OPPOSITION No B 2 785 700

General Markets Food Ibérica, S.A.U., Polígon Empordà Internacional, Calle Germans Miquel, s/n, 17469 Vilamalla (Gerona), Spain (opponent), represented by Baker & McKenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034 Barcelona, Spain (professional representative)

a g a i n s t

Mytilos IKE, Poliviou 18 & Kapodistriou, 55132 Thessaloniki, Greece (applicant), represented by Marios Zachos, Leoforos Nikis 3, 54624 Thessaloniki, Greece (professional representative).

On 28/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 785 700 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 538 614 for the figurative mark , namely against all the goods in Class 29. The opposition is based on Spanish trade mark registration No 2 874 221 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods

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

Class 29: Meat, fish, poultry and game, meat extracts; fruits, pulses, vegetables, canned meat and fish, dried and cooked, jams, jellies and marmalades, eggs, milk and other dairy products, edible oils and fats, prepared dishes based on meat, fish or vegetables.

The contested goods are the following:

Class 29: Salted fish; Toasted laver; Frozen pre-packaged entrees consisting primarily of seafood; Pre-packaged dinners consisting primarily of seafood; Fish in olive oil; Chilled meals made from fish; Chilled foods consisting predominately of fish; Fish and seafood spreads; Crab roe paste; Fish eggs for human consumption; Spiny lobsters; Spiny lobsters, not live; Lobsters, not live; Salt-fermented sea urchin roe; Processed seafood; Processed fish products for human consumption; Seafood [not live]; Crab; Crabs [not live]; Squid [prepared]; Crayfish, not live; Frozen shellfish; Mussels, not live; Non-living molluscs; Shellfish, not live; Oysters, not live; Blue mussels [not live]; Seafood products; Fish products being frozen; Caviar.

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 salted fish and fish in olive oil are included in the broad category of the opponent’s fish. Therefore, they are identical.

The contested chilled meals made from fish; chilled foods consisting predominately of fish; processed fish products for human consumption and fish products being frozen are included in the broad category of, or overlap with, the opponent’s prepared dishes based on fish. Therefore, they are identical.

The contested spiny lobsters; spiny lobsters, not live; lobsters, not live; salt-fermented sea urchin roe; seafood [not live]; crab; crabs [not live]; crayfish, not live; frozen shellfish; mussels, not live; non-living molluscs; shellfish, not live; oysters, not live and blue mussels [not live] are different kinds of foodstuffs obtained from the sea. These goods and the opponent´s fish are at least similar because they share the same nature, purpose (they are all intended for human consumption), are in competition with each other and coincide in their pertinent distribution channels and origin.

The contested toasted laver; frozen pre-packaged entrees consisting primarily of seafood; pre-packaged dinners consisting primarily of seafood; fish and seafood spreads; crab roe paste; processed seafood; squid [prepared] and seafood products are different kinds of products derived from the sea which have undergone some kind of processing. These goods and the opponent´s prepared dishes based on fish are considered to be similar as they have a similar nature and coincide in method of use. Furthermore, the goods target the same public through the same distribution channels and are often in competition.

The remaining contested fish eggs for human consumption and caviar are similar to at least a low degree to the opponent´s fish since the goods under comparison have the same commercial origin, can be distributed through the same channels in trade and target the same public.

b) 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 (to varying degrees) are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 comprises the single word ‘GOURMET’ combined with figurative elements.

The verbal element ‘Gourmet’, contained also in the contested sign, refers to a connoisseur of food and drink or, more broadly, to a refined taste and culinary excellence (see Diccionario de la lengua Española, Real Academia Española online). This word is widely used by the food and drink industry to refer to high quality food and drinks but can also relate to high-class restaurants or food stores providing refined ingredients. Bearing in mind the relevant goods in Class 29, the distinctiveness of this element must be seen as very limited (24/02/2015, R 314/2014-4, Gourmet/Gourmet, § 37; 28/01/2015, R 615/2013-4, Mediterranean Gourmet/Gourmet, § 47; 28/07/2011, R 1946/2010-1, Club Gourmet/Club Del Gourmet En El Corte Ingles, § 39-40, confirmed by the GC in T-571/11, etc.).

The figurative elements in the earlier mark are limited to fairly standard white title case letters set against a red background at the bottom of which is a wavy type of pattern in yellow and green. In the Opposition Division’s view, the figurative elements of the mark are rather common and so they have a decorative character and must be consequently seen as being of secondary importance in relation to the word element (despite the limited distinctiveness of the latter).

The contested sign is a complex figurative mark comprising the verbal elements ‘AEGEAN GOURMET’ arranged within two crossing ellipse-like devices with wavy lines depicted in the centre. The Opposition Division takes note of the applicant’s argument that the figurative elements of the contested sign create ‘a truly unique design that verges to a fish and an open shell fish at the same time’ but finds such an imaginative association far-fetched and considers that it is more likely that the relevant public perceives the figurative elements as having a rather decorative function of bringing forward the verbal elements to the attention of the public. In this regard, the Opposition Division points out that the intention behind the creation of a trade mark has no impact on the perception of the relevant public and, therefore, this argument is to be set aside.

