OPPOSITION No B 2 515 107

Jose Montoro Andreu, C/ Germanells, nº 47, 46138 Rafelbuñol (Valencia), Spain (opponent), represented by J. Lopez Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)

a g a i n s t

C. Mackprang Jr. GmbH & Co. KG, Jungfernstieg 49, 20354 Hamburg, Germany (applicant), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative).

On 29/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 515 107 is rejected in its entirety.

2. The oponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 603 022, namely against all the goods in Classes 29 and 30, and part of the goods and services of Classes 31 and 35. The opposition is based on Community trade mark registration No 3 824 406 and Spanish trade mark registration No 2 520 598. 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.

1. The goods and services

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

Community trade mark registration No 3 824 406

Class 30: Rice.

Class 35: Advertising and business management in relation with the commerce of rice.

Class 39: Transport, packing and storage of rice.

Spanish trade mark registration No 2 520 598

Class 30: All kind of rice.

The contested goods and services are the following:

Class 29: Frozen fruits; preserved fruits; fruit, stewed; dried fruit; prepared fruits; fruit preserves; processed fruits, fungi and vegetables (including nuts and pulses); pickled vegetables; peeled vegetables; frozen vegetables; vegetables, dried; preserved vegetables; preserved vegetables; prepared vegetable products; canned vegetables.

Class 30: Cereal flour; cereal bars; chips [cereal products]; cereals; preparations made from cereals; ready-to-eat cereals; cereal seeds, processed; cereal seeds, processed; cereal seeds, processed; cereal seeds, processed; foodstuffs made from cereals; food preparations based on grains; cereals prepared for consumption by humans; processed cereals for food for human consumption; cereal based foodstuffs for human consumption; processed cereals for food for human consumption; barley meal; barley (crushed -); barley flakes; husked barley; barley (crushed -); husked barley; malted barley prepared for human consumption; flour; flour mixes; grist.

Class 31: Seeds; unprocessed cereals; cereal seeds, unprocessed; raw cereals [unprocessed]; cereal based foodstuffs for animals; cereal seeds, unprocessed; cereals products for consumption by animals; malts and unprocessed cereals; cereals (residual products of -) for animal consumption; barley; malted barley; barley (unprocessed -); barley for use in brewing beer; meal for consumption by animals; agricultural produce (unprocessed -); seeds for agricultural purposes; fresh fruits, nuts, vegetables.

Class 35: Wholesaling and retailing relating to agricultural commodities, foodstuffs for animals, cereals, fruits and vegetables; import-export agency services; commercial administration of the licensing of the goods and services of others; market research; market research; public relations services; exhibitions for commercial or advertising purposes.

Some of the contested goods and services are identical to goods and services on which the opposition is based. Rice of the earlier marks is covered by the broad category of cereals of the contested, and the contested sign services market research overlap with the opponent’s business management in relation with the commerce of rice.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. The signs

1) CTM No 3 824 406 2) ES No 2 520 598
Earlier trade marks	Contested sign

The earlier mark 1) is a figurative mark shaped by different elements, a blue rectangle on top with the verbal elements ‘ARROZ’ in bold blue uppercase letters with yellow borders, and below this, the verbal elements ‘RICE’, ‘REIS’ and ‘RIZ’ in white bold capital letters separated by white dots, and beneath them, a red circle in the left corner of the blue rectangle. Below these, a blue papyrus shaped scroll with the verbal element ‘J. MONTORO’ in white titled letters. And beneath all these elements, a blue stripe placed horizontally.

As for earlier mark 2), this mark is also shaped by different elements, a green rectangle on top with the verbal elements ‘ARROZ’ in bold red uppercase letters with yellow borders, and below this, the letter ‘M’ in red bold typography with bold yellow borders and the silhouette of a men with a hat kneeling in blue and white shades pulling a plant from the ground. Below all these, in the lower part of the mark, a green rectangle with the verbal elements ‘EL SABOR DEL MEDITERRANEO’ in yellow, and under this, the verbal elements, ‘RICE’, ‘REIS’ and ‘RIZ’ in white bold uppercase letters separated by white dots.

The contested sign is a horizontal shape as a waving flag in blue, with a white diamond in the middle and the uppercase letter ‘M’ in bold red font.

The relevant territories are the European Union and Spain.

Visually, the earlier mark 1) and the contested sign are similar to the extent that they coincide in the colours blue, white and red, and with the earlier mark 2) and the contested sign, they are similar in the coinciding letter ‘M’.

