OPPOSITION No B 2 400 912

Cafea GmbH, Am Sandtorkai 2, 20457 Hamburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

FrieslandCampina Nederland B.V., Stationsplein 4, 3818 Le Amersfoort, The Netherlands (applicant), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, The Netherlands (professional representative).

On 13/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 400 912 is upheld for all the contested goods, namely:

Class 29: Dairy products, milk and milk products; yoghurt and yoghurt products; dairy products with fruit in which the dairy component predominates.

Class 30: Coffee, tea, cocoa, and beverages based thereon, in liquid and in powder form; frozen yoghurt; edible ice; sorbets.

2. European Union trade mark application No 12 802 724 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 of European Union trade mark application No 12 802 724, namely against all the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 12 045 852. 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, inter alia, the following:

Class 29: Meat, fish, poultry and game, meat products, fish products, poultry products and game products; Meat extracts; Preserved, dried, cooked and frozen fruits and vegetables; Jellies, jams, compotes; Prepared dishes based on eggs; Milk and milk products, in particular milk-based puddings and desserts; Edible oils and fats; Prepared meals based on meat, fish, poultry and game and vegetables, including with added potatoes, rice or pasta, prepared meals based on fruit, including with added rice or milk products; Including all the aforesaid goods as dietetic food, not for medical purposes, or infant food.

Class 30: Cocoa, coffee, tea, coffee-based, tea-based and cocoa-based beverages, sugar, rice, sago, artificial coffee and beverages made from artificial coffee; Cereal preparations, In particular breakfast food and Muesli; Bread, pastry and confectionery, ices; Honey, treacle; Confectionery and chocolate goods; Prepared meals based on cereal preparations, rice or pasta, including with added fruit, vegetables, sugar products or chocolate products or sauces, including all the aforesaid goods as dietetic food, not for medical purposes, or infant food.

The contested goods are the following:

Class 29: Dairy products, milk and milk products; yoghurt and yoghurt products; dairy products with fruit in which the dairy component predominates.

Class 30: Coffee, tea, cocoa, and beverages based thereon, in liquid and in powder form; frozen yoghurt; edible ice; sorbets.

Contested goods in Class 29

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods when referring to milk and milk products, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Milk and milk products appear in both lists.

The contested dairy products are products that are made from or contain milk. They are, therefore, identical to the opponent’s milk and milk products, and this is also true of the rest of the applicant’s goods in this class.

Contested goods in Class 30

Coffee, tea, cocoa, and beverages based thereon appear in both lists with the same or very similar wording.

The contested edible ice is included in the opponent’s ices, and these goods are therefore identical.

The contested frozen yoghurt and sorbets overlap with the opponent’s ices, and these goods are therefore 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 may be lower than average, as the goods are inexpensive goods purchased on a daily basis (15/06/2010, T‑547/08, Strumpf, EU:T:2010:235, § 43).

3. The signs

LATI
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 earlier mark is a word mark, ‘LATI’. The contested sign is a figurative mark containing the word ‘lattiz’ written in relatively standard black characters on a circular white background that could be perceived as a drop. This geometrical device has a further drop on its upper left-hand side and the symbol ® appears on the right-hand side, and the whole thing is included in a black square.

The applicant contends that the first part of both signs, namely ‘LAT’, will be perceived as referring to ‘lactus’, which is the Latin word for ‘milk’. The Opposition Division finds that, although this may be the case for average consumers who speak Latin-derived languages, it will not be the case for consumers who speak Germanic, Baltic or Slavic languages. The evaluation of this decision will therefore be confined to these languages. 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.

The words ‘LATI’ and ‘LATTIZ’ do not have any meaning in any of the relevant languages and they are, therefore, distinctive in relation to all the goods at issue. The figurative element depicting a drop and the smaller drop on its are both non-distinctive for some of the goods, namely those that can be consumed as drinks (e.g. milk). However, even in relation to some of the other goods for which the drop is distinctive, 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).

The earlier mark is a word mark and, as such, lacks dominant elements. As for the contested mark, both the word element and the figurative element depicting a drop are more dominant than the smaller drop and the symbol ®.

Visually, the signs coincide in four out of six letters, namely ‘lat*i*’, and differ in two letters (the second letter ‘t’ and the last letter, ‘z’) and in the figurative elements (and the symbol ®) of the contested mark. Taking into account that the word elements are very similar and the figurative elements (and the symbol ®) are either less distinctive or less dominant than the word in the contested mark, the signs are visually similar to an average degree.

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 /lat*i*/, present identically in both signs. Many of the relevant consumers will pronounce only a single letter /t/ in the contested sign, which means that the signs will sound very similar (except for the sound of the last letter, /z/, in the contested mark). Therefore, the signs are aurally similar either to an average or to a high degree.

Conceptually, as already mentioned above, none of the verbal elements has any semantic meaning. However, the geometric figure might be perceived by some consumers as a drop, and for all the consumers the symbol ® will bring to mind the idea of a registered trade mark. Taking into consideration that the verbal elements, which are the only distinctive elements of the marks, mean nothing, 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.

5. 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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 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.

The assessment of the similarity between two marks does not amount to taking into consideration only one component of a composite trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole. However, that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 32).

The goods are identical and the degree of attention in relation to them is lower than average. The most distinctive elements of the marks are their verbal elements, ‘LATI’ and ‘LATTIZ’ (the latter is also the most dominant in the contested sign), which are visually similar to an average degree and aurally either similar to an average degree or highly similar. It is feasible to assume that consumers will attribute the same commercial origin to the identical goods or think that they originate in undertakings with economic ties. 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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘lat’. In support of its argument the applicant refers to several trade mark registrations in the European Union and in several of its Member States.

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 evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘lat’. Under these circumstances, the applicant’s claims must be set aside.

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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Octavio MONGE GONZALVO

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.