OPPOSITION No B 2 641 515

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Fimaro Distribution Sp. z o.o., ul. Podleśna 48/18, 01673 Warsaw, Poland (applicant), represented by Tomasz Jarosław Słowikowski, Warszawska 60a/13, 59-900 Zgorzelec, Poland (professional representative).

On 31/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 641 515 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 397 211. The opposition is based on European Union trade mark registration No 7 590 474 and International trade mark registration No 1 069 369 designating the European Union.  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 European Union trade mark registration No 7 590 474.

1. The goods and services

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

Class 29: Preserved, dried and cooked fruits and vegetables; jellies; jams; compotes; milk and milk products; mixed milk beverages (milk predominating);desserts, and prepared and semi-prepared meals of all kinds, included in class 29;soya products, included in class 29;sour milk products, yoghurt products, cream products, kefir products, buttermilk products, whey products, quark products, including all the aforesaid goods being milk products (milk predominating);desserts, mainly of milk and/or the aforesaid milk products, with added fruit preparations and/or fresh fruits and/or flavouring additives and/or flavourings and/or chocolate; all the aforesaid goods included in class 29, where possible also in preserved, chilled or frozen form and/or in instant form.

Class 30: Coffee and artificial coffee; tea; cocoa; drinking chocolate; Pastries and cookies; chocolate and chocolate products; confectionery products; preparations made from cereals; muesli; flour, wheat (processex), corn, rice, tapioca, sago, oats, semolina, wholemeal (processed); and bran (processed), all the aforesaid goods being preparations; honey; desserts, and prepared and semi-prepared meals of all kinds, included in class 30;soya products, included in class 30; jelly, sweet groats; prepared desserts, including blancmanges, mousses, semolina and farinaceous foods, including with added fruit preparations and/or fresh fruits and/or flavouring additives and/or flavourings and/or chocolate; edible ices; and ice-creams; water ices (ices); frozen yogurt (confectionery ices); flavoured ices; sorbet (ice);sweet sauces and sauce preparations (sweet); dips; all the aforesaid goods included in class 30, where possible also in powdered, preserved, cooled or frozen form and/or in instant form.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 29: Preserved, dried and cooked fruits and vegetables, frozen fruits and vegetables; preserved fruits, preserved vegetables, jams, preserved foods, marmalade, fruit mousses, pureed fruit and vegetable.

Class 32: Non-alcoholic beverages, fruit drinks, concentrated fruit juices, fruit-vegetable juice, fruit nectars, non-alcoholic fruit extracts, syrups for beverages, non-alcoholic fruit extracts for beverages, essences for making beverages, cocktails, non-alcoholic, beverages enriched with vitamins, isotonic drinks; mineral water, spring water, aerated water, water for beverages; Beers.

Class 35: Import-export agencies, commercial brokerage for national and international businesses; wholesaling, retailing, and sale via agents and via the internet of the following goods: non-alcoholic beverages, fruit beverages, fruit and vegetable juices, fruit nectars, beverages enriched with vitamins, isotonic beverages, mineral water, spring water, aerated water, beers, fruits and vegetables, fruit and vegetable preserves, jams, conserves, marmalade, fruit mousses, fruit and vegetable purees; marketing services; advertising, dissemination of advertising matter, samples and product designs; arranging of shows, exhibitions and trade fairs for commercial and promotional purposes.

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

Preserved, dried and cooked fruits and vegetables, preserved fruits, preserved vegetables, jams identically appear on both lists of goods.

Preserved foods, pureed fruit and vegetable fall into the broad category of the opponent’s prepared and semi-prepared meals of all kinds, included in class 29. They are identical.

Frozen fruits and vegetables overlap with the opponent’s preserved, dried and cooked fruits and vegetables, […] all the aforesaid goods included in class 29, where possible also in preserved, chilled or frozen form and/or in instant form. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Fruit mousses fall into the broad category of the opponent’s desserts. They are identical.

Marmalade is also included in the broad category of the opponent’s preserved fruit. They are identical.

Contested goods in Class 32

Non-alcoholic beverages, fruit drinks, mineral water, aerated water, beers identically appear on both lists of goods (including synonyms).

Concentrated fruit juices, fruit-vegetable juice, fruit nectars fall into the broad category of the opponent’s fruit drinks and fruit juices. They are identical.

Non-alcoholic fruit extracts, syrups for beverages, non-alcoholic fruit extracts for beverages, essences for making beverages fall into the broad category of the opponent’s syrups and other preparations for making beverages. They are identical.

Cocktails, non-alcoholic, beverages enriched with vitamins, isotonic drinks; spring water, water for beverages fall into the broad category of the opponent’s other non-alcoholic drinks and therefore are identical.

Consequently, all the goods in Classes 29 and 32 are identical.

Contested services in Class 35

As for the contested wholesaling, retailing, and sale via agents and via the internet of the following goods: non-alcoholic beverages, fruit beverages, fruit and vegetable juices, fruit nectars, beverages enriched with vitamins, isotonic beverages, mineral water, spring water, aerated water, beers, fruits and vegetables, fruit and vegetable preserves, jams, conserves, marmalade, fruit mousses, fruit and vegetable purees, it should be borne in mind that retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33).

From the above comparison in Classes 29 and 32 it is clear that the signs cover identical goods. The wholesaling and retailing of these goods is, consequently, similar to a low degree to the goods of the earlier mark in Classes 29 and 32 compared above.

