OPPOSITION No B 2 671 157

Durmaz Zeytin Ve Gida Sanayii Genel Pazarlama Ticaret Anonim Sirketi, Iznik Yolu 2. Km Asil Celik Fabrikasi Karsisi-Orhangazi, Bursa, The Republic of Turkey (opponent), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Eda Quality Foods Ltd, Unit 1-8 Centenary Estate, London EN3 7UD, United Kingdom (applicant).

On 21/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 671 157 is partially upheld, namely for the following contested goods:

Class 29: Oils; processed fruits and vegetables (including nuts and pulses).

2. European Union trade mark application No 14 507 214 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 507 214. The opposition is based on European Union trade mark registration No 618 330. The opponent invoked Article 8(1)(b) and 8(3) 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

In 23/06/2016, 10606 C, CD DURMAZ, the Cancellation Division partially revoked the earlier mark with effect from 20/03/2015.

Therefore, the goods on which the opposition is based are the following:

Class 29: Canned or preserved fruit, namely olives; canned fruit, namely olives; olives; green and black olives.

The contested goods are the following:

Class 29: Birds eggs and egg products; Fish, seafood and molluscs; Dairy products and dairy substitutes; Oils and fats; Processed fruits, fungi and vegetables (including nuts and pulses).

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Moreover, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested processed fruits include, as a broader category, the opponent’s preserved fruit, namely olives. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested oils include, inter alia, olive oils. Although olive oils are mainly made from non-processed (i.e. fresh) olives, the contested goods might be manufactured by the same companies as the opponent’s green and black olives and they might target the same relevant public and be distributed through the same channels. Therefore, they are similar to a low degree.

The contested processed vegetables (including nuts and pulses) are, furthermore, similar to a low degree to the opponent’s preserved fruit, namely olives, since these goods target the same relevant public, have the same distribution channels and can be produced by the same companies.

The contested fungi (mushrooms) differ in nature, purpose and method of use from the opponent’s canned or preserved fruit, namely olives; canned fruit, namely olives; olives; green and black olives and are neither complementary nor in competition. Therefore, they are dissimilar.

The contested birds eggs and egg products; fish, seafood and molluscs; dairy products and dairy substitutes; fats are various consumer products, intended for either consumption or cooking. Although these goods might target the same relevant public as the opponent’s canned or preserved fruit, namely olives; canned fruit, namely olives; olives; green and black olives, they differ in nature, purpose and method of use and are neither complementary nor in competition. Moreover, they are normally not produced by the same companies. Therefore, they are 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 found to be identical or similar are directed at the public at large. The degree of attention is considered average.

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 conflicting signs are both figurative marks and are composed of the word element ‘DURMAZ’, which is rendered in black upper case letters in the earlier mark and in red upper case letters in the contested sign. The word element ‘DURMAZ’ does not have any known meaning in the European Union and will, therefore, be perceived as a fanciful and distinctive term by the relevant public.

Furthermore, the earlier mark contains a black and white device (reminiscent of a rosette) on the left, containing the letters ‘CD’. Although the device is distinctive, it is quite a small part of the mark (compared with the verbal element ‘DURMAZ’). Therefore, the Opposition Division finds that the letters ‘CD’ (within the device) are negligible and will be overlooked by a significant part of the relevant public. The contested sign also contains the word element ‘arnika’, placed above ‘DURMAZ’ in the same (albeit smaller) red font. The word ‘arnika’ will be perceived by parts of the relevant public as the plant arnica, which is known for its healing properties. However, the word does not have any meaning for the relevant goods and is therefore distinctive. Finally, the figurative depiction of a half-moon does not convey any meaning in relation to the relevant goods and is therefore distinctive.

The word element ‘DURMAZ’ will be perceived as the dominant element of the earlier mark because it is clearly more eye catching. In the contested sign, ‘DURMAZ’ and the half-moon are equally eye catching, whereas ‘arnika’ is less so.

