OPPOSITION No B 2 700 956

Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (opponent), represented by Harmsen Utescher und Partner Anwaltssozietät, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

UAB ‘Grainmore’, Placioji g. 27, 21146 Senuju Traku k. Traku r. sav, Lithuania (applicant) represented by Aldona Pacevičienė, A. Mickevičiaus g. 29-6, 44245 Kaunas, Lithuania (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 700 956 is partially upheld, namely for the following contested goods:

Class 29: Nut-based food bars; Nuts, prepared; Spiced nuts; Roasted nuts; Organic nut and seed-based snack bars; Nut and seed-based snack bars.

Class 30: Goods made thereof (Processed grains, starches), baking preparations ; Flapjacks; Candy coated popcorn; Vegetable flavoured corn chips; Chips [cereal products]; Crisps made of cereals; Cereal-based snack food; Caramel coated popcorn with candied nuts; Caramel coated popcorn; Crackers made of prepared cereals; Chocolate-based ready-to-eat food bars; Grain-based chips; Snack food products consisting of cereal products; Snack food products made from cereal starch; Snack food products made from cereal flour; Snack food products made from maize flour; Snack food products made from rusk flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods made from corn and in the form of puffs; Snacks manufactured from muesli; Snack foods prepared from maize; Snack foods made from corn and in the form of rings; Snack foods made from wheat; Snack foods made of whole wheat; Wholewheat crisps.

2. European Union trade mark application No 15 063 308 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 some of the goods of European Union trade mark application No 15 063 308, namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 14 948 616. 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 14 948 616.

1. The goods

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

Class 30: Bread and bread products; Pastry and confectionery; Sweets; Chocolate and chocolate products; Pralines; Candy; Sweetmeats [candy]; Chocolate bars; Decorations [edible] for Christmas trees.

The contested goods are the following:

Class 29: Instant soup; Nut-based food bars; Nuts, prepared; Spiced nuts; Roasted nuts; Organic nut and seed-based snack bars; Nut and seed-based snack bars.

Class 30: Processed grains, starches, and goods made thereof, baking preparations and yeasts; Flapjacks; Candy coated popcorn; Vegetable flavoured corn chips; Risotto; Chips [cereal products]; Crisps made of cereals; Cereal-based snack food; Caramel coated popcorn with candied nuts; Caramel coated popcorn; Crackers made of prepared cereals; Chocolate-based ready-to-eat food bars; Grain-based chips; Snack food products consisting of cereal products; Snack food products made from cereal starch; Snack food products made from cereal flour; Snack food products made from maize flour; Snack food products made from rusk flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods made from corn and in the form of puffs; Snacks manufactured from muesli; Snack foods prepared from maize; Snack foods made from corn and in the form of rings; Snack foods made from wheat; Snack foods made of whole wheat; Meals consisting primarily of pasta; Ready-made dishes containing pasta; Wholewheat crisps.

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

The contested goods in Class 29 can be divided into two groups, namely instant soup on the one hand and nut-based food bars; nuts, prepared; spiced nuts; roasted nuts; organic nut and seed-based snack bars; nut and seed-based snack bars on the other hand.

The contested nut-based food bars; nuts, prepared; spiced nuts; roasted nuts; organic nut and seed-based snack bars; nut and seed-based snack bars are similar to the opponent’s chocolate bars. Indeed, as stated by the opponent, they have the same nature, that of snack foods (in some cases, in the form of a bar), and purpose, that of satisfying hunger pangs between meals. Moreover, they have the same end users and are interchangeable and consequently in competition.