However, no link can be established between the opponent’s goods and the contested services import-export agencies, commercial brokerage for national and international businesses; marketing services; advertising, dissemination of advertising matter, samples and product designs; arranging of shows, exhibitions and trade fairs for commercial and promotional purposes.

These contested services have nothing in common with the food items and beverages of the opponent in Classes 29, 30 and 32, given that services are intangible whereas goods are tangible and thus fundamentally different in nature. The goods and services differ in their nature, method of use and purpose, they are neither complementary nor in competition. The goods and services are, therefore, dissimilar.

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 and services found to be identical or lowly similar, foodstuff, beverages, and their retail, are directed at the public at large. The degree of attention is average.

3. The signs

HAPPY SELECTION	HAPPY SMOOTHIES FIMARO
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).

Both signs are word marks: the earlier mark is “HAPPY SELECTION” and the contested mark is “HAPPY SMOOTHIES FIMARO”.

Contrary to the opponent’s argument, the word “HAPPY”, present in both signs, is a basic English word which will be understood throughout the relevant territory as referring to feeling or showing pleasure or contentment. This is because expressions like “HAPPY BIRTHDAY” and “HAPPY END” will be familiar for consumers throughout the relevant territory regardless of their knowledge of the English language. When used in connection with any goods, the adjective ‘happy’ is suggestive of pleasure, satisfaction. Therefore the word is not particularly distinctive to designate goods such as food or beverages, which are generally consumed for the purpose of satisfying hunger, thirst.

The earlier mark, “HAPPY SELECTION”, in English refers to the feeling of pleasure with the range of choices offered or with a particular choice. In the context of food items and drinks, this expression alludes to the satisfaction brought by choosing a particular product, or implies that the packaging contains a selection of food items, for instance a variety of snacks, which the consumer will be content with. Therefore, the distinctiveness of the earlier mark is lower than average for the part of the relevant public which understands this English expression.

As for the contested sign, part of the public will also understand the English term “SMOOTHIES” referring to thick drinks made from fruit crushed in a machine, sometimes with yogurt or ice cream added. For this part of the public, given that fruits and vegetables or non-alcoholic drinks can be used as ingredients to make smoothies, the distinctiveness of this element is rather low for these goods or the associated services. For the other part of the public this term will be meaningless.

“FIMARO” has no meaning in the relevant territory. Contrary to the opponent’s argument, it is very unlikely that the relevant public would identify this term with a company name to the extent that it would affect its distinctive character. Therefore, this is the most distinctive element of the contested mark.

Visually, the signs coincide in “HAPPY”. They differ in the word “SELECTION” of the earlier sign and the words “SMOOTHIES” and “FIMARO” of the contested sign.

Even bearing in mind the low distinctive character of the word “SMOOTHIES” for part of the relevant public, the signs coincide in one word out of two of the earlier sign and three of the contested sign, moreover this coincidence lies in a word, “HAPPY”, which is not particularly distinctive.

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

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 “HAPPY”, present identically in both signs, although this element is not particularly distinctive. The pronunciation differs in the sound of the letters “SELECTION” in the earlier sign and “SMOOTHIES FIMARO” in the contested mark.

Even bearing in mind the low distinctive character of the word “SMOOTHIES” for part of the relevant public, the contested sign has different length, being composed of three words in contrast with two words in the contested sign.

Therefore, the signs differ in rhythm and intonation, and are aurally similar to a low degree.

Conceptually, the signs will share a conceptual link as far as “HAPPY” is concerned. However, given the lower distinctive character of “HAPPY” this link is less relevant, especially for the part of the public perceiving distinct concepts in the English terms “SELECTION” and “SMOOTHIES”.

Therefore, the signs are conceptually similar to a low degree.

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.

For the part of the relevant public which understands the English expression “HAPPY SELECTION”, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods in question.

In the rest of the relevant territory, the distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence of the element “HAPPY”, which has lower than average distinctive character.

5. Global assessment, other arguments and conclusion

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’ (11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

In the present case, for part of the relevant public the earlier mark “HAPPY SELECTION” will have a clear meaning and a less than average distinctive character. Given the lower distinctive character of “HAPPY”, “HAPPY SELECTION” and “SMOOTHIES”, these consumers will focus on the contested sign’s most distinctive, differing element, “FIMARO” and thus can easily make a distinction between the signs.

For the rest of the relevant public, the coincidence between the signs is placed in an element, “HAPPY”, which is not particularly distinctive. The signs will contain additional, more distinctive elements, such as “SELECTION”, “FIMARO”, even “SMOOTHIES” for those who find it meaningless, which will enable the reasonably well informed and reasonably observant and circumspect relevant public to safely distinguish even the identical goods of the two different undertakings.

This finding particularly holds true for the lowly similar services. For the dissimilar services, one of the requirements of Article 8(1)(b) is not met as the similarity of goods and services is sine qua non for there to exist likelihood of confusion.

The opponent refers to previous national decisions from Poland and Germany to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since they concerned different goods, i.e. cosmetics and clothing, moreover in one case the earlier sign was “HAPPY DAYS”.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on one other earlier trade mark. The other earlier right invoked by the opponent, International trade mark registration No 1 069 369 designating the European Union is less similar to the contested mark. This is because it contains further figurative elements such as a rectangular device with an element resembling the letter “K” and the word “Classic”, which are not present in the contested trade mark. Moreover, it covers the same scope of goods. Therefore, the outcome cannot be different upon examination of that earlier right.

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.

The Opposition Division

Erkki Münter

Marianna KONDAS

Begoña URIARTE VALIENTE

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.