OPPOSITION No B 2 429 440
Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft MbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)
a g a i n s t
Bilal Mohammad AL Hamwi, Building No 5668, Al Hai Alshamali, 40th Street, Madamet Al Sham, Reef Damascus, Syria (applicant), represented by Cam Trade Marks and IP Services, St John's Innovation Centre Cowley Road, Cambridge CB4 0WS, United Kingdom (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods of European Union
trade mark application No
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 goods on which the opposition is based are the following:
Class 29: Vegetables and potatoes (preserved, dried or cooked), fruits (preserved, dried or cooked), mushrooms (preserved, dried or cooked), meat, poultry, game, fish and seafood products, all these products in the form of extracts, soups, jellies, spreads, preserves, cooked, deep-frozen or dehydrated dishes; jams; eggs; milk, cream, butter, cheese and milk products; milk substitutes; milk beverages mainly consisting of milk; desserts made of milk and desserts made of cream; yoghurts; soya milk (milk substitutes), preserved soya beans for consumption; edible oils and fats; protein preparations for human consumption; whiteners for coffee and/or tea (cream substitutes); sausages; charcuterie, peanut butter; soups, concentrated soups, soup, bouillon cubes, stock, clear soups.
The contested goods are the following:
Class 29: Milk and milk products, dairy products; powder milk; milk-based preparation and foods, milk substitute; soya milk, soya-based preparation, cream [not dairy products]; cream for coffee.
Class 30: Coffee whitener.
Contested goods in Class 29
The contested milk and milk products, dairy products; milk substitute; soya milk are identically contained in both lists of goods and services (including synonyms).
The contested powder milk is a manufactured dairy product made by evaporating milk to dryness. Therefore, it is included in the broad category of the opponent’s milk. Therefore, they are identical.
The contested milk-based preparation and foods include as a broader category the opponent’s desserts made of milk. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cream for coffee is included in the broad category of the opponent’s cream. Therefore, they are identical.
The contested soya-based preparation includes as a broader category the opponent’s soya milk (milk substitutes). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cream [not dairy products] is included in the broad category of, or overlaps with, the opponent’s milk substitutes. Therefore, they are identical.
Contested goods in Class 30
The contested coffee whitener is a non-dairy creamer, in particular, liquid or granular substances intended to substitute for milk or cream as an additive to coffee. It is normally classified in Class 29 and is, obviously included in the broader category of, or overlaps with, the opponent’s whiteners for coffee and/or tea (cream substitutes) in Class 29. Therefore, they are identical.
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 is average.
Earlier trade mark
The relevant territory is Bulgaria.
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 purely figurative mark consisting of a grey, slightly inclined cup containing a dark liquid that has been stirred and has a white swirl on top. Emanating from the cup is a white heart shape. These elements appear within a grey rectangle with some light grey stripes in the background.
The contested sign is a figurative mark and consists of the upper part of a beige cup containing a dark liquid in which white powder is poured from a white pile on a spoon. Above the cup, the words ‘City Creamer’ are written in red letters under which a red line descends unto the left edge of the cup. Inside the cup, there is a white swirl that appears to originate from the white powder that is poured in the cup. All of the aforesaid elements are presented within a yellow rectangle with several shades of yellow and white.
As regards the distinctiveness of the elements of the earlier mark, the device element depicting a cup with a white swirl on top will be seen as a depiction of the manner in which the goods are consumed. Bearing in mind that the relevant goods are milk and milk-related products and substitutes, this element is non-distinctive for the goods. As to the distinctiveness of a heart shape as such in relation to the relevant goods in Classes 29 and 30, this element is weak, as the image of a heart per se is commonly used to evoke positive characteristics and feelings, and attached to the goods at hand, which are foodstuffs, on which the use of shapes of hearts is common for ornamental purposes and, hence, of limited distinctiveness. This is also supported by the common practice in coffee making/serving, where a heart shape is formed by pouring milk or creamer in the coffee mug so as to form a heart shape.
As to the grey rectangle of the earlier mark, it will be seen as a decorative or ornamental feature of the sign because it is a simple geometric shape frequently used in the market sector. Therefore, the grey rectangle element of the contested mark is not particularly imaginative and is of decorative nature.
In view of the size and positioning of the components of the earlier sign, it is considered that the dominant elements of the earlier sign are the grey cup and the heart shape, as the grey background is not eye-catching or particularly noticeable.
