OPPOSITION No B 2 466 814

Koninklijke Douwe Egberts B.V., Oosterdoksstraat 80, 1011 DK, Amsterdam, Netherlands (opponent), represented by Tellavas, S.L.U., Rambla Cataluña, 38 8ª, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Cafea GmbH, Am Sandtorkai 2, 20457 Hamburg, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

On 10/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 466 814 is upheld for all the contested goods.

2. European Union trade mark application No 13 263 504 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 263 504 ‘LAROMA’ (word mark). The opposition is based on Spanish trade mark registration No 3 104 967 for the mark . The opponent invoked Article 8(1)(a) EUTMR.

Article 8(1)(a) EUTMR covers situations where the contested EUTM application is identical to the earlier mark and covers identical goods. Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed, but identity between the signs and/or the goods/services cannot be established, the Office will examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between the signs and between the goods/services and a likelihood of confusion. Similarity covers situations where both the marks and the goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

In the present case, since the signs and the goods involved are not identical (see the detailed analysis and comparisons in sections a) and c) below), the Opposition Division will proceed with an examination of the opposition under 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.

a) The goods

The goods on which the opposition is based are the following:

Class 30: Coffee; coffee in filter packing; coffee capsules; portioned coffee; instant coffee; coffee-based beverages; coffee substitutes; coffee extracts; coffee essences; coffee flavourings; tea; instant tea; tea-based beverages; tea substitutes; tea extracts; tea essences; tea flavourings; iced tea; herbal infusions, other than for medicinal use; infusions consisting of tea, herbs, fruits, spices or flavourings or a combination of these products, other than for medicinal use; cocoa; cocoa-based beverages; chocolate-based beverages; chocolate and chocolate extracts in powder, granulated and liquid form; sugar; honey; natural sweeteners; biscuits; cookies; cakes; pastry; confectionery; edible ices; ice.

The contested goods are the following:

Class 29: Coffee creamers, preparations made from vegetable raw materials for whitening coffee, dietetic foodstuffs, not for medical purposes, included in Class 29; mixed milk beverages, milk predominating or of half milk, including with added cocoa and/or malt and/or chocolate; including all the aforesaid goods in instant form.

Class 32: Non-alcoholic drinks, including with added milk, milk products and/or fruit products, including all the aforesaid goods in instant form.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’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 (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 coffee creamers, preparations made from vegetable raw materials for whitening coffee are similar to the opponent’s coffee, since they are complementary, may have the same distribution channels and points of sale, target the same consumers and can be produced by the same kind of undertakings.

The contested mixed milk beverages, milk predominating or of half milk, including with added cocoa and/or malt and/or chocolate are similar to the opponent’s coffee, since they are in competition, have the same distribution channels and points of sale, target the same consumers and can be produced by the same kind of undertakings.

The contested dietetic foodstuffs, none for medical purposes, included in Class 29 are similar to a low degree to the opponent’s tea; herbal infusions, other than for medicinal use, since these goods are frequently used as part of a special diet (even if not for a medical purpose) due to the inherent characteristics of the goods and their ingredients (fat burners, low fat diuretics, etc.). These goods can, therefore, have the same purpose, target the same consumers, have the same distribution channels and be found in the same areas of department stores.

The indication contained at the end of the list of the contested goods in Class 29, namely including all the aforesaid goods in instant form, consists merely of an example of the type of goods included. Therefore, it does not alter the reasoning and findings reached above.

Contested goods in Class 32

The contested non-alcoholic drinks, including with added milk, milk products and/or fruit products, including all the aforesaid goods in instant form are similar to the opponent’s coffee, since these goods are in competition, may have the same distribution channels and points of sale, target the same consumers and are likely to be produced by the same kind of undertakings.

b) 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 similar to varying degrees are directed at the public at large. The degree of attention paid by consumers during the purchase of the goods is deemed to be average.

c) The signs

	LAROMA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 opponent indicated in its notice of opposition that the earlier mark is a figurative mark. However, the registration certificate submitted indicates that it is a word mark. The information submitted is, therefore, contradictory in this regard. The Opposition Division will proceed on the assumption that the registration certificate submitted is correct, thus considering the earlier mark a word mark.

Therefore, both signs are word marks and, for this kind of mark, the word as such is protected and not its written form. It is irrelevant whether word marks are depicted in lower case or upper case letters or in a combination thereof.

The words forming the marks do not exist as such in Spanish. However, Spanish-speaking consumers will attribute concepts to them, for the reasons given below.

