OPPOSITION No B 2 425 711
Nissin Foods Holdings Co., Ltd., 1-1, 4-Chome, Nishinakajima, Yodogawa-Ku, Osaka, Japan (opponent), represented by Heuking Kühn Lüer Wojtek - Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Neuer Wall 63, 20354 Hamburg, Germany (professional representative)
a g a i n s t
The GB Foods, S.A., Plaza Europa, 42, 08902 L'Hospitalet de Llobregat, Spain (applicant), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative).
On 12/09/2019, the Opposition Division takes the following
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all
European Union trade mark
Initially, the opposition was based on European Union trade mark registration No 4 917 274 ‘YAKISOBA’ (word mark), covering goods in Class 30. By decision of 27/09/2016, the Cancellation Division declared this EUTM invalid on the grounds of Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR. By decision of 30/06/2017, R 1985/2016-5 - 'YAKISOBA’, the Board dismissed the appeal against the decision of the Cancellation Division, by which EUTM No 4 917 274 was declared invalid in respect of all the goods for which it was registered.
On 07/02/2019, the opponent informed the Office that it converted the former EUTM into several national marks and requested to continue the present opposition proceedings based on the converted national trade marks in Austria, Croatia, Czech Republic, Germany, Hungary, Italy, Latvia, Poland, Slovakia, Denmark, Slovenia and Spain.
When, during opposition proceedings, the EUTM on which the opposition is based ceases to exist, but at the same time a request for conversion is filed, the opposition can continue. This is because national trade mark registrations resulting from a conversion of an EUTM can constitute the basis of the opposition procedure originally made on the basis of that EUTM registration (15/07/2008, R 1313/2006-G - cardiva (fig.) / cardima (fig.)).
On 05/07/2019 and 08/08/2019, the opponent submitted evidence regarding the national trade marks on which the opposition is now based, namely:
Czech trade mark registration No 365 422;
Croatian trade mark registration No 20 180 062;
Latvian trade mark registration No 72 956;
Slovenian trade mark registration No 201 870 102;
Spanish trade mark registration No 3 701 430;
Hungarian trade mark registration No 223 979;
Austrian trade mark registration No 297 408;
Danish trade mark registration No 201 801 121;
Slovakian trade mark registration No 249 317;
German trade mark registration No 302 018 003 199;
Italian trade mark registration No 302 018 000 011 802;
Polish trade mark application No 484 699.
Therefore, the abovementioned national trade marks, whether registrations or applications, constitute basis for the opposition.
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.
The opposition is based on more than one earlier trade mark registration (aside from the Polish trade mark application which is not registered yet). The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Czech, Croatian, Latvian, Slovenian, Spanish, Austrian, Slovakian and German trade mark registrations, as specified above, as these registrations cover the broadest list of goods.
The goods on which the opposition is based are the following:
Czech, Croatian, Latvian, Slovenian and German trade mark registrations
Class 30: Noodles; instant noodles; deep frozen noodles; chilled noodles; dried noodles; prepared meals containing (principally) noodles.
Spanish trade mark registration
Class 30: Noodles, instant noodles, deep-frozen noodles, refrigerated noodles, dried noodles, prepared dishes containing (mainly) noodles.
Austrian trade mark registration
Class 30: Noodles; instant noodles; deep-frozen noodles; chilled noodles; dried noodles; prepared meals (mainly) consisting of noodles.
Slovak trade mark registration
Class 30: Noodles; instant noodles; deep-frozen noodles; chilled noodles; dried noodles; ready-to-eat meals containing (mainly) noodles.
The contested goods are the following:
Class 29: Prepared stock; Vegetable soup preparations; Prepared meat dishes; Prepared dishes containing chicken; Prepared vegetable products; Meat extracts.
Class 30: Ready-made dishes containing pasta; Farinaceous food pastes; Ribbon vermicelli; Asian noodles; Udon (Japanese style noodles); Uncooked Chinese noodles; Instant noodles; Instant soba noodles.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.