However, they differ in the following verbal elements of the earlier mark 1), the verbal element ‘ARROZ’ on top, the verbal elements ‘RICE’, ‘REIS’ and ‘RIZ’ below it, and underneath all, in a central position the letters ‘J. *ONTORO’ of the verbal elements ‘J. Montoro’, as well as, in the figurative elements (including the graphical devices and the stylisation of the letter ‘M’ as well) of this mark.

As for the earlier mark 2), this differs in the verbal element ‘ARROZ’ placed on top the mark, the additional figurative element of a man with a hat kneeling, the verbal elements ‘EL ARROZ DEL MEDITERRANEO’ in the lower part of the mark followed by the verbal elements ‘RICE’, ‘REIS’ and ‘RIZ’ below and in the rest of the figurative elements and the stylisation of the letter ‘M’.

Furthermore, the differing elements in the contested sign, namely, the figurative element shaped as a blue flag, the white diamond in the middle and the stylisation of the red letter ‘M’ with no other additional verbal elements, in contrast with the earlier marks, creates a different impression when compared with the earlier marks on the visual aspect.

Therefore, and despite the coinciding elements, the earlier mark 1) and the contested sign are only similar in irrelevant aspects, that is, the presence of the letter ‘M’ as part of a word in the earlier mark 1) and as a consonant alone in the contested sign in different colour and stylisation, hence, it is concluded that the signs are not visually similar. However, in regards to earlier mark 2) and the contested sign, they are consider similar in a low degree due to the coinciding element, the red letter ‘M’, present in both signs.

Aurally, in the case of the earlier mark 2), the pronunciation of the signs coincides in the letter ‛M’ present identically in both marks. When consumers encounter a sign that is formed by a letter, they usually refer it by the name of the letter in itself. Therefore, as the relevant public is the Spanish one, the common letter will be pronounced as ‘E-ME’. To that extent the signs are aurally similar. Furthermore, the pronunciation differs in the syllables /a/rroz/, /ri/ce/, /reis/, /riz/ and /el/ sa/bor/ /del /me/di/te/rra/neo/, of the earlier mark 2), which have no counterpart in the contested sign.

In respect of the earlier mark 1), the pronunciation of the signs coincides in the sound of the letter ‘M’. However, as this coincidence is not particularly relevant, because the coinciding element is aurally not perceptible as a separate element in the opponent´s mark and the length of the verbal element ‘J. MONTORO’ of the earlier sign is quite significant, it is concluded that these signs are not aurally similar.

Conceptually, the verbal elements ‘ARROZ’, ‘ RICE’, ‘REIS’ and ‘RIZ’ of the earlier mark 1) will be perceived as referring to the grass cereal cultivated for its grains that grows in wet land by the parts of relevant public that understand Spanish, English, German and French respectively. The verbal element ‘J.Montoro’ will be perceived as the initial letter of a name followed by a surname, that will be perceived as a foreign name, but by a part of the relevant public, such as, the Spanish and Portuguese part of the public, they will perceived it as common. The further figurative elements of the earlier mark 1) will be perceived as the geometrical figure of a circle in colour red and a piece of a papyrus shaped scroll in colour blue.

Concerning the earlier mark 2), the relevant public will perceive the verbal element ‘ARROZ’ in reference to the grass cereal cultivated for its grains that grows in wet land. The verbal elements ‘RICE’, ‘REIS’ and ‘RIZ’ will not be understood by the relevant public, and will not entail any meaning. The element ‘M’ will be understood as the depiction of the consonant letter ‘M’. Moreover, the verbal element ‘EL ARROZ DEL MEDITERRANEO’ will be perceived as a reference to the place in which the rice will be harvested and originated from, that is the Mediterranean. Finally, the additional figurative element placed in front of the letter ‘M’, will be perceived as a man kneeling pulling a plant from the ground, collecting rice plants.

The contested sign will be perceived by the public in the relevant territories as the geometrical figure of a diamond in colour white, represented on the surface of a shape that resembles a blue waving flag with the consonant letter ‘M’ in colour red in a central position.

For the above explained, since the earlier mark 1) and the contested sign will be associated with dissimilar meanings, it is concluded that they are not conceptually similar.

As for the earlier mark 2) and the contested sign, these are similar to the extent that the element ‘M’ is included in both signs and will be associated with a similar meaning. To that extent, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the earlier mark 2) and the contested sign are similar. Whereas, as the earlier mark 1) and the contested sign only coincide in irrelevant aspects, it is concluded that they are dissimilar.

Conclusion

According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected, as far as, it is based on the earlier mark 1), Community trade mark registration No 3 824 406.