Regarding the concepts that will be perceived in the earlier mark, the first letter, ‘L’, followed by an apostrophe is meaningless, since the apostrophe is not used in Spanish and the letter ‘L’ in isolation conveys no concept other than that of the letter it represents, and the element ‘ARÔME’ will be perceived as having the same meaning as the Spanish word ‘aroma’, used to refer to a pleasant odour or fragrance, due to the similar spellings of ‘ARÔME’ and ‘aroma’. Even though the earlier mark contains a circumflex, ‘^’, above one of its letters, which is not used in Spanish, this will not prevent the concept of ‘aroma’ from being perceived, and the accent will be seen as a mere fanciful addition to the word. Taking into account the above, consumers will perceive the earlier mark as being formed of two independent elements, namely the letter ‘L’ and the word ‘ARÔME’.

Taking into account the goods in question, the element ‘ARÔME’ in the earlier mark is of lower than average distinctiveness, as it will be perceived as at least allusive of their characteristics, namely that they have a pleasant odour or smell.

Regarding the concepts that will be perceived in the contested sign, although the word ‘LAROMA’ does not exist as such in Spanish, the relevant public will mentally divide it either into ‘L’ and ‘AROMA’ or into ‘LA’ and ‘ROMA’. This is because they will identify in the mark either the Spanish word ‘AROMA’ (with the concept explained above) or the Spanish words ‘LA’ and ‘ROMA’, meaning ‘the’ and ‘Rome’ (i.e. the city in Italy).

However, taking into account the kind of goods in question, in relation to which a pleasant odour or fragrance is of great importance, it is likely that a significant part of the public will perceive the mark as being formed of ‘L’ and ‘AROMA’. The examination of the opposition will proceed taking into account this part of the public only, since, for it, the signs have additional commonalities (see the conceptual comparison below), and therefore this is the part of the public for which confusion is most likely to arise.

As the element ‘LAROMA’ will be perceived as ‘L’ and ‘AROMA’, and taking into account the kind of goods in question, the same reasoning regarding the concepts conveyed by these elements and their distinctiveness as explained above in relation to the earlier mark applies in relation to the contested sign.

Visually, the signs coincide in five of their six letters, namely ‘LAROM’. The marks differ in the presence of the apostrophe and the circumflex, ‘^’, in the earlier mark, and in their final letters, ‘E’ and ‘A’ in the earlier mark and the contested sign, respectively.

Taking into account that the apostrophe in the earlier mark divides it into two parts, which is not the case in the contested sign, and, since some of the commonalities are found in elements that are considered to have a lower than average degree of distinctiveness (and, therefore, a somewhat reduced impact), it is considered that the marks are visually similar to an average degree.

Aurally, since the circumflex is not used in Spanish, consumers will pronounce the earlier mark as if it were not present. The presence of the apostrophe, not used in Spanish, does not alter the pronunciation either. Therefore, the signs coincide in the sound of the letters ‘larom’, and differ in the sounds of their last letters, ‘e’ and ‘a’ in the earlier mark and the contested sign, respectively.

The marks are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the public referred to above will perceive the signs as being formed of the combination of elements ‘L’ and ‘arome’ or ‘aroma’.

The signs are conceptually identical.

The differences in the apostrophe and the circumflex, ‘^’, of the earlier mark and in the last letters of the signs do not alter this finding, since they do not contribute additional, differing concepts.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

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, despite the lower than average distinctiveness of a part of the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs are visually similar to an average degree, aurally highly similar and conceptually identical. The differences between the marks are not visually or aurally striking, and do not alter the fact that the signs convey identical concepts.

The earlier mark is of average distinctiveness.

The goods are similar to varying degrees and target the public at large, and the degree of attention paid during their purchase is deemed to be average.

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). The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect.

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).

For all of the reasons given above, it is considered that the commonalities between the signs, together with the similarities (to varying degrees) between the goods in question, are clearly enough to outweigh the dissimilarities between the signs, and may lead at least a part of the public to believe that the conflicting goods come from the same undertaking or economically linked undertakings.

In addition, it should be borne in mind that some of the goods in question (e.g. non-alcoholic drinks) are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). Considering that the signs are aurally highly similar, it is likely that the aural differences between them will not be noticed under such circumstances, which increases the likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public referred to above (i.e. a significant part of the Spanish-speaking public). As a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 104 967 for the mark . It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

Chantal VAN RIEL

María del Carmen SUCH SANCHEZ

Alicia BLAYA ALGARRA

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.