OPPOSITION No B 2 556 689

Valeo Foods (Ireland), Merrywell Industrial Estate, Ballymount, Dublin 12, Ireland (opponent), represented by Purdylucey Intellectual Property, 6-7 Harcourt Terrace, Dublin 2, Ireland (professional representative)

a g a i n s t

Poundland Limited, Wellmans Road, Wolverhampton WV13 2QT, United Kingdom (applicant), represented by Freeths LLP, Colmore Plaza, 20 Colmore Circus, Birmingham B4 6AT, United Kingdom (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 556 689 is partially upheld, namely for the following contested goods:

Class 29: Snack foods; preserved, dried and cooked fruits and vegetables; potato-based snack foods; nuts; fruit snacks; dried fruit mixes; dried fruits; seeds (processed); Bombay mix; crisps; dried meat; salted meats; none of the aforementioned goods made from or containing cheese.

2. European Union trade mark application No 13 947 718 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 947 718 . The opposition is based on European Union trade mark registration No 12 400 453 . The opponent invoked 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.

1. The goods

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

Class 30: Bread, biscuits (other than biscuits for animals), cakes, pastry, preparations made from cereals for food for human consumption, foodstuffs in the form of snack foods, pies; rice cakes; oat cakes; corn cakes; fruit sauces; cereal bars; wafers; ready to eat snacks; chips, crisps, puffs, tortilla chips, popcorn; condiments, spices, sauces; preparations made from potato flour, corn flour and from cereals.

The contested goods are, after a limitation, the following:

Class 29: Snack foods; preserved, frozen, dried and cooked fruits and vegetables; potato-based snack foods; nuts; fruit snacks; dried fruit mixes; dried fruits; seeds (processed); Bombay mix; crisps; dried meat; salted meats; none of the aforementioned goods made from or containing cheese.

Class 31: Fresh nuts, seeds and grains; unprocessed nuts, seeds and grains.

As a preliminary remark, it is to be noted that, contrary to the applicant’s argumentation, 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 snack foods; potato-based snack foods; fruit snacks; none of the aforementioned goods made from or containing cheese are various foodstuffs consumed as snacks, as are the opponent’s foodstuffs in the form of snack foods in Class 30. Therefore, these products are similar to a high degree, since they have the same nature, purpose and method of use. Furthermore, they are in competition, have the same distribution channels and target the same public.

The contested crisps; none of the aforementioned goods made from or containing cheese in Class 29 have to be interpreted as being chips made of potato. The opponent’s crisps in Class 30 have to be understood as being chips made of cereals. These products are similar to a high degree, since they have the same nature, purpose and method of use. Furthermore, they are in competition and have the same distribution channels and target the same public.

The contested dried fruits; nuts; dried fruit mixes; dried fruits; seeds (processed); Bombay mix; dried meat; salted meats; none of the aforementioned goods made from or containing cheese are various foodstuffs that are typically consumed as snacks. Therefore, they are, at least, highly similar to the opponent’s foodstuffs in the form of snack foods, since they have the same purpose and method of use and target the same public. Furthermore, they are in competition.

The contested preserved and cooked fruits; none of the aforementioned goods made from or containing cheese and preserved and cooked vegetables; none of the aforementioned goods made from or containing cheese include various pastes or other preparations that can have the same purpose as the opponent’s sauces, since the latter include fruit and vegetable (e.g. tomato) sauces, for example. These goods are in competition and have the same producers, target the same public and are sold through the same distribution channels. Therefore, they are similar to a high degree.

The contested dried vegetables; none of the aforementioned goods made from or containing cheese are similar to the opponent’s spices, as they usually have the same producers and distribution channels. Moreover, they target the same public.

Although the contested frozen fruits and vegetables; none of the aforementioned goods made from or containing cheese could be used to make sauces, they cannot be described as such. Furthermore, they have nothing relevant in common with the opponent’s sauces or its other goods in Class 30. The mere fact that all the goods under comparison are foodstuffs is not sufficient for a finding of similarity. They clearly have different natures, methods of use and commercial origins, and, as they satisfy different needs, they target different publics. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 31

The contested fresh nuts, seeds and grains; unprocessed nuts, seeds and grains are unprocessed foodstuffs. These contested goods do not have the same nature and usual origin as any of the opponent’s goods in Class 30. They are neither complementary nor in competition. The mere facts that the contested goods are foodstuffs, that they target the same public or that some of them can be found in supermarkets are insufficient for a finding of similarity. Therefore, these goods are dissimilar to all of the opponent’s goods.

2. 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 various degrees are directed at the public at large. Taking into account that the relevant goods are relatively cheap foodstuffs and purchased and consumed on a daily basis, the degree of attention of the public must be considered lower than average (06/09/2016, R 2200/2015-4, CHEF CUISINE (fig.) / Le Chef de CUISINE (fig.), § 27).

3. The signs

Earlier trade mark	Contested sign

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 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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.

Since both signs are composed of English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both marks are figurative signs.

The earlier mark is composed of the verbal elements ‘THE NATURAL SNACKING CO.’ depicted in large bold brown upper case letters. Around these verbal elements are several little figurative elements, namely a speech bubble enclosing the words ‘yum yum’ in smaller letters, a cloud, a rainbow, a smiling face, a heart enclosing the word ‘good’ in smaller letters and a bee.

The contested sign is composed of the verbal elements ‘The Natural Snack Co.’ depicted in fairly stylised letters written following a curved line. The first letter of each word is upper case.

The verbal element ‘THE NATURAL’, identically present in both signs, will be understood by the relevant public as ‘of, existing in, or produced by nature; not artificial or manufactured’. The words ‘SNACKING’ in the earlier mark and ‘Snack’ in the contested sign will be perceived as conveying the same meaning as each other. The noun ‘Snack’ refers to ‘a light quick meal eaten between or in place of main meals’, while ‘SNACKING’ is the present participle of the verb ‘snack’. Therefore, and contrary to the applicant’s claim, the words ‘Snack’ and ‘SNACKING’ of the two marks under comparison have the same meaning. It follows that both phrases, ‘THE NATURAL SNACKING’ and ‘The Natural Snack’, will be identically perceived as alluding to the fact that the goods are non-artificial foodstuffs intended to be eaten as snacks. Bearing in mind that the relevant goods are foodstuffs, namely snack-related products, these elements are distinctive to a low degree.

The same applies to the coinciding element ‘CO.’, as it will be perceived in both signs by the relevant public as referring to the word ‘company’ and, thus, as referring to the undertaking providing the goods. Consequently, this element is devoid of any distinctive character.

Taking into account that the relevant goods are foodstuffs, the remaining verbal elements present in the earlier mark, that is, ‘yum yum’ and ‘good’, will be perceived as referring to the quality of the food, ‘yum yum’ being an interjection indicating delight at the flavour of food, or in other words that it is ‘good’. Therefore, they are laudatory and consequently non-distinctive.

The earlier mark’s figurative elements do not convey any meaning in relation to the relevant goods. Therefore, they are distinctive. However, account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). It follows that the verbal elements ‘THE NATURAL SNACKING’ will have a stronger impact than the figurative elements when the consumers encounter the earlier mark.

The contested sign has no elements that could be considered more dominant (eye-catching) than other elements. However, the elements ‘NATURAL SNACKING’ of the earlier mark are the dominant elements.

Visually, the signs coincide in the sequence of letters ‘THE NATURAL SNACK*’ and ‘CO’, which constitutes the entirety of the verbal element in the contested sign. They differ in the additional letters ‘ING’ at the end of the third word, the words ‘yum yum’ and ‘good’, and the figurative elements in the earlier mark, which have no counterparts in the contested sign, as well as in the graphical depiction of the elements included in both marks.

However, taking into account, on the one hand, the fact that the additional letters ‘ING’ are in the middle of the sequence of letters that the signs have in common and the lack of distinctiveness of the differing elements ‘yum yum’ and ‘good’, and, on the other hand, the fact that verbal components of the sign usually have a stronger impact on the consumer than any figurative components, these differences are of minor impact.

Consequently, the signs are visually similar to a low degree.

Aurally the pronunciation of the signs coincides in the sounds of the letters ‘THE NATURAL SNACK* CO’, present identically in both signs. They differ only in the additional letters ‘ING’ and the elements ‘yum yum’ and ‘good’ in the earlier mark, which have no counterparts in the contested sign. However, given their size and position among the figurative elements of the mark, the words ‘yum yum’ and ‘good’ are secondary elements and it is likely that they will not be pronounced by the relevant public (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SEc Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Burger, EU:T:2012:432, § 48).

Therefore, and given that some of the differing components are in the middle of a long sign and others are non-distinctive, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as alluding to non-artificial foodstuffs designed to be eaten as snacks, and differ only in less distinctive and secondary elements (e.g. the figurative elements in the earlier mark), the signs are conceptually highly similar.

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

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 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 and weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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 goods are partly similar to various degrees, and partly dissimilar. The degree of attention of the public is lower than average, and the earlier mark’s level of distinctiveness is normal.

Considered overall, the signs are visually similar to a low degree, but aurally and conceptually highly similar, on account of the coinciding element ‘THE NATURAL SNACK’. The most notable differences between the signs are confined to non-distinctive or secondary elements, as detailed in section c) of this decision. Consequently, these are insufficient to counteract the similarities between them and allow the consumer to safely distinguish between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the European Union trade mark registration No 12 400 453 . As stated above in section c) 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Julie, Marie-charlotte HAMEL

Marine DARTEYRE

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.