OPPOSITION No B 2 608 571
Savencia SA, 42 rue Rieussec, 78220 Viroflay, France (opponent), represented by Lynde & Associés, 5, rue Murillo, 75008 Paris, France (professional representative)
a g a i n s t
Cherry Coast Lda, Rua Travessa Cabeço da Vila n.º 6 – Picada, 3770 014 Bustos, Portugal (applicant).
Class 29: Buttercream, ferments (milk-) for culinary purposes; butter; milk products; cheese products;
Class 35: Retail services relating to food; retail services in relation to foodstuffs.
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of 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 on which the opposition is based are the following:
Class 29: Cheeses, and specifically melted and flavoured cheeses.
The contested goods and services are the following:
Class 29: Buttercream, ferments (milk-) for culinary purposes; butter; milk products; cheese products.
Class 35: Retail services relating to food; retail services in relation to foodstuffs.
An interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.
The term ‘specifically’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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
Cheese products are identically contained in both lists of goods and services (including synonyms). As stated above, the addition of and specifically melted and flavoured cheeses in the opponent’s list of goods is an indication that the specific goods are only examples of items included in the category and that protection is not limited to them.
The contested milk products include the opponent’s cheeses, and specifically melted and flavoured cheeses. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested buttercream and butter are edible dairy products. As such, they have the same nature as the opponent’s cheeses, and specifically melted and flavoured cheeses. Moreover, they can have the same producers, end users and distribution channels. Therefore, these goods are similar.
The contested ferments (milk-) for culinary purposes, also known as cultured dairy foods, cultured dairy products or cultured milk products, are dairy foods that have been fermented with lactic acid bacteria such as Lactobacillus, Lactococcus and Leuconostoc. The fermentation process increases the shelf-life of the product, while enhancing the taste and improving the digestibility of milk. These products are milk‑based and are also used for making cheese. They have the same nature, may target the same public, are complementary and may be in competition. Therefore, these goods are found to be similar.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
The contested retail services relating to food; retail services in relation to foodstuffs relate to food and foodstuffs in general, which may include the opponent’s cheeses. Therefore, they are found to be similar to a low degree to the opponent’s cheeses, and specifically melted and flavoured cheeses.
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 and similar to various degrees are goods and services for daily consumption, directed at the public at large. The degree of attention is considered average.
Earlier trade mark
The relevant territory is France.
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 word mark made up of the sole word ‘GOURMANDISE’. The word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower case or upper case letters.
The contested sign is a figurative mark made up of the word ‘GOURMANDISSE’ written in standard bold upper case letters, except for the final four letters, which are written in italic lower case letters. Below this word, on the right-hand side, are the words ‘fine food lovers’ in smaller lower case letters.
The earlier mark is made up of the French word ‘GOURMANDISE’, which is defined as ‘caractère, défaut du gourmand. Mets appétissant, friandise’ (Larousse Dictionary consulted on 21/09/2016 at http://www.larousse.fr), which translates as Character, fault of a greedy person. Tasty dish, sweet’ (internal translation). It is also used and is defined as ‘excessive and voracious eating; gluttony (obs.). The habits, tastes, or perceptions characteristic of a gourmand adj. and n.; indulgence or connoisseurship in “good eating” ’ (Oxford English Dictionary consulted on 21/09/2016 at http://www.oed.com). Bearing in mind that the relevant goods are foodstuffs, this element may be seen as weak for cheeses, and specifically melted and flavoured cheeses.
The contested sign is composed of almost the same word, apart from the final consonant ‘S’, of which there are two. The word ‘GOURMANDISSE’ is the dominant element, as it is the most eye-catching one. The French public will perceive it either as the word ‘gourmandise’ with a spelling mistake or as the word ‘GOURMAND’ with the suffix ‘-ISSE’. As regards the expression ‘fine food lovers’, part of the French public is likely to grasp the meaning of the basic English words ‘food’ and ‘lovers’ as referring to ‘enthusiasts for good eating’. These words are deemed to be weak in the context of foodstuffs and related services.