Visually, the signs coincide in the distinctive word element ‘DURMAZ’. They differ in the distinctive word element ‘arnika’; however, since this element is less visually dominant in the sign, it has less impact on the visual comparison of the signs. The signs also differ in their figurative elements, which create some visual differences between them. However, the coinciding verbal element, ‘DURMAZ’, has a stronger impact on the consumer’s perception of the signs than their figurative components. 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). Since the letters ‘CD’ in the earlier mark will not be read (at least by the majority of the public), the Opposition Division finds the signs visually similar to an average degree overall.

Aurally, the earlier mark will be pronounced as ‘DURMAZ’, since the additional letters, ‘CD’, will be overlooked when pronouncing the sign (as stated above). Although the word ‘arnika’ is not negligible, due to its small size it may not be pronounced. However, even if the contested sign is pronounced in its entirety, that is, as ‘arnika DURMAZ’, and not merely as ‘DURMAZ’, the signs have the element ‘DURMAZ’ in common, and therefore they are at most aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the distinctive concept of a half-moon in the contested sign, and parts of the public will perceive the word element ‘arnika’ as the plant arnica in the same sign. The earlier mark contains a black and white device (reminiscent of a rosette). Therefore, the signs are conceptually not 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

In this case, the goods are identical and similar to a low degree. The signs differ in their additional figurative elements (i.e. the black and white device of the earlier mark and the half-moon of the contested sign) and in the additional verbal element ‘arnika’, which is less visually dominant, in the contested sign. Moreover, the signs are conceptually not similar. However, the signs have the distinctive and (in the earlier mark) dominant element ‘DURMAZ’ in common, which is the only verbal element that will be read and pronounced in the earlier mark, since the letters ‘CD’ are negligible (as explained above in section c) of this decision). This makes the signs visually similar and aurally (at most) similar, as a whole. Moreover, 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). Consequently, the public in the relevant territory is likely to think that the goods in question, if they bear the marks at issue, come from the same undertaking or, as the case may be, economically linked undertakings. The similarity between the signs is such that it is also likely to lead consumers to confuse them even in relation to the goods found to be similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

• the signs are identical or only differ in elements which do not substantially affect their distinctiveness;

• the goods and services are identical or equivalent in commercial terms;

• the applicant is an agent or representative of the owner of the earlier mark;

• the application was filed without the consent of the owner of the earlier mark;

• the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

1. The goods

The opposition has been upheld on the basis of Article 8(1)(b) EUTMR for the goods found to be identical or similar to a low degree; therefore, examination of them under the ground of Article 8(3) EUTMR is not necessary.

The opposition has not been found successful for the dissimilar goods, notably:

Class 29: Birds eggs and egg products; fish, seafood and molluscs; dairy products and dairy substitutes; fats; fungi.

Article 8(3) EUTMR must be applied not only where the respective marks are identical, but also:

when the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow ‘guaranteed’ by the opponent, and which it would have been reasonable for the opponent to market in view of the goods and services protected under the earlier mark. If the goods or services, however, are not identical or similar or equivalent, Article 8(3) EUTMR does not apply (17/02/2014, R 407/2013-4, WOUXUN / WOUXUN).

Therefore, it remains to be examined whether the goods that have been found to be dissimilar could be ‘closely related or equivalent in commercial terms’ to the opponent’s goods, namely:

Class 29: Canned or preserved fruit, namely olives; canned fruit, namely olives; olives; green and black olives.

Goods and services are equivalent in commercial terms if, inter alia, they can generally be expected to be offered by the same undertaking.

The earlier mark covers goods in Class 29 that are, in essence, preserved olives of all kinds (e.g. in a jar).

The remaining contested goods include, in general, consumer products found in grocery stores, such as egg products, fish products and dairy products. As stated in section c) of this decision, these goods might target the same relevant public as the opponent’s goods. However, these goods cannot be expected to be offered by the same undertakings, since they have different natures and methods of use and serve different purposes from those of the opponent’s goods. Finally, they are neither complementary nor in competition.

Consequently, the remaining contested goods are neither identical nor equivalent in commercial terms to the opponent’s goods.

As one of the necessary requirements is not met, the opposition is not well founded under Article 8(3) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Adriana VAN ROODEN

Christian RUUD

Pedro JURADO MONTEJANO

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.