By contrast, the contested instant soup has nothing in common with the opponent’s bread and bread products; pastry and confectionery; sweets; chocolate and chocolate products; pralines; candy; sweetmeats [candy]; chocolate bars; decorations [edible] for Christmas trees except the fact that they fall within the broad category of foodstuffs, which, contrary to the opponent’s argument, is not sufficient for a finding of similarity between these goods. Likewise, the mere fact that they might target the same consumers is not decisive, as they differ in all remaining factors, namely usual producer, distribution channels and sales outlets/shelves in general outlets’. Their methods of use are different and they are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 30

The contested goods made of processed grains, starches are, like the opponent’s goods, finished products. In particular, goods made of processed grains correspond to a wide variety of goods containing wheat, rice, oats or other cereals; an example thereof would be white bread. As the earlier mark is registered for bread, these two sets of goods overlap and therefore have to be considered identical. On the other hand, goods made of starches include goods such as wholegrain bread, cereals, cakes and cookies. Bearing in mind that the earlier mark is registered for, inter alia, bread and bread products; pastry and confectionery; sweets, it is clear that these two sets of goods overlap and therefore are identical.

The contested flapjacks are included in the opponent’s broad category of confectionery, to which they are therefore identical. Moreover, the contested chocolate-based ready-to-eat food bars and the opponent’s chocolate bars are synonymous and therefore identical.

The contested baking preparations include, inter alia, mixtures for making bread, pastries or cakes. Taking this into account, it is considered that, although they differ in nature (semi-finished versus finished products) from the opponent’s bread and bread products; pastry, they nevertheless serve the same purpose, since they are used for making such products, and they target the same public. As a result, they will be perceived by some consumers as substitutable and, consequently, in competition. Therefore, they are similar.

The contested candy coated popcorn; caramel coated popcorn with candied nuts; caramel coated popcorn may coincide in producers, end users and distribution channels with the confectionery covered by the earlier mark. Furthermore, they are in competition. Therefore, they are similar to each other.

The contested cereal-based snack food; snack food products consisting of cereal products; snack food products made from cereal starch; snack food products made from cereal flour; snack food products made from maize flour; snack food products made from rusk flour; snack food products made from rice flour; snack food products made from soya flour; snack foods made from corn and in the form of puffs; snacks manufactured from muesli; snack foods prepared from maize; snack foods made from corn and in the form of rings; snack foods made from wheat; snack foods made of whole wheat all have the same nature as the opponent’s chocolate bars, being snack foods. As a result, they also have the same purpose, namely, that of satisfying hunger pangs between meals. Moreover, they also have the same usual producers and end users, and are interchangeable and consequently in competition. Therefore, they are similar.

The various chips, crackers and crisps for which registration is sought, namely vegetable flavoured corn chips; chips [cereal products]; crisps made of cereals; crackers made of prepared cereals; grain-based chips; wholewheat crisps, are also similar to the opponent’s chocolate bars. In particular, they have the same purpose, that of satisfying hunger pangs between meals. Moreover, they also have the same usual producers and end users, and are interchangeable and consequently in competition. Therefore, they are similar.

The contested yeasts are dissimilar to the opponent’s bread and bread products; pastry and confectionery; sweets; chocolate and chocolate products; pralines; candy; sweetmeats [candy]; chocolate bars; decorations [edible] for Christmas trees in the same class. They do not have the same nature (raw or semi-finished products versus finished products), they do not serve the same purpose, they are not distributed through the same channels and they are not found in the same shelves in general outlets. Their producers and methods of use also differ and they are neither in competition with each other nor complementary to each other.

Similarly, the contested processed grains, starches are dissimilar to the opponent’s goods. Indeed, starch is a thickening and stiffening agent for culinary purposes and processed grains are grains that have been milled to remove the bran and the germ. Even though the use of the contested goods by average consumers cannot be excluded and they can be found in supermarkets, they have a very specific purpose and a different commercial origin, and in principle target specialised consumers, so they are considered dissimilar to the opponent’s goods in Class 30.

Likewise, the contested risotto; meals consisting primarily of pasta; ready-made dishes containing pasta are dissimilar to the opponent’s goods. While these contested goods are proper meals, as explained above the opponent’s goods consist of bread and bread products, snacks and sweetmeats, but do not include any proper meals. Therefore, they differ in nature. Moreover, they do not serve the same purpose, they are not distributed through the same channels and they are not found on the same shelves in general outlets. Their producers and methods of use also differ and they are neither in competition with each other nor complementary to each other.

