OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 443 060
Cooperativa Provincial Agraria y Ganadera San Isidro S.Coop. And., Ctra. Nijar s/n, Los Partidores, 04120 La Cañada (Almería), Spain (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)
a g a i n s t
Kasih Factories Group for Foodstuffs Company, P.O. Box 150 Zarqa, 13110, Jordan (applicant), represented by Sanjay Raphael, 55 Berrydale Road, Hayes Middlesex UB4 9QP, United Kingdom (professional representative).
On 19/11/2015, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of Community
trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
The applicant requested proof of use, however based on the principle of economy of proceedings, the Opposition Division will only examine the request for proof of use if necessary.
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 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.
The goods on which the opposition is based are the following:
Class 31: Agricultural, horticultural and forestry products and grains and cereals not included in other classes; Live animals; Fresh vegetables and fruits; Natural seeds, plants and flowers; Animal feed, malt.
The contested goods are the following:
Class 29 : Peanut butter; Vegetable fats for cooking; Sesame oil; Cooking oils; Jellies, jams, compotes, fruit and vegetable spreads; Margarine; Edible nuts; Nuts, prepared; Tahini [sesame seed paste]; Dates; Fruit chips; Raisins; Prepared salads.
Class 31 : Forestry products not included in other classes; Live animals; Fresh fruits; Fresh vegetables; Seeds; Natural plants; Natural flowers; Malt.
Contested goods in class 29
The contested edible nuts; nuts, prepared are a kind of one-seeded fruit and in this class they are nuts that have undergone some kind of processing. When comparing with the fresh fruits from Class 31 of the earlier right they are highly similar as they coincide in their nature, purpose, distribution channels, relevant consumers and are also in competition. It must also be considered that they may also derive from the same undertakings given that the transformation process may not be so substantial.
The contested fruit chips; prepared salads are similar to a low degree to the opponent’s fresh vegetables and fruits. Although the former are processed and the latter unprocessed, they target the same end consumers and can be in competition with each other since the final consumer has the choice between fresh or processed products of the same nature. Moreover, they are likely to be sold through the same distribution channels.
The contested dates; raisins are dried fruits which have undergone certain processing or preparation for preservation purposes and to have a longer life. They can be served and used as substitutes for their fresh equivalents and are likely to be sold through the same distribution channels. Therefore they are similar to a low degree to the opponent’s fresh fruits.
The contested jellies, jams, compotes, fruit and vegetable spreads are products mainly made of processed and cooked fruits and vegetables Due to this they may be sold through common distribution channels. Furthermore, they may coincide in the same end users and there may be a certain element of competition. As a consequence, they are similar to a low degree to the opponent’s fresh vegetables and fruits.
The contested tahini [sesame seed paste] is a paste made of sesame seeds and oil. Although the opponent’s natural seeds are one of its main ingredients, it is not sufficient to find a similarity between these two goods. Though it is true that a similarity may exist if the ingredient can be considered as the main ingredient, as in the case at hand, similarity will only exist if the goods share some other relevant criterion such as usual origin, nature, purpose or method of use. However in the present case there is too much distance between seeds in Class 31 which are unprocessed and raw and a paste which has undergone a significant transformation process. Moreover, the paste is used to spread on bread, crackers and the like whilst seeds are usually used as an ingredient. Consequently, there is no coincidence in nature, purpose or method of use and the goods are dissimilar.
Likewise the contested peanut butter; margarine are also dissimilar to the goods from the earlier right for the same reasons mentioned above thus also leading to dissimilarity.
The contested vegetable fats for cooking; sesame oil; cooking oils are preparations used for cooking and dressing. Even if the aforementioned goods can be seeds or vegetable based products it is not sufficient to find a similarity with any of the opponent’s goods and particularly fresh vegetables and fruits; natural seeds as they are produced in different sectors of the food industry and satisfy differing consumer demands. Reference is made to the previous reasoning on when similarity can be construed in the case of the ingredient being the main ingredient which is not applicable here. The sets of goods are neither interchangeable nor in competition with each other. Therefore considering that the goods do not show any relevant points of contact, they are considered dissimilar.