The contested mark contains the English words ‘city’ (‘any large town or populous place; (modifier) in or characteristic of a city’, Collins English Dictionary online) and ‘creamer’ (‘a powder that is added to hot drinks instead of milk or cream’, Cambridge Advanced Learner's Dictionary online). The phrase ‘city creamer’ has no different meaning than the sum of its parts. The meaning of these elements will be understood by only part of the relevant Bulgarian public that has (some) knowledge of English. In view of the nature of the relevant goods, the element ‘creamer’ is not distinctive as it describes the nature or possible ingredients of the goods. However, contrary to the opponent’s allegations, the element ‘city’ does not describe or allude to any particular characteristics of the goods and its distinctiveness is normal. As regards the rest of the public with no knowledge of English, these words are meaningless and have a normal degree of distinctive character.
Nevertheless, the device element depicting the upper part of a cup and the spoon will be seen as a depiction of the manner in which the goods are consumed or used. Bearing in mind that the relevant goods are milk and milk-related products and substitutes, this element is non-distinctive for the goods.
As regards the contested sign, it should be borne in mind that it is composed of at least one distinctive verbal element (‘city’ or ‘city creamer’) and less distinctive figurative elements of a purely decorative nature (the yellow background). Therefore, the verbal element(s) is more distinctive than the mentioned figurative elements. In addition, as already mentioned, the device element depicting ta cup and a spoon is non-distinctive for the goods.
In addition, as regards the elements of the contested sign, account must be taken in this case that 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). Therefore, in view of the composition of the contested sign and of the above findings, the verbal element(s) in the contested sign are the distinctive element(s) and the ones that will be used to refer to the contested sign.
As mentioned above, the contested sign is a composite mark and contains both verbal and purely figurative elements. In view of the size and positioning of the components of the sign, it is considered that the dominant elements of the contested sign are the word elements and the device depicting a cup and a spoon.
Visually, the signs coincide in that both include an image of a cup containing a dark liquid that has been stirred and has a white swirl on top. However, they differ in the representation of the cups: the cup of the earlier mark is seen in its entirety and the cup of the contested sign is only seen in its upper part. The signs also differ in all the remaining elements, in particular: the heart shape and the grey background of the earlier mark and the words ‘city creamer’, the spoon and the yellow background of the contested sign, as well in all the remaining colours contained in the contested sign. Bearing in mind that the coincidences in the signs are not very striking and immediately perceivable and, also, in an element that is not distinctive in relation to the goods, it is considered that the signs are visually similar to a very low degree.
Aurally, it must be noted that purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, the earlier sign will be associated with the concepts of a cup containing a stirred dark liquid and the concept of a heart shape coming out of it.
As regards the contested sign, as mentioned above part of the relevant Bulgarian public with (some) knowledge of English will understand the meaning of the words ‘city’ and ‘creamer’. However, in relation to the rest of the public, these words are meaningless. In addition, the contested sign will be associated with the concept of the upper part of a cup containing a stirred dark liquid and a spoon pouring a powder.
Consequently, since both signs will be associated with a similar concept due to the depiction of a cup with a stirred liquid, the signs are conceptually similar, but only to a low degree. This is because the similarity is in a common element that has a low distinctive character.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in Bulgaria in connection with part of the goods for which it is registered, namely whiteners for coffee. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).
The opponent submitted evidence to support this claim on 15/05/2015. Additionally, on 30/12/2015 the opponent filed evidence of use. In relation to the evidence filed as proof of use on 30/12/2015, it must be noted that it was received after the respective substantiation period (until 18/05/2015) set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its mark. Therefore, the evidence filed as proof of use cannot be taken into account. Nevertheless, the Opposition Division notes that even if was taken into account, there is no change in the findings, as it will be seen hereinafter.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence (filed on 15/05/2015 and 30/12/2015) consists, in particular, of the following documents:
A USB stick containing Bulgarian TV commercials dated in 2008 - 2012 for ‘Coffee Mate’ coffee whitener and a corresponding summary table with airing information in relation to the TV commercials.
Screenshot from the opponent’s website www.nestle.bg showing the opponent’s goods as .
Pictures of retail stores and posters.
Extract from a survey report dated 2012, prepared by GFK, for the opponent’s affiliate in Bulgaria titled ‘Hot Beverages Categories Performance’. The survey refers to the product ‘Coffee Cream, Coffee-Mate Performance’.
Several pictures from supermarkets in Bulgaria, taken in 2011 and 2012 displaying 'Coffee Mate' coffee whitener on sale in product packaging getups.
Affidavit by a business manager of the opponent’s Bulgarian affiliate confirming that in the period 2009 to 2014 ‘Coffee Mate’ products were sold to end consumers showing their packaging getups and sizes. The Affidavit includes sales volume figures and annual value shares.
Excerpt from AC Nielsen database, confirming the figures given in the affidavit.
