OPPOSITION No B 2 562 950

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft MBB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

E-planta ek för, Knut Påls väg 5, 256 69 Helsingborg, Sweden (applicant).

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

DECISION:

1. Opposition No B 2 562 950 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 186 308 for the word mark ‘Gracil’. The opposition is based on European Union trade mark registration No 3 071 594 for the word mark ‘Grazil’. 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 29: Milk and milk products, namely butter, cheese, curd cheese, cream, single cream, sour cream, condensed milk, yoghurt, buttermilk, kefir, powdered milk for food, milk free from alcohol and mixed milk drinks with milk predominating, muesli preparations, mainly consisting of sour cream, buttermilk, sour milk, yoghurt, kefir, quark, prepared fruits and cereals, prepared desserts made from yoghurt, quark and cream, including prepared desserts with added herbs and/or prepared fruits.

Class 30: Rice pudding, semolina.

Class 32: Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices.

Following the clarification of the specification of the goods by the applicant on 17/08/2015, the contested goods are the following:

Class 31: Plants; flowering plants.

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.

The opponent’s goods in Classes 29 and 30 are processed foodstuffs deriving from milk and prepared foodstuffs from cereals, rice or fruits whereas the ones in Class 32 are all sorts of non-alcoholic drinks and beverages. The opponent claims that some goods in Class 29, such as milk or yoghurt, include or can be prepared using ‘plant milk’ stemming from plants such as soy or rice. As a consequence, the opponent considers that the goods at issue are similar.

Whichever the origin of the milk or yoghurt in Class 29, namely whether animal or vegetable, this does not change anything to the fact that these goods, as well as the remaining earlier goods in Classes 29, 30 and 32, are all goods that are somehow processed or prepared for human consumption, unlike the contested goods which are living organisms, and that, therefore, the goods in comparison differ clearly in nature, purpose, method of use, producers, distribution channels. Moreover, they are neither in competition nor are they complementary. Goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is clearly not the case with the goods at issue, even if some goods in Class 29, such as milk, include ‘plant milk’ stemming from plants. Indeed, it is to be noted that the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). In addition, were the contested goods to be used as ingredients for the production of the earlier goods, it is to be noted that ingredients used for the preparation of foodstuffs are a subcategory of raw materials and treated in the same way as raw material in general. Consequently, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). When the ingredient can be considered as being the main ingredient of the prepared foodstuff, a similarity will exist only if the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use. There is no complementarity in these cases simply because one ingredient is needed for the production/preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 11/12/2012, R 2571/2011-2, FRUITINI, § 18).

In view of the foregoing, the goods at issue are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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 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 Rule 94(7)(d)(ii) EUTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Martina GALLE

Begoña URIARTE VALIENTE

Catherine MEDINA

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.