OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 509 944
Findus Sverige Aktiebolag, 267 81 Bjuv, Sweden (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)
a g a i n s t
Pesquera Friosur S.A., Jose María Caro, 300 Puerto Chacabuco, Aysen, Chile (applicant), represented by A2 Estudio Legal, Calle Hermosilla 59 Bajo izquierda, 28001 Madrid, Spain (professional representative).
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of Community trade
mark application No
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 3 455 607.
The goods on which the opposition is based are, inter alia, the following:
Class 29: Fish and shellfish (not live) as well as thereon based food products, including various kinds of preserves and fish products in a sauce or a marinade; meat, poultry and game; meat extracts, preserved, dried and cooked fruits and vegetable products; prepared or ready-made dishes based on one or several of the aforementioned products, including such dishes in frozen form; fast food and snackfoods included in the class; soups and bouillons; jellies, jams, marmalade and fruit sauces; pickles; edible oils and fats, dairy products.
The contested goods are the following:
Class 29: Meats; Fresh fish and shellfish; Preserved fish; Fish; Fruit preserves and vegetable preserves; Frozen vegetable and fruits.
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 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).
Contested goods in Class 29
Meats and fish are identically contained in both lists of goods (including synonyms).
The contested fresh fish, preserved fish in Class 29 are included in the broad category of the opponent’s fish (not live). Therefore, they are identical.
The contested fresh shellfish in Class 29 is included in the broad category of the opponent’s shellfish (not live). Therefore, they are identical.
The contested fruit preserves and vegetable preserves and the opponent’s preserved … fruits and vegetable products are essentially the same products. These goods are identical.
The contested frozen vegetable and fruits are considered identical with the opponent’s preserved … fruits and vegetable products. This is because ‘preserved’ means food treated in a particular way so that it can be kept from going bad for a long period, for example in a frozen state.
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 will be average.
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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 part of the relevant public that does not speak Latin-based languages.
The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘FRIO--R’. They also have the same structure (one word) and are the same length (seven letters). However, they differ in ‘NO’ of the earlier mark and ‘SU’ of the contested sign.
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the beginning 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 highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛FRIO--R’, present identically in both signs. The marks also have the same number of syllables and the same rhythm. On the other hand, the pronunciation of the marks differs in the sound of the letters ‘NO’ of the earlier mark and ‘SU’ of the contested sign.
Therefore, the signs are highly similar.
Conceptually, neither of the signs has a meaning for the relevant public. 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.
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.
Global assessment, other arguments and conclusion
The goods are identical. The earlier trade mark’s degree of distinctiveness is average, and the degree of attention of the relevant public is also average. The marks are visually and aurally highly similar, and there is nothing to link or differentiate them conceptually. The overall impression of the marks is highly similar. Overall, it is clear that confusion is very likely on the part of the relevant public.
The applicant argues that the element ‘FRIO-‘ has a low distinctive character given that there are many trade marks that include this element. In support of its argument the applicant refers to a number of Community trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FRIO-‘. Under these circumstances, the applicant’s claims must be set aside.
The applicant argues that it is a main producer of fish food in Chile, and that the contested trade mark is recognised by consumers, because it has been used for several decades in a number of countries around the world, including in some EU Member States.
The right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The previous cases referred to by the applicant are not relevant to the present proceedings. The marks are not comparable because the signs in dispute here have no weak element for the relevant public.
Considering all the above, there is a likelihood of confusion on the part of the public that does not speak Latin-based languages. 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.
Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 3 455 607. It follows that the contested trade mark must be rejected for all the contested goods.
As the above earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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.