OPPOSITION No B 2 407 818

Imperial - Produtos Alimentares, S.A., Rua de Santana, 4480-160 Azurara, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 - 6°. Dt°., 4000-432 Porto, Portugal (professional representative)

a g a i n s t

Jordi Nogues S.L., Bruch 114 - pral. 2ª, 08009 Barcelona, España (applicant), represented by Romaní-Martinez Abogados Slp, Calle Balmes 129 Bis Piso 4º 1ª, 08008 Barcelona, España (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 407 818 is upheld for all the contested goods and services, namely:

Class 30: Cocoa; pastry and confectionery.

Class 35: Sale in shops and via global computer networks of foostuffs.

2. European Union trade mark application No 12 888 202 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 888 202, namely against some of the goods and services in Classes 30 and 35. The opposition is based on Portuguese trade mark registration No 528 288 and European Union trade mark registration No 11 079 068. The opponent invoked Article 8(1)(b) EUTMR.

CEASING OF EXISTENCE OF EARLIER EUROPEAN UNION TRADE MARK REGISTRATION No 11 079 068

According to Article 41(1)(a) EUTMR, the proprietor of earlier trade marks referred to in Article 8(2) EUTMR may file an opposition to the registration of a European Union trade mark application.

Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks.

Therefore, the legal basis of opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

On 30/08/2013, the opponent filed a notice of opposition claiming as the basis of the opposition European Union trade mark registration No 1 1079 068. The opposition was based on all the goods covered by this earlier mark.

By decision rendered in Cancellation proceedings No 9850 C of 18/05/2011, the Cancellation Division declared EUTM No 1 1079 068 invalid for all goods for which it was registered. By decision of 06/07/2016 (R 2294/2005-5), the Fifth Board of Appeal dismissed the appeal against this decision.

Consequently, the decision of the Cancellation Division became final and binding, and, as a consequence, the earlier European Union trade mark registration No 1 1079 068 ceased to exist.

It follows from the foregoing that this earlier mark claimed as the basis of the opposition, is no longer a valid trade mark within the meaning of Article 8(2) EUTMR and, consequently, cannot constitute a valid basis for the opposition.

Therefore, the opposition must be rejected as unfounded as far as this trade mark is concerned. The analysis of the opposition will continue for the other earlier mark.

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 and services

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

Class 30: Chewing gum; cocoa; chocolate; confectionery goods.

The contested goods and services are the following:

Class 30: Cocoa; pastry and confectionery.

Class 35: Sale in shops and via global computer networks of foostuffs.

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 cocoa and confectionery are identically protected by the earlier mark.

Pastry is similar to the opponent’s confectionery goods. They have the same distribution channels and often the same producers and target the same end users. They are also in competition since users may choose between one or the other to satisfy the same need.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those 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.

Therefore, the contested sale in shops and via global computer networks of foostuffs are similar to a low degree to the opponent’s chewing gum; cocoa; chocolate; confectionery goods in Class 30, which are all foodstuff.

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 and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Both marks are figurative. The earlier mark consists of the depiction of a pirate’s face on a stripy black and white background above which the word ‘PIRATA’ is written in white capital letters on a black curved label. ‘PIRATA’ means ‘pirate’ in Portuguese (‘a person who sails in a ship and attacks other ships in order to steal from them’). All these elements are distinctive and there is no clear dominant element in the mark.

The contested sign consists of the representation of a complete pirate with a hook hand and a skull replacing the face. Below the pirate representation is the word ‘BADPIRATE’ written in white capital letters on a black label. The verbal element as a whole is meaningless in Portuguese but it is likely to be associated, at least by part of the public, with a ‘pirate’, taking into account the close linguistic equivalent (‘pirata’) and the fact that the figurative element clearly refers to this concept. As the elements are not descriptive, allusive or weak for the relevant goods and services, they are distinctive. Likewise, there are no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘PIRAT’ present in both signs in white standard capital letters and depicted on a black label at the top or the bottom of the figurative element, which result in a similar layout. However, they differ in the remaining elements of the marks, in particular, the remaining letters (‘A’ in the earlier mark and ‘BAD*****E’ of the contested sign), the position of the coinciding letters and the figurative elements of the marks.

Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PIRAT’, present identically in both signs. The pronunciation differs in the sound of the letters ‛A’ of the earlier mark and ‘E’ of the contested sign, and also in the letters ‘BAD’ at the beginning of the contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with a pirate, they are conceptually highly similar.

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 settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

In the present case, the goods and services are partly identical and partly similar to varying degrees to those protected by the earlier mark and the degree of attention of the relevant public is average. The earlier mark has a normal distinctiveness. The signs show some visual and aural similarities and are conceptually highly similar.

It is true that the figurative elements of the marks show significant differences from a visual point of view but the fact remains that they both refer to the image of a pirate and this will lead consumers to make a clear link between them. This is also reinforced by the letters in common in the signs that will be perceived visually and aurally and as referring to the same concept. Although the earlier mark does not have a particularly high distinctiveness, the signs have the same distinctive concept accompanied by visual similarities between the signs (the letters ‘PIRAT’ and the similar layout). This may lead to a likelihood of confusion even in the absence of a particularly high distinctiveness of the earlier mark (see by analogy, 14/12/2006, T-81/03, T-82/03 and T-103/03, EU:T:2006:397).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that there are many trade mark registrations with the words ‘PIRATA’ and ‘PIRATE’ or a pirate image in the European Union Registry, which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, the applicant’s argument must be rejected as unfounded.

Considering all the above, 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 Portuguese trade mark registration No 528 288. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Steve HAUSER

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.