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 in the European Union. They consist of foodstuffs that are purchased on a daily basis at a relatively low price. The degree of attention may thus vary from low to average (see, to this effect, 12/04/2016, T‑361/15, Choice chocolate & ice cream, EU:T:2016:214, § 17-18; and 26/04/2016, T‑21/15, Dino, EU:T:2016:241, § 20).

3. The signs

FAVORINA
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 earlier mark is a word mark consisting of the single element ‘FAVORINA’, which has no meaning for the relevant public and, consequently, is distinctive. It has no element that could be considered more distinctive or dominant (visually eye-catching) than others.

The contested sign is a figurative mark consisting of the word ‘FLAVORINA’ written in a lower case and slightly stylised bold orange typeface. Moreover, it must be noted that the dot on the ‘I’ is replaced by the representation of a spoon in red. The word element ‘FLAVORINA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. It is considered that the element ‘FLAVORINA’ is more distinctive than the graphical representation in which it is depicted. In particular, the spoon replacing the dot of the letter ‘I’ has a limited distinctive character in relation to foodstuffs as it represents a cutlery that might be used to eat them.

Having regard to the respective size and position of these two elements, it is considered that the word element ‘FLAVORINA’ is more dominant (visually eye-catching) than the representation of the spoon, which occupies a secondary position within the contested sign.

Visually, the signs coincide in ‘F*AVORINA’. However, they differ in the second letter, ‘L’, of the contested sign and in the graphical representation of the contested sign’s word element, which have no counterpart in the earlier mark, as well as in the depiction of a spoon.

In that connection, it must be recalled that, according to settled case-law, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Taking into account that, moreover, all the letters of which the earlier mark consists are included in the contested sign’s most dominant element in the same order, and bearing in mind the decorative purpose of the contested sign’s figurative elements and also the limited distinctive character of the spoon, it is considered that the signs are visually highly similar.

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 ‘F*AVORINA’. It differs in the sound of the additional ‘L’ of the contested sign, which has no counterpart in the earlier mark.

In spite of this addition, the marks have the same number of syllables and, consequently, the same rhythm. Moreover, taking account of its position within the contested sign, the Opposition Division considers that the additional letter could go unnoticed when pronounced by a significant part of the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs’ word elements has a meaning for the public in the relevant territory, so they do not convey any concept. Besides, although, as observed above, the contested sign conveys the concept of a spoon, which has no counterpart in the earlier mark, owing to its decorative purpose and limited distinctiveness, it will not be given any trade mark significance. Since it has no impact on the public’s perception, the concept conveyed by such element will not have the effect of allowing the public to distinguish the signs from a conceptual point of view. As a result, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 the present case, the goods are partly identical, partly similar and partly dissimilar.

For the contested goods that were found identical or similar to the goods for which the earlier mark is registered, there is a likelihood of confusion because the differences between the signs are confined to the additional letter ‘L’ and to less distinctive elements and aspects of the contested sign that have no counterparts in the earlier mark.

Taking due account, in particular, 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), and that the goods themselves are fairly ordinary consumer products, in the purchase of which the average consumer will not display a high degree of attention, it is the opinion of the Opposition Division that they might overlook the fact that the earlier mark does not include the additional ‘L’.

In light of the above and bearing in mind that the earlier mark is a word mark that enjoys an average degree of distinctiveness, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public of the European Union for the contested goods which were found identical or similar to the goods covered by the earlier mark.

As the similarity of the goods and services is one of the conditions for a finding of likelihood of confusion in the meaning of Article 8(1)(b) EUTMR, there can be no likelihood of confusion between the earlier mark and the contested sign either for the contested instant soups in Class 29 or for processed grains, starches; yeasts; risotto; meals consisting primarily of pasta and ready-made dishes containing pasta in Class 30, for which registration is sought.

The opponent has also based its opposition on earlier European Union trade mark registration No 13 452 371 for the figurative mark registered for bread and bread goods, pastry and confectionery, sweets, chocolate, chocolate goods, pralines in Class 30. Since this mark covers a narrower scope of goods, the outcome cannot be different as regards the existence of a likelihood of confusion between the contested sign and earlier European Union trade mark registration No 13 452 371 for the goods found to be dissimilar. Therefore, no likelihood of confusion exists with respect to those goods.

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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

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.