OPPOSITION No B 2 419 995
PIK Vrbovec-Mesna Industrija d.d., Zagrebačka 148, Vrbovec 10340, Croatia (opponent), represented by Sanja Vukina, Prilaz Gjure Deželica 30, Zagreb 10000, Croatia (professional representative)
a g a i n s t
Haribo Ricqles Zan (Société Anonyme), 67, boulevard du Capitaine Gèze, 13014 Marseille, France (applicant), represented by Alexander Behler, Rigo Trading S.A., 6, Route de Trèves EBBC Building E, 2633 Senningerberg, Luxembourg (professional representative).
On 11/04/2017, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods and services 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 and services
The goods and services on which the opposition is based are the following:
Class 30: Confectionery; pastry; candies; ice-cream; honey; golden syrup; yeast, baking powder; salt; sugar; flour; cereal products.
Class 35: Retail and wholesale of food and non-food products; advertising; business management; business administration; office functions; import-export agency services
The contested goods and services are the following:
Class 30: Confectionery.
Class 35: Retailing, wholesaling and sale via mail order of confectionery.
Contested goods in Class 30
Confectionery is identically contained in both lists of goods.
Contested services in Class 35
The contested retailing, wholesaling and sale via mail order of confectionery is included in the broad category of the opponent’s retail and wholesale of food products. 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 and services found to be identical are directed at the public at large. The degree of attention is average.
Earlier trade mark
The relevant territory is Croatia.
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 figurative mark consisting of the word ‘pik’ followed by a playing card symbol, namely a spade. The word ‘pik’ means ‘spade’ in Croatian. Contrary to the applicant’s arguments, the word ‘pikant’ does not exist in Croatian. Although the word ‘pikantan’ means ‘spicy’ in this language, there is no evidence that the word ‘pik’ is either used as an abbreviation for the word ‘pikantan’ or suggestive of that word. The earlier mark has no elements that could be considered clearly more dominant than other elements.
The contested sign is a figurative mark consisting of the upper case letters ‘P’ and ‘K’ and an upside-down letter ‘i’ between the letters ‘P’ and ‘K’. Although the applicant argues that the sign between the letters ‘P’ and ‘K’ is an exclamation mark, at least part of the relevant public will perceive it as an upside-down letter ‘i’. In addition, the applicant indicated that the verbal element of the sign was ‘PIK’ in the application form. The mark has no dominant elements.
Neither of the signs has any elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the letters ‘p’, ‘k’ and ‘i’, the final letter being depicted upside down in the contested sign. The letters are in the same order in both signs. They differ in the spade device in the earlier mark.
In addition, 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, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘p’, ‘i’ and ‘k’, present identically in both signs. On the other hand, the figurative element of the earlier mark will not be pronounced.
Therefore, the signs are aurally identical.
Conceptually, the public in the relevant territory will understand the distinctive word ‘pik’ in both signs as explained above. In addition, the spade device in the earlier mark will reinforce the meaning of the word ‘pik’.
Therefore, the signs are conceptually identical.
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.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 (recital 8 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).
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
In the present case, the conflicting goods and services are identical. The earlier mark is considered to enjoy an average degree of distinctiveness in relation to the relevant goods and services.
The signs are visually similar and aurally and conceptually identical due to the commonality in the word ‘pik’. In addition, the concept of the word element that the signs have in common is reinforced by the spade device in the earlier mark.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and therefore the opposition is well founded on the basis of the opponent’s Croatian trade mark registration No Z20 131 817.
It follows that the contested trade mark must be rejected for all the contested goods and services.
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
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.