The opponent maintains that the element ‘AEGEAN’ would be a purely descriptive element of the geographical origin of the products, the area of the Aegean Sea or islands. The Opposition Division deems it necessary to recall that the relevant territory in the present case is Spain and thus the distinctiveness of the elements of the conflicting marks needs to be assessed against the perception of the Spanish public. In this respect, the Court has observed that the degree of familiarity of the Spanish public with the English language is generally low (18/04/2007, T 333/04 & T 334/04, House of Donuts, EU:T:2007:105, § 53 and the case-law cited). Taking into account that the English word ‘AEGEAN’ cannot be considered to form part of the basic English vocabulary, as well as that the national equivalent of the word (‘Egeo’) is not particularly close to the English term, and in the absence of evidence submitted by the opponent to the contrary, the Opposition Division is of the view that ‘AEGEAN’ will be rather perceived as a meaningless word. Therefore, this element must be seen as normally distinctive and, in fact, as the most distinctive element of the contested sign, bearing in mind the limited distinctiveness of the other verbal element, ‘GOURMET’, and the rather decorative nature of the figurative elements.

Neither the earlier mark nor the contested sign have elements that could be considered clearly more dominant (visually eye-catching) than the others.

Visually, the signs coincide in ‘GOURMET’ which is the only verbal element of the earlier mark and is reproduced also in the contested mark. As explained above, this element is of very limited distinctiveness and, hence, the coincidence in such an element has a limited impact on the relevant public. The signs differ in all other verbal and figurative elements of the contested sign, and in the figurative elements of the earlier mark.

It is of particular importance that the differing distinctive element of the contested sign is its first element because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed on top of the sign the one that first catches the attention of the reader.

Moreover, the particular graphical composition of the signs has to be given certain significance when the visual impact of the marks is considered.

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

Aurally, the pronunciation of the signs coincides in the sound of the word ‛GOURMET’, present in both signs. On account of its limited distinctiveness, the coincidence in this element shall be given less weight than the differing distinctive element ‘AEGEAN’, which will not only be seen as the main indicator of commercial origin in the contested sign but constitutes also its first and, thus, more memorisable element.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. While it is true that the signs will be associated with the meaning of ‘GOURMET’, the limited distinctiveness of this word and the presence of the fanciful first verbal element of the contested sign (which is likely to attract the consumer’s attention) lead overall to a lower than average degree of conceptual similarity.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

According to the opponent, the earlier trade mark has a reputation in Spain in connection with all the goods in Class 29 invoked as the basis of the opposition. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent did not submit within the substantiation time limit any evidence in support of its claim. The opponent merely referred to the judgement of the General Court of 15/12/2016, T-212/15, Gourmet, EU:T:2016:746 to counter argue possible allegations on part of the applicant as to lack of distinctiveness of the earlier mark.

The opponent submitted voluminous evidence in response to the applicant’s proof of use request. However, this evidence was submitted after the time limit granted to the opponent to substantiate the opposition and to prove the existence and validity of the earlier right invoked and its entitlement to file the opposition (including, where relevant for the opposition, to submit evidence of reputation, enhanced distinctiveness or any other aspect affecting the scope of protection of the earlier right). Therefore, the evidence submitted by the opponent following the proof of use request cannot be taken into account for the purposes of substantiating the opponent’s claim as to reputation/enhanced distinctive character of the earlier mark.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The opponent is correct in drawing the Opposition Division’s attention to the premise established in case law that in opposition proceedings an earlier national mark cannot be found to be completely devoid of distinctive character as it would amount to calling into question the validity of the national mark (24/05/2012, C–196/11 P, F1-Live, EU:C:2012:314, §§ 42-45). This does not prejudice, however, the finding of the Opposition Division in the particular case that, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question in Class 29 (as also established by the General Court in the above mentioned judgment referred to by the opponent).

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

The contested goods have been found to be identical or similar (to varying degrees) to the goods invoked by the opponent.

The marks under comparison are similar to the extent that they coincide in the word ‘GOURMET’, which forms the only verbal component of the earlier mark and the second verbal element of the contested sign.

The opponent did not prove that the earlier mark enjoys enhanced distinctiveness due to its extensive use. The inherent distinctiveness of the earlier mark is considered to be low.

While it is true that the single verbal element of the earlier mark is included in its entirety in the contested mark and this is an indication that a certain similarity between the marks may exist, in the present case this similarity is not sufficient to lead to a likelihood of confusion.

When the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.

In the present case it is to be taken into account that the contested sign comprises an additional first element which constitutes its most distinctive element. As a result, consumers are likely to perceive the