OPPOSITION No B 2 466 590

Bolton Cile España, S.A., Calle Ombu, 3 - Torre Urbis, Planta 13, 28045 Madrid, Spain (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Neartradition, Lda, Av. Mar. Humberto Delgado nº 180 3ª, 4760 Vila Nova de Famalicao, Portugal (applicant).

On 24/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 466 590 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 041 314. The opposition is based on Spanish trade mark registrations No 2 578 815 and No 2 578 928 and on Portuguese trade mark registrations No 259 384 and No 260 224. 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 the following:

1. Spanish trade mark No 2 578 815

Class 29: All kinds of canned food, meat, fish, poultry and game. Meat extracts, dried and cooked fruits and vegetables, jellies and jams, eggs, milk and milk products, edible oils and fats, salad dressings.

Class 30: Sauces and condiments, coffee, tea, cocoa, sugar, rice, tapioca sago, artificial coffee, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, edible ices, honey, treacle, yeast, baking-powder, salt, mustard, pepper, vinegar, ice.

2. Portuguese trade mark No 259 384

Class 30: Food products of vegetable origin for consumption or conservation; adjuvants for foods.

3. Portuguese trade mark No 260 224

Class 29: Dried and cooked fruits and vegetables in particular tomatoes and their derivatives, salad dressings.

4. Spanish trade mark No 2 578 928

Class 32: Beers, mineral and aerated waters and other non-alcoholic beverages, syrups for making beverages, fruit juices, syrups.

The contested goods are the following:

Class 29: Oils and fats; dairy products and dairy substitutes; potato-based snack foods; frozen French fries; French fries; potato chips; beef bouillon; vegetable stock; stock; broth concentrates; condensed tomatoes; dips; dairy-based dips; potato snacks; desserts made from milk products; artificial milk based desserts; fish, seafood and molluscs; birds eggs and egg products; processed fruits, fungi and vegetables (including nuts and pulses); meats.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments; prepared foodstuffs in the form of sauces; cereal snack foods flavoured with cheese; puffed corn snacks; ready to eat savory snack foods made from maize meal formed by extrusion; snack foods consisting principally of extruded cereals; spaghetti and meatballs; canned pasta foods; pasta containing stuffings; fried corn; nachos; pizza; pretzels; ravioli; ravioli [prepared]; meals consisting primarily of rice; meals consisting primarily of pasta.

Class 32: Non-alcoholic beverages; beer and brewery products; preparations for making beverages.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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 relevant goods are directed at the public at large. The degree of attention may vary from low to average. In the present case, a lower degree of attention can be associated with habitual buying behaviour. Purchase decisions for the relevant goods may relate to inexpensive goods purchased on a daily basis (judgment of 15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43).

3. The signs

ES No 2 578 815 PT No 259 384 PT No 260 224 PRIMA ES No 2 578 928	PRIMATREVUS
Earlier trade marks	Contested sign

The relevant territories are Spain and 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).

Earlier marks (1), (2) and (3) and the contested sign are word marks, merely consisting of one word, which have no element that could be considered clearly more distinctive.

Earlier mark (4) is a figurative mark which consists of a verbal element written in white over a black oval background with a double outline in white and black. It is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The signs have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide because the earlier marks (1), (2) and (3) and the verbal element ‘PRIMA’ of earlier mark (4) are fully incorporated at the beginning of the contested sign. However, they differ in the sequence of letters ‘TREVUS’ placed at the end of the sole element of the sign and in the figurative elements of earlier mark (4), namely the typographic style of the word ‘PRIMA’ and the black oval background with a double outline in white and black, the latter found to be lowly distinctive.

In its submissions, the opponent states that the beginning of a sign has generally more importance than the ending in the overall impression produced by a sign. However, while it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T 344/09, Cosmobelleza, EU:T:2013:40, § 52).

In the present case, the component ‘PRIMA’ in the contested sign does not have an independent role in the sign because the following part of the sign, namely ‘TREVUS’ has no meaning in Spanish or Portuguese. It is considered that the sign will not be artificially broken down into various parts because the public will not perceive a clear meaning in the element ‘PRIMA’.

Therefore, the contested sign, ‘PRIMATREVUS’, will be perceived as a sole element of eleven letters, more than double the five-letter component ‘PRIMA’ of the earlier marks. The signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the syllables /PRI-MA/, present identically in both signs. The pronunciation differs in the syllables /TRE-VUS/ of the contested mark, which have no counterparts in the earlier sign. In addition, the contested sign has twice as many syllables, compared to the earlier marks.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the word ‘PRIMA’ is a Spanish term commonly used and may be perceived as meaning ‘female cousin’ or ‘insurance premium’ or ‘bonus’ or a conjugation form of the verb ‘primar’ meaning ‘to prevail’. In Portuguese, the most common meaning of this word is ‘female cousin’ or a conjugation form of the verb ‘premir’ meaning ‘to press’. However, it cannot be ruled out that some consumers will not attribute any meaning to the earlier signs in relation to the goods in question. The contested sign does not have any meaning for the public in the relevant territories.

For part of relevant publics, since one of the signs, namely the contested sign, will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the Spanish and Portuguese consumers, for whom neither of the signs has a meaning, since a conceptual comparison is not possible, 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the publics in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. 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).

Although the letters ‘PRIMA’ of the earlier marks are fully incorporated at the beginning of the contested sign, the signs are only similar to a low degree from the visual and aural points of view. From the conceptual point of view, the signs are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs.

While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, this consideration cannot prevail in all cases. In the present case, the contested sign doubles the word of the earlier marks in size and introduces such differences in the structure of the signs at issue that it makes it unlikely for consumers to be aware of the coinciding letters when confronted with the contested sign.

The earlier marks either consist of or consist principally of a single word and there is no reason why consumers would dissect the contested sign in such a way as to isolate the letters it shares with the earlier marks. When seen as a whole, despite the assumed identity between the goods at issue, the relevant publics will perceive the contested sign’s verbal element ‘PRIMATREVUS’ as one single term and will not identify the earlier marks as included in it.

Considering all the above, even assuming that the goods are identical and even bearing in mind that the degree of attention may be low (usually the public that is more vulnerable to confusion), there is no likelihood of confusion on the part of the publics. Therefore, the opposition must be rejected.

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 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Benoit VLEMINCQ

Martina GALLE

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.