Extracts from the opponent’s price lists for the years 2009 - 2014 mentioning ‘Coffee Mate’ coffee whitener.
Examples of invoices and delivery notes issued by the opponent’s Bulgarian affiliate Nestlé Bulgaria to retailers in Bulgaria in the period 2009 - 2014.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.
The documents show or refer to products designated with the following signs:
, , .
The evidence does not concern the trade mark as registered but only in connection with other signs/trade marks, especially with the signs ‘Coffee-mate’ and ‘Nestle’. While it is true that a trade mark may be used in connection with another one and the use of this sign constitutes use of both trade marks, this case-law is not directly applicable to the assessment of the enhanced distinctive character through use.
When assessing the distinctive character through use, account must be taken of the perception of the public. It is important to remember that use does equal the perception of the public. The distinctive character through use goes hand in hand with the communication function of the trade mark (decision of 02/02/2015, R 392/2013-4 – Golden Eagle (Fig. Mark) / Red Cup et al.).
In the present case, account must be taken of the fact that the inherent distinctiveness of the cup and the heart shape included in the earlier mark is low. All the documents, such as the TV commercials, the pictures and the GfK survey, refer to the opponent’s mark as ‘Coffee-mate’. There is no reason why a possible enhanced distinctive character through use or reputation of the trade mark ‘Coffe-mate’ or ‘Nestle’ would also constitute the same level of recognition on the market by the relevant consumer for any other trade mark which is used together with one of these two signs/trade marks.
There is no information in relation to the recognition or reputation in relation to the earlier purely figurative mark consisting of a representation of a cup and a heart shape. The evidence does not show the figurative mark in isolation, and the opponent has not established that the relevant public would associate the figurative element with the opponent either. Having examined the material listed above, the Opposition Division concludes that evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a high degree of distinctiveness or reputation through its use.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.
Global assessment, other arguments and conclusion
The goods have been found to be identical and they are directed at the public at large. The degree of attention in relation to the goods in question is average. The inherent distinctiveness of the earlier trade mark is low and the opponent failed to show that that its earlier trade mark enjoys an enhanced distinctive character through use.
The earlier mark and the contested sign are visually similar to a very low degree, an aural comparison is not possible and, conceptually, a low degree of similarity was found.
However, in spite of certain similarity, there are sufficient differences between the marks that a likelihood of confusion can be safely excluded.
The signs coincided in the representation of a cup with a stirred dark liquid inside and a white swirl on top. However, these elements are not identically reproduced in the contested sign and are, furthermore, not very distinctive with respect to the goods at stake.
The opponent claims that a significant part of the Bulgarian public is not capable to read Latin script and will, as a result, focus on the figurative element of the contested sign, namely the cup and the spoon. The Opposition Division kindly disagrees with such statements. The opponent provides various pieces of evidence in relation to the knowledge of languages amongst Bulgarians in order to defend its statements. However, the knowledge of foreign languages is not equivalent to the ability to read Latin characters. As known to the opponent itself, who obviously uses Latin characters on its goods directed to the Bulgarian market, Bulgarian consumers are very well acquainted with Latin characters and are able to read them. As correctly pointed out by the applicant, Bulgarians are regularly exposed to goods bearing trade marks in Latin characters. Even the Bulgarian Patent Office accepts registration of word marks, within one trade mark application, of a term written in Cyrillic alphabet and its transliteration in Latin characters. Since 1999 the names of each Bulgarian citizen are written in their identity cards in Cyrillic and Latin characters. Latin alphabet is used to such an extent that it is highly unlikely that there are any Bulgarians who are unable to read Latin characters.
As explained above, the more distinctive element(s) in the contested sign is/are its verbal element(s) ‘City’ or ‘City Creamer’. Concerning the remaining elements it must be held that the cup, the spoon and the background are not very distinctive with respect to the goods. Therefore, the main product identifier in the contested sign is its verbal element(s) and the verbal elements are the ones that will be used to refer to the contested sign.
In the present case, the differences between the figurative elements in the signs, and the presence of at least one distinctive verbal element ‘CITY’ in the contested sign would still be enough to avoid a likelihood of confusion, especially considering that, in the case at issue the coincidences between the signs leading to a low visual and conceptual similarity are due to lowly distinctive elements.
Therefore, on the basis of all the foregoing, taking into account all the relevant circumstances of the case, it must be concluded that the differences between the signs are clearly perceptible and safely counteract the similarities between the signs even when found on identical goods. Consequently, the relevant public is not likely to believe that the earlier mark and the contested sign originate from the same undertaking or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 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 Rule 94(7)(d)(ii) EUTMIR, 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
María Belén IBARRA DE DIEGO
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.