The Opposition Division will continue its examination based on earlier mark 2), Spanish trade mark registration No 2 520 598.

3. 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 verbal element ‘ARROZ’ of the earlier mark will be associated with the Spanish word for rice, and will be understood by the relevant public. Furthermore, the verbal elements, ‘EL ARROZ DEL MEDITERRANEO’, will be associated with the rice that originates from the Mediterranean area, and the figure of a man kneeling collecting plants, these will be associated to rice plants. Bearing in mind that the relevant goods are rice, it is considered these elements, are descriptive and, thus, non‑distinctive for these goods, namely for rice in Class 30. The public understands the meaning of these elements and will not pay as much attention to these non‑distinctive elements as to the other more distinctive elements of the mark. Consequently, the impact of these non‑distinctive elements is limited when assessing the likelihood of confusion between the marks at issue.

The elements ‘ARROZ’ and ‘M’ with the figurative element of a man with a hat kneeling in the earlier mark are the dominant element as they are the most eye‑catching.

The contested sign has no element which could be considered more distinctive or dominant (visually eye‑catching) than other elements.

4. 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 and services 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 presence of non‑distinctive elements in the mark as stated above in section c) of this decision.

5. 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.

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 assumed to be identical are directed at the public at large, and the degree of attention will be considered to be average. (e.g. goods such as fruits, vegetables, cereals and seeds in Classes 29, 30 and 31).

In respect of the services found to be identical, these are directed at the public at large as well as at business customers with specific professional knowledge or expertise (e.g. for wholesaling and retailing , commercial administration , market research in Class 35).

The degree of attention can be expected to vary between average and high. A higher degree of attention can, for example, be expected for wholesaling and retailing, commercial administration, market research services in Class 35, as the offer of these services will involves investment and defines the business strategy.

6. 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’ (see judgment of 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528).

The contested goods and services are assumed to be identical. The earlier mark as a whole has a normal degree of distinctiveness.

The similarity between the signs lies in the presence of the letter ‘M’ in both marks. However, the marks have other significant visual, aural and conceptual dissimilarities, namely, the additional distinct figurative elements in both marks, and the additional verbal elements, namely, ‘ARROZ’,‘RICE’, ‘REIS’ and ‘RIZ’, as well as, ‘EL ARROZ DEL MEDITERRANEO’ in the earlier mark.

It’s true that, since the relevant goods of the earlier mark are rice, it was determined in section c) of this decision that the verbal elements ‘ARROZ’, ‘EL ARROZ DEL MEDITERRANEO’ and the figure of a man kneeling collecting rice plants are non-distinctive elements. Consequently, in this case, these elements have only a limited impact when assessing the likelihood of confusion between the marks. Moreover, the lesser impact is reinforced in the case of the verbal element ‘EL ARROZ DEL MEDITERRANEO’, since this element is part of the non-dominant elements of the sign. Nonetheless, the components ‘RICE’, ‘REIS’ and ‘RIZ’ are distinctive, and although not dominant, these will be noticed by the Spanish consumers in the relevant territory regardless of not being understood, and will add further dissimilarities between the signs.

Overall, the signs differ in their structure, the number of verbal elements (one letter in the contested sign, whereas one letter and several words in the earlier mark), their typeface and the figurative elements. Despite being the letter ‘M’ in red in both signs (still a different shade), the earlier mark is represented in a more stylised shape, depicted with a yellow border and including the figure of man kneeling collecting rice plants. In contrast, the letter ‘M’ in the contested sign is depicted in bold with its straight vertical strokes against a rhomboid background inserted in a rectangular shape as a waving flag. When the signs are seen as a whole, the impression created on the relevant consumer is different.

Hence, just because the signs coincide in one letter, this is not sufficient for a finding of likelihood of confusion, since the subsequent word elements in the earlier mark are visually different and easily identifiable by consumers as well as the other visual differences mentioned above. It should be recalled that the consumers perceive signs as a whole and do not proceed to analyse their various details. The differences between the signs are considered to be more than sufficient to counteract the similarities. The Opposition Division considers this to be the case even when the goods and services are identical, despite the level of attention of these goods and services, and even when allowing for imperfect recollection.

Therefore, taking into consideration all the above, in particular the striking visual differences between the signs, the Opposition Division considers that there is no likelihood of confusion on the part of the public.Therefore, the opposition must be rejected in respect to Spanish trade mark registration No 2 520 598 as well.

COSTS

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

Victoria DAFAUCE MENÉNDEZ

Karin KUHL

Mariya KOLEVA

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.