Visually, the signs coincide in the string of letters ‘GOURMANDIS*E’. The earlier mark is entirely reproduced within the contested mark, but with a double ‘S’. This sequence of letters constitutes the sole word of the earlier mark and the longer and more dominant word of the contested mark. However, the marks differ in that the final four letters of the contested mark appear in italic lower case; therefore, they may be seen as a suffix of the word ‘GOURMAND’. Moreover, the contested mark also contains the additional expression ‘fine food lovers’, which has no counterpart in the earlier mark. However, it is written in smaller characters and placed below the dominant element in a secondary position.
As stated above, the earlier mark and the more dominant part of the contested mark are almost identical, apart from the additional final consonant ‘S’. However, consumers generally tend to focus on the first element of a sign when being confronted with 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.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in three syllables out of four, namely ‛GOUR/MAN/DI’. The pronunciation differs in their final consonants, [Z] of the earlier mark and [S] of the contested mark. There is a difference in the length of the signs owing to the additional sound of the letters in ‛fine food lovers’ when the contested sign is pronounced in its entirety. However, since the word ‘GOURMANDISE’ of the earlier mark and the word ‘GOURMANDISSE’, the main part of the contested sign, are long words, the relevant public is likely to refer to the signs by citing only these words. They have the same beginning, rhythm and structure and differ only in the sound of final letters, [iZ] versus [iS] but this distinction is aurally quite imperceptible.
Therefore, the signs are aurally highly similar.
Conceptually, the public in the relevant territory will perceive the earlier sign ‘GOURMANDISE’ as the ‘character, fault of a greedy person, or tasty dish or sweet’. These concepts are also conveyed by the word ‘GOURMANDISSE’ of the contested mark, obviously owing to its closeness to the word ‘gourmandise’. This is also true for the part of the public that will perceive the word ‘GOURMAND’ with the suffix ‘-ISSE’, since the conveyed message is the same, as well as for the part that will read the word as ‘gourmandise’ with a spelling mistake. The additional words ‘fine food lovers’ are likely to be understood by a part of the French public as meaning ‘connoisseurship in good eating’ and as referring to the potential target public of the goods and services by referring to the same concept.
As both signs will be associated with the same concept of ‘greediness’, ‘tasty dishes’ or ‘sweets’, the signs are identical as far as this word is concerned. For the part of the French public that understands the meaning of the additional words ‘food lovers’, the mark conveys a similar message of ‘enthusiasts for [certain] dishes’. Therefore, to this extent, this part of the mark is also deemed to be conceptually highly similar to the earlier mark. The word ‘fine’ is likely to be understood as ‘thin’ by this public.
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. Considering what has been stated above in section c) of this decision, the degree of distinctiveness of the earlier mark must be seen as low for all of the goods in question, namely cheeses, and specifically melted and flavoured cheeses in Class 29, in the relevant territory, namely in France.
Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
Moreover, the Court has set out the essential principle that 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 the 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 marks are visually, aurally and conceptually highly similar. The goods and services found to be identical and similar to various degrees are goods and services for daily consumption directed at the public at large. The degree of attention is considered average.
In particular, the signs have in common 11 out of 12 letters of their sole and/or longer and dominant word, namely ‘GOURMANDIS*E’. The additional words ‘fine food lovers’ of the contested sign are not likely to be easily perceived visually owing to their secondary position in the overall trade mark. Indeed, they appear in smaller characters below the dominant part of the mark and on the right-hand side.
In both signs, the first eye-catching elements are ‘GOURMANDISE’ and GOURMANDISSE, which are quite long words. Therefore, the relevant public has no reason to refer to the contested mark in its entirety. Moreover, the repetition of the same final consonant ‘S’ in the contested mark is barely perceptible; therefore, it does not alter the similar visual, aural and conceptual overall impression of the marks.
The earlier mark, ‘GOURMANDISE’, is deemed to be weak in relation to goods in Class 29. However, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (27/04/2006, C‑235/05 P, Flexi Air, EU:C:2006:271, § 53).
Moreover, 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Based on all the foregoing, it is considered that, for a sufficient part of the public, there are strong coincidences between the signs that have a decisive impact. Consequently, even if the consumer is capable of detecting differences between the conflicting signs, the likelihood of associating the signs with each other is real. Therefore, a likelihood of confusion cannot be excluded.
Considering all the above, there is a likelihood of confusion on the part of the French public.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 583 561. 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
Loreto URRACA LUQUE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.