Contested goods in class 31
The contested forestry products not included in other classes; live animals; fresh fruits; fresh vegetables; seeds; natural plants; natural flowers; malt are almost identically contained in both lists of goods.
Earlier trade mark
The relevant territory is the Spanish territory.
The earlier sign is a black and white figurative trade mark composed of a verbal element with figurative components. The verbal element is composed of the four lettered word “CASI” depicted in bold, upper case letters filed with a colour gradient of black and white. On top of the letter “I” there is a black figurative component composed of five peaks linked at their bottom and crossed by a circular arc.
Likewise, the contested sign is a black and white figurative trade mark composed of a verbal element with figurative components. The verbal element is composed of the five lettered word “KASIH” written in white, bold, upper case and slightly inclined letters. It is underlined by a white line in the shape of a wave which separates at its end to form a drop. All these elements are depicted against a black background which may be perceived as the shape of a leaf or a label. Below the white line, there is a smaller black background in the same shape as the latter containing a white inscription in Arabic script.
Visually, the word elements “CASI” and “KASIH” coincide in the letters “A-S-I”. However, they differ in their number of letters: four for the earlier sign against five for the contested sign. Furthermore, they also differ in their first letters, respectively “C” for the former and “K” for the latter, as well as the addition of the letter “H” at the end of the contested sign.
Moreover, although the verbal components are both depicted in bold upper case letters, they are not filed with the same colour, respectively a gradient of black and white for the earlier sign and white for the contested sign.
In addition, the two signs differ due to the presence of the aforementioned figurative elements namely the circular arc featuring peaks in the earlier mark and the leaf/label backgrounds, wavy line and Arabic inscription of the contested mark.
Aurally, the pronunciation of the common letters “ASI” is identical; further, “C” and “K” are aurally identical. Moreover, the last letter “H” of the contested sign will not be pronounced by the Spanish public. Consequently, both signs will be pronounced the same way. The figurative elements including the Arabic script are not subject to a phonetic comparison.
Conceptually, the public in the relevant territory will perceive the verbal element of the earlier sign as being the Spanish equivalent of the English adverb “almost”. The circular arc with peaks will be perceived as such.
As regards the contested sign, its verbal component does not have any clear and evident meaning in the Spanish language. Therefore it will appear as a fanciful or foreign term. As for the Arabic inscription, it will be seen as such. As it is not an official language of the territory no meaning will be attached to it and it may be seen by the relevant public as a figurative element. The backgrounds in the contested mark may be perceived as representing a leaf or a self-adhesive label, such as those usually found on fruit or vegetable in bulk. The wavy line will be seen as such.
In view of the foregoing no conceptual similarities can be found between the signs.
As the signs coincide visually, aurally, and possibly conceptually for a part of the relevant public, it is concluded that they are similar to a low degree.
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 earlier mark has no element that could be clearly considered more distinctive than other elements.
As regards the contested sign, the shape of the black background maybe perceived by a part of the relevant public as depicting a leaf or a self-adhesive label, such as those usually found on fruit or vegetable in bulk. Bearing in mind that some of the goods found identical or similar to varying degrees are food products that include fresh fruits, the aforementioned figurative element can be allusive in relation with the goods found identical or similar for this part of the public. As for the rest of the Spanish public, it will appear as a fanciful and abstract element without any particular meaning and therefore none of the sign’s components will be more distinctive than the others
Regarding the dominant components of the earlier sign, the verbal element “CASI”, by virtue of its central position and size, overshadows the figurative elements of the mark. Therefore, the verbal component is the visually dominant element of the earlier trade mark.
Likewise in the contested sign, the disposition of the white verbal element ‘”KASIH” on a black background makes it the visually dominant element of the mark as it is the most eye‑catching. On the contrary, the other figurative components, namely the white underlining and the smaller black background containing the Arabic inscription, appear secondary due to their smaller size and their disposition below the verbal element “KASIH”.
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 in Class 29 and some of the goods in Class 31, namely fresh fruits; fresh vegetables, found to be identical or similar to varying degrees are all food products directed at the public at large. However in the case of live animals for example a higher degree of attention cannot be dismissed as these may relate to more expensive purchases for example and as such the degree of attention of the Spanish public regarding these products must be considered as between average and high.
