements.

The element ‘VITA’, present in both marks, will be associated with ‘life’, ‘something lively, dynamic, essential to maintain life; energetic; essential; vital power’. Bearing in mind the relevant identical or similar (to various degrees) goods and services, that are all kinds of foodstuffs and services related thereto, it is considered that the distinctiveness of this element is rather low for these goods, since it refers to the fact that these products contain the essential ingredients for maintaining your body in a healthy manner. The public understands the meaning of this element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘Agro’ of the earlier mark will be perceived as being the abbreviation of ‘agriculture’, which is ‘the science or occupation of cultivating land and rearing crops and livestock; farming’. Bearing in mind that the relevant goods and services are all kinds of foodstuffs and services related thereto, it is considered that this element is weak for these goods, since they refer to the fact that the products have an agricultural origin instead of for example being manufactured in factories with more non-natural ingredients. The public understands the meaning of the element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘Orga’ of the contested sign will be perceived by a part of the public as being the abbreviation of ‘organic’, which is ‘of, relating to, derived from, or characteristic of living plants and animals’. Bearing in mind that the relevant goods are all kinds of foodstuffs and services related thereto, it is considered that this element is weak for these goods, since it can be associated with the fact that the products come from plants or animals, even more, as this element is reinforced by the figurative element in the form of some leafs or a flower. A part of the public understands the meaning of the element and will not pay as much attention to this weak element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. For that part of the public that will not perceive the element ‘Orga’ as having any meaning, it is considered to have an average degree of distinctiveness for the relevant goods.

The figurative elements in the earlier mark in the form of a piece of fruit, probably an apple, and in the contested sign in the form of some leafs or a flower are considered weak for the relevant goods and services, since they merely refer to the type of goods or services that are offered or their main ingredients. The public understands the meaning of these elements and will not pay as much attention to these weak elements. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

4. 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. The level of attention varies from average to below average regarding the cheap daily consumption goods.

5. Global assessment, other arguments and conclusion

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 (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

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” (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

The contested goods and services are partially identical, partially similar (to various degrees) and partially dissimilar and the level of attention of the public varies from average to below average.

For the public the marks are visually, aurally and conceptually similar insofar as they contain the element ‘VITA’ and the same first four letters that are, however, placed in entirely different positions in the marks. Nonetheless, as stated above, it is important to bear in mind that the term ‘VITA’, which is the only common element of the marks, has a weak intrinsic distinctiveness for the goods and services at issue that are considered to be identical or similar (to various degrees), as explained before. Hence, the presence of these elements does not impinge upon the way the signs are perceived. Furthermore, in both marks, the overall impression of the figurative elements is quite different, even more since the earlier mark has an additional concept of a piece of fruit, while the contested sign contains three leafs or a sort of flower; the colour green is also different. Furthermore, even though the contested sign and the earlier mark also contain the letters ‘Agro’ and ‘Orga’ consisting of the same letters, because of their entirely different positions, they give a very different visual and aural overall impression. Furthermore, even though the terms ‘Agro’ in the earlier mark and ‘Orga (only for a part of the public) in the contested sign are weak elements, they give the marks anyway an additional concept; in the earlier mark it refers to ‘agriculture’ and in the contested sign to ‘organic’ or it is meaningless. For that part of the public for which the term ‘Orga’ is meaningless, it is also considered the most distinctive element of the contested sign that has no respective counterpart in the earlier mark.

It is also important to mention that the marks start with different letters, both visually and aurally; in the earlier mark being the letters ‘Agro‘ versus ‘Orga’ in the contested sign. 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 different first letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks (see also judgment of 14/01/2015, T-195/13, ‘CAMEA’/’BALEA’).

In the light of the visual, phonetic and conceptual differences, taking into account the weak coinciding element ‘-VITA’, between the signs at issue, notwithstanding the identity of some of the contested goods and the interdependence principle, there cannot be any likelihood of confusion on the part of the target public, since the existence of a conceptual similarity between the signs at issue, being an element of limited distinctiveness, is not sufficient to give rise to a presumption of such a likelihood of confusion.

Bearing in mind the above, the Opposition Division deems that the existing differences between the marks and, in particular, the low degree of distinctiveness of their common element ‘-VITA’, are sufficient to exclude a likelihood of confusion between them, even taking into account a lower level of attention of the relevant public in relation to some of the cheap daily consumption products, because it is the one displaying the lowest degree of attention and, thus, the one more vulnerable to confusion. This contrary to the opponent’s argument in its observations of 01/06/2015 in which is stated that, since it concerns food products and so daily use goods, by purchasing them, the average consumer does not have a high level of attention, and therefore can easily be misled by the similarity of the marks. As pointed out before, the Opposition Division finds that even with a lower level of attention, the marks will certainly not be confused, because of the divergences. The capacity of the common term ‘-VITA’ to distinguish goods and services of one undertaking from those of another undertaking is limited and will not be seen as an element that indicates the origin of the marks.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Dorothee SCHLIEPHAKE

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.