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 prepared stock; vegetable soup preparations; prepared vegetable products; meat extracts are semi-finished food preparations which are offered for sale in the same sections of supermarkets and directed at the same public as convenience food, including the opponent’s instant noodles in Class 30, covered by all of the earlier marks. The public may expect that such goods are produced under the control of the same entity. Furthermore, meat- or vegetable-based stock in dry form, meat extracts, dried vegetables (which is one of the forms of preparing/processing vegetables) are common ingredients in the opponent’s instant noodles. Therefore, these goods are similar.
The contested prepared meat dishes; prepared dishes containing chicken are convenience foodstuffs which are in competition with the opponent’s prepared meals containing (principally) noodles in Class 30, covered by all of the earlier marks, irrespective of the minor differences in the wordings. The relevant public looks for such prepared meals in the same sections of supermarkets. As these goods further coincide in their purpose and method of use, they are similar.
Contested goods in Class 30
As regards the contested farinaceous food pastes, before starting the comparison the correct wording of these goods must be identified. There is a discrepancy between the original term in the first language of the contested EU trade mark application and its translation into the second language. Specifically, in English (i.e. the second language of the application) the wording is ‘farinaceous food pastes’, however the original wording as filed in the first language of the application (i.e. Spanish) is ‘pasta alimentícia’ which should be interpreted as ‘farinaceous pasta’, referring to flour-based pasta preparations. Since the text in the first language of the application is the definitive version, for the purposes of this comparison the Opposition Division will deem that the contested goods are farinaceous pasta.
The contested ready-made dishes containing pasta; farinaceous pasta; ribbon vermicelli; Asian noodles; udon (Japanese style noodles); uncooked Chinese noodles; instant noodles; instant soba noodles are identical to the opponent’s noodles; instant noodles; prepared meals containing (principally) noodles, either because they are identically contained in both lists (including synonyms and irrespective of the slightly different wordings used in the specifications of goods in the different earlier marks) or because the opponent’s goods include, or overlap with, the contested goods.
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 are directed at the public at large.
The degree of attention is on the whole average. Nevertheless, since some of the goods at issue are cheap staple foods (e.g. plain noodles), the habitual purchasing behaviour associated with these goods may result in lower than average degree of attention.
Distinctiveness of the earlier marks and comparison of the signs
Earlier trade marks
The relevant territories are the Czech Republic, Croatia, Latvia, Slovenia, Spain, Austria, Slovakia and Germany.
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).
In addition, the distinctiveness of the earlier marks, which in the present case are all comprised of a single verbal element, is one of the factors to be taken into account in the global assessment of likelihood of confusion. It should also be noted that the opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation; consequently, the present assessment will rest on the earlier marks’ inherent distinctiveness.
The earlier marks are the word ‘YAKISOBA’. The contested sign is a label comprising multiple components against a background in black and red. In the upper part of the sign, there is a stylised representation of the verbal element ‘YAKISOBA’, in which the letter ‘O’ is depicted as a red circle.
The applicant argues that ‘YAKISOBA’ is a generic word for the goods at issue, which is why the opponent’s EUTM No 4 917 274 was declared invalid, as set out in ‘Reasons’ of this decision. Specifically, the Board ruled that the invalidity applicant had provided sufficient evidence to demonstrate that, at the time when the trade mark was applied for (in 2006) in respect of the goods for which it was registered (all of which comprise noodles or prepared meals containing principally noodles), the term had a generic meaning relating to the type of goods in question from the perspective of the public in the United Kingdom.
However, the Opposition Division agrees with the opponent which states that, in order for the opposition to be successful, it will be sufficient that the opposition is successful on the basis of any of the national trade mark registrations which are the result of the conversion of the opponent’s EUTM. Therefore, what matters for the present assessment is how the term ‘YAKISOBA’ is perceived by the public in the relevant territories listed above.
As pointed out by the Board in the decision on the declaration of invalidity of the opponent’s EUTM, ‘YAKISOBA’ is a Japanese word, which according to a definition found in Oxford English Dictionary (entry from March 2012) means ‘a Japanese dish consisting of fried wheat-flour noodles with vegetables and (usually) meat in a thick, slightly sweet, brown sauce’ (https://www.oed.com/view/Entry/328883, accessed on 30/06/2017 and 09/09/2019).
This word does not exist as such in any of the official languages in the relevant territories. Furthermore, the Japanese language neither is an official language, nor is it generally spoken by the public in the relevant countries. At most, it can be acknowledged that, when encountering this word, the relevant public will understand that it is from the Japanese language. Unlike ‘sushi’, ‘sashimi’ and ‘teriyaki’, the word ‘YAKISOBA’ is not commonly used in the relevant language areas. In the present proceedings, the applicant did not provide any evidence that would corroborate the claim that this term is generic and that it has transcended the language barrier and moved beyond the culinary environment where it is used, and that it can be understood by the general public and not just by consumers who are aficionados of Japanese cuisine or who run a Japanese restaurant.
It is, therefore, unlikely to be common knowledge that the word ‘YAKISOBA’ is understood by the relevant public. Therefore, it must be concluded that it is perceived as a meaningless, fanciful term which is distinctive for the goods at issue in both signs. As it is the sole element of the earlier marks, the finding of the average degree of inherent distinctiveness also applies to them.
The central part of the contested sign is occupied by a figurative element depicting a cup with instant noodles, with the lid partly pulled back and featuring the stylised representation of the verbal element ‘YATEKOMO’. The Spanish-speaking part of the public may understand this term as a pun, or a fanciful misspelling of an expression meaning ‘I will eat you right now’, and it is meaningless for the rest of the public. Be that as it may, this element is endowed with an average degree of distinctiveness.
At the bottom of the contested sign, the verbal element ‘Gallina Blanca’ is depicted in white on a blue banner. Although it means ‘white hen’ in Spanish, for the public in this territory this element is a fanciful denomination for the goods at issue. For the rest of the public, this element lacks any meaning. Be that as it may, this element has an average degree of inherent distinctiveness.
The depiction of the cup with instant noodles is supplemented with the image of chop-sticks, a rather standard depiction of the word ‘CLASSIC’, and a small circle with the inscription ‘LISTO EN 3’’ which in Spanish means ‘ready in three minutes’, a message which will probably be perceived by the entire relevant public because of the combination of the numeral and the international symbol for a minute. Below the element ‘YAKISOBA’, the words ‘GOURMET ORIENTAL’ are depicted, in much smaller letters. On the right-hand side of the central element, there is a small device depicting a bunch of noodles with chopsticks. The abovementioned figurative or verbal elements have a clearly secondary role in the overall composition of the contested sign. This is because these elements are either descriptive or weak. In particular, the word ‘CLASSIC’ will be associated with a traditional flavour by the public throughout the relevant territories, on account of this term being extensively used in trade and marketing language. The expression ‘GOURMET ORIENTAL’ will be perceived as a laudatory reference to sophisticated Asian food or flavour by a significant part of the relevant public. The element ‘(LISTO EN) 3’’ is nothing but a descriptive indication about the time of preparation of the noodles. The figurative elements depicting a meal in a cup, or just noodles with chopsticks are illustrative of the kind of the goods at issue and have a very low degree of distinctiveness, if any.
With respect to the dominance of the elements in the contested sign, it has to be noted that the central figurative element featuring the word ‘YATEKOMO’ occupies a large proportion of the sign. Nevertheless, the elements ‘YAKISOBA’ and ‘Gallina Blanca’ are immediately perceptible in the overall impression produced by the contested sign. Their contrasting depictions stand out as independent components in the sign, although the element ‘YAKISOBA’ is accompanied by the smaller inscription ‘GOURMET ORIENTAL’. Therefore, the elements ‘YAKISOBA’ and ‘Gallina Blanca’ are equally eye-catching as for example the element ‘YATEKOMO’, whilst some of the smaller elements are indeed overshadowed by the presence of the more visually outstanding components.
Furthermore, it has to be borne in mind 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).
The contested sign also contains a small black-and-white marking of a merely reprographic significance and a bar-code. As these technical elements will not be perceived as relevant parts of the contested sign by the relevant public, they will be omitted from the comparison.
Visually, the signs coincide in the element ‘YAKISOBA’. It is admittedly true that the contested sign differs from the earlier marks not only in the stylisation of the word ‘YAKISOBA’, but also in all of its additional components as described above. However, the stylisation of the element ‘YAKISOBA’ does not preclude the word being read and perceived as such. Moreover, this element is readily perceptible in the overall impression produced by the contested sign, also bearing in mind the top position which the element ‘YAKISOBA’ has in the upper part of the sign.
Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).
In the present case, it cannot be denied that the earlier marks, ‘YAKISOBA’, are entirely included in the contested sign, albeit in a stylised manner, and that this word is distinctive in the relevant territories. Consequently, notwithstanding the fact that the contested sign is a complex label with many elements and that the earlier marks are composed of a single word, the coincidence between the signs is relevant and will be mentally registered by the public.
Therefore and weighing in the impact of the various differentiating elements present in the contested sign as a whole, at least a low degree of visual similarity between the signs exists.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciations of the signs coincide in the sound of the element ‘YAKISOBA’. Although the contested sign contains several additional components, the most relevant ones from the aural perspective are ‘CLASSIC’, ‘YATEKOMO’ and ‘Gallina Blanca’. This is because the public will probably skip the other verbal elements when referring to the contested trade mark, on account of their secondary roles in the overall impression of the sign.
Based on the same considerations as those set out in the visual comparison of the signs, and particularly as the identical element, ‘YAKISOBA’, will be the first one to be pronounced in the contested sign, an average aural similarity between the signs exists.
Conceptually, although the public in the relevant territories will perceive the meanings of the elements of the contested sign as explained above, the earlier marks have no clear meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. It should be nonetheless noted that insofar as the public perceives ‘YAKISOBA’ as a Japanese word, the manner of stylisation of this verbal element in the contested sign reinforces the semantic link with something ‘Japanese’, as the red disc reminds of the national flag of Japan.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The interdependence principle is of crucial importance for the assessment of likelihood of confusion, particularly as in the present case, the contested goods are identical or similar to the opponent’s goods.
Admittedly, there are certain visual and aural differences between the earlier marks and the contested sign. Aside from a vague conceptual link between the signs, they do not coincide in any specific concept. However, as shown in detail in section c) of this decision, these differences are not such as to preclude from the finding of at least a low degree of similarity between the signs on the visual level, an average degree of similarity on the aural level.
It is common practice, on the relevant market of foodstuffs, for undertakings to make variations of their trade marks, for example by altering the typeface or colours, or by adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised in logotypes. Therefore, when encountering the conflicting signs, the relevant public, which only rarely has the chance to directly compare two trade marks and must rely on the imperfect recollection that they have kept in their mind, is likely to notice the fact that they have in common the distinctive element ‘YAKISOBA’, and perceive the contested sign as a variation of the earlier marks. Consequently, the public may attribute the same (or economically linked) commercial origin to the goods, also taking into account the fact that the public’s degree of attention will be at most average in relation to the purchases in question.
The applicant argues that it is the owner of one EU trade mark registration and seven Spanish trade mark registrations with the element ‘YATEKOMO’ which is very well known in the field of foodstuffs, and submits a document issued on 29/06/2017 by the Chamber of Commerce of Barcelona to substantiate this claim.
The applicant further states that it is not interested in acquiring exclusive rights in the term ‘YAKISOBA’ and emphasises that it is a generic term.
The Opposition Division finds that the pivotal points in the global assessment of likelihood of confusion in the present case are the facts that the earlier marks are fully reproduced in the contested sign, that they are distinctive for the relevant public in the pertinent territories (contrary to the applicant’s assertions and for the reasons given above), and that in the overall impression produced by the contested sign this element has an independent and distinctive role. Therefore, the fact that the contested sign contains additional elements, some of which may be registered as trade marks, is incapable of calling the foregoing assessment into question. Therefore, the applicant’s arguments in this regard must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public. The lesser degree of similarity between the signs is safely outweighed by the identity or similarity between the goods and the average degree of inherent distinctiveness of the earlier marks which affords them a normal scope of protection.
Therefore, the opposition is well founded on the basis of the opponent’s Czech, Croatian, Latvian, Slovenian, Spanish, Austrian, Slovakian and German trade mark registrations, as listed in ‘Reasons’ of this decision. It follows that the contested trade mark must be rejected for all the contested goods.
As the opponent’s Czech, Croatian, Latvian, Slovenian, Spanish, Austrian, Slovakian and German trade mark registrations lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Christophe DU JARDIN
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.