As for the malt in Class 31, it consists in dried cereals used to make various beverages, in particular beers. Although it is not its most common use, it can also be used as an ingredient for bakery. Therefore, it is directed at professionals of the brewing and cooking field with an average degree of attention. At a lesser extent, it may also be directed at the public at large, namely consumers using this product in their cooking or who brew their own beer. Due to such particular usage the public at large may tend to pay particular attention to this ingredient which may lead to the degree of attention varying between average and above.
As regards the rest of the goods in Class 31, namely forestry products not included in other classes; seeds; natural plants; natural flowers; live animals they are directed at the public at large and at professionals in the relevant field whose level of attention will be, on the whole, average.
Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
As a preliminary note, it must be reminded that the relevant public is the Spanish public at large with a level of attention deemed to be at least average.
Concerning the comparison of goods, a part of the goods in Classes 29 and 31 has been found identical or similar to varying degrees.
As for the signs, they are aurally identical since the Spanish public will pronounce the letters “C” and “K” in the same way and the final “H” of the contested mark is mute.
Regarding the visual comparison, it must be borne in mind that the respective verbal elements in the signs are dominant due to their central position and size in both trade marks.
These verbal components differ visually by virtue of their distinct first letters “C” and “K” as well as the addition of the letter ‘H’ at the end of the verbal element of the contested mark. Moreover, their different colours fillings and backgrounds are particularly relevant in rendering a distinct visual impression.
In addition, it must be borne in mind that it is the first part of a sign that generally catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgment of 15/12/2009, T-412/08 ‘Trubion’, para. 40, judgment of 25/03/2009 T-109/07 ‘Spa Therapy’, para. 30).Therefore the relevant public will immediately perceive the distinct initial letters between the two signs.
The previous statement is particularly relevant given that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Conversely in longer signs the public will be less able to identify differences. In the present circumstances, the signs are of five and four letters and are not long signs, which will bring to light all the more their differences.
Bearing in mind that both signs also include various figurative elements, their overall visual impressions differ significantly. As held in section c) though for part of the public some of the figurative elements of the contested sign may be associated with the goods in question, this is not the case for the remaining for whom the figurative elements will merely be seen as such.
Furthermore, the Court has stated that when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (judgment of 22/09/1999, C-342/97, ‘Lloyd Shuhfabrik Meyer’, para. 27).
The category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods and services are ordered and/or purchased. An aural or conceptual similarity between signs may be less important in the case of goods and services that are usually examined visually before being bought. In such cases, the visual impression of signs counts more in the assessment of likelihood of confusion.
In particular, the visual similarity between signs may have an increased importance where the goods are ordinary consumer products that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. For such goods therefore the visual differences are tantamount to a finding of no likelihood of confusion (see in this respect judgment of 15/04/2010, T-0488/07 ‘EGLEFRUIT/UGLI FRUIT (fig.mark)).
In the present case, some of the goods found identical or similar to varying degrees are daily food products usually displayed on shelves. The other non-food products such as plants are also goods that are purchased on sight and visually scrutinised. Hence, the consumers will be more attentive to the visual dissimilarities between the signs than the aural similarities.
Consequently, although the aural identity of the trade marks must be taken into account in the present global assessment, their visual disparities are such that the overall impression is more dissimilar than similar and sufficient to set aside any likelihood of confusion between the trade marks.
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) CTMR it is unnecessary to examine the applicant’s request of proof of use.
The opponent has also based its opposition on the following earlier trade mark: Spanish trade mark registration No 2 525 977 for the figurative mark . This mark only differs visually from the one which has been compared by virtue of its colours, namely black for its verbal element and red and green for its figurative component. Therefore, it would not change the outcome of the present case. Moreover, the fact that the Spanish trade mark registration No 2 525 977 covers a different scope of goods is irrelevant considering that no likelihood of confusion was found above in respect for identical or similar goods. Therefore, there can be no likelihood of confusion with regard to Spanish trade mark registration No 2 525 977.
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 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 (7)(d)(ii) CTMIR, 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
Cristina CRESPO MOLTÓ
Loreto URRACA LUQUE
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.