OPPOSITION No B 2 590 720

ITM Entreprises (Société par Actions Simpilifée), 24, rue Auguste Chabrières, 75015 Paris, France (opponent), represented by Cabinet Netter, 36, avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

Moray fish internacional S.A., Transversal, 6 Parcelas 12-16 Mercabarna, 08040 Barcelona, Spain (applicant), represented by Olten patentes y marcas, C/Entença 332-334, 08029 Barcelona, Spain (professional representative).

On 03/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 590 720 is upheld for all the contested goods and services, namely:

Class 29: Meat, fish, poultry and game; meat extracts.

Class 43: Services for providing food and drink.

2. European Union trade mark application No 14 226 716 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 226 716, namely against some of the goods in Class 29 and some of the services in Class 43. The opposition is based on, inter alia, French trade mark registration No 113 849 925. 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.

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 French trade mark registration No 113 849 925.

1. The goods and services

The goods on which the opposition is based are, among others, the following:

Class 29: Fish.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; meat extracts.

Class 43: Services for providing food and drink.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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

Fish is listed in both specifications in exactly the same terms. The goods are identical.

The contested meat, poultry and game; meat extracts are similar to the opponent’s fish as they coincide in their method of use and end users. Furthermore, they are in competition.

Contested services in Class 43

As to the comparison of the contested services with the opponent’s goods it is to be noted that some fishmongers offer their customers a selection of fish and seafood to take away or to be cooked and eaten on the premises (in an adjoining restaurant). Even though the comparison is between services on the one hand and goods on the other, the different nature and objectives of those goods and services cannot counteract the similarity which exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services (12/12/2014, T‑405/13, da rosa, EU:T:2014:1072, § 97).

It is, therefore, considered that there exists a low level of similarity between the contested services for providing food and drink and the opponent’s fish.

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 identical and similar and the services found similar to a low degree to the opponent’s goods are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ODYSSEE
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is a word mark that will be perceived by the relevant consumer with the meaning of a long eventful journey and/or the famous Greek epic poem by Homer.

The contested sign is a figurative mark comprising the verbal element ‘ODISSEA’ in white placed on a black background. Although it is a misspelling of the word ‘ODYSSEE’ it will still be perceived with the same meaning since it is not uncommon for the letters ‘Y’ and ‘I’ to be misspelled in French. The difference in the last letter ‘A’ is also not enough to preclude the perception of the consumer of the verbal element of the contested sign with the meaning described above.

Bearing in mind the perception of the meaning of the verbal element of the contested sign it is likely that the figurative element will be perceived by the average consumer as alluding to an ancient ship or sea waves or both. The possible perception of the background as a coat of arms as suggested by the applicant is less likely since it is rather unusual as compared to the common background of coats of arms normally resembling a shield.

Both marks have no elements that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs coincide in the letters ‘OD*SSE*’ and differ in the letters ‘Y’ of the earlier versus ‘I’ of the contested sign placed at the same third position and the letters ‘E’ of the earlier versus ‘A’ of the contested sign, again placed at the same position as the verbal elements’ last letters. The signs differ further in the slight stylisation of the typescript of the verbal element of the contested sign and the figurative element as described above, which has no counterpart in the earlier mark.

With regard to the latter difference it is to be noted 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The signs are visually similar to an average degree.

Aurally, the earlier mark will be pronounced in three syllables, namely as: /O-DI-SE/ while the contested sign will be pronounced in four syllables, namely: /O-DI-SE-A/. The pronunciation of the signs coincides in the syllables /O-DI-SE/, that is the entire earlier mark is phonetically included in the contested sign. The signs only differ in the last letter/syllable /A/ of the contested sign, which placed at the end of the word does not result in a major aural difference.

All in all the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the verbal elements of both marks with the meaning explained above. The concept of the figurative element of the contested sign as an allusion to an ancient ship or sea waves or both suggested by the verbal element adds to the concept of the verbal element and prevents a finding of conceptual identity. The signs are, nevertheless, 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.

5. Global assessment, other arguments and conclusion

The goods are identical or similar. The contested services have been found similar to a low degree to the opponent’s goods.

The signs have been found visually similar, aurally and conceptually similar to a high degree on account of the similarities established between the earlier mark and the verbal element of the contested sign.

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).

Bearing in mind also the average distinctiveness of the earlier mark the Opposition Division finds that the differences between the marks as established above are not enough to counteract the similarities between them. Given the identity/similarity established between the relevant goods, there is a likelihood of confusion.

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).

In light of the above principle and taking into account the high level of aural and conceptual similarity between the signs the finding of likelihood of confusion is valid also for the contested services found similar only to a low degree to the opponent’s goods.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 113 849 925. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right French trade mark registration No 113 849 925 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Ferenc GAZDA

Plamen IVANOV

Sigrid DICKMANNS

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.