OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 450 693
Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
‘CD’ S.A., Krucza 16/22, 00526 Warszawa, Poland (applicant), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).
On 16/11/2015, the Opposition Division takes the following
1. Opposition No B 2 450 693 is upheld for all the contested goods.
2. Community trade mark application No 13 078 605 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of Community trade mark application No 13 078 605. The opposition is based on international trade mark registration designating the European Union No 855 505. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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: Dietetic foodstuffs not for medical purposes, namely sweet spreads for bread slices on the basis of marmalade and jam; sweet spreads for bread slices on the basis of marmalade and jam.
Class 30: Dietetic foodstuff not for medical use, namely sweet spreads for bread slices on the basis of honey, nut-nougat-cream and chocolate; sweet spreads for bread slices on the basis of honey, nut-nougat-cream and chocolate; sweet spreads for bread slices, namely honey, nut-nougat-cream and chocolate spreads.
The contested goods are the following:
Class 30: Chocolate cream.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
Contested goods in Class 30
The contested chocolate cream is identical to the opponent’s chocolate spreads, because they both consist of semi-solid chocolate edible goods.
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P, ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and Greek-speaking parts of the relevant public.
Visually, the signs are similar to the extent that they coincide in their first four letters, ‘NUSS’. However, they differ in their final three letters, namely ‘ANO’ in the earlier mark and ‘OLA’ in the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NUSS’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘ANO’ of the earlier sign and ‘OLA’ of the contested sign.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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 target the public at large. The degree of attention is considered low, because the goods are for everyday consumption and are cheap.
Global assessment, other arguments and conclusion
The goods are identical.
The signs are similar inasmuch as they have the same beginnings, ‘NUSS’, and differ in their endings, ‘ANO’ versus ‘OLA’. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when encountering a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
The visual and aural similarities are sufficient to find a likelihood of confusion. The marks are the same length and they coincide in four letters out of seven, which are all placed in the same position. Therefore, contrary to the arguments of the applicant, the differences in the final letters of the signs are not sufficient to differentiate the marks.
Considering all the above, there is a likelihood of confusion on the part of the English- and Greek-speaking parts of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Contrary to the applicant’s arguments, the differences between the signs are not sufficient to distinguish them from each other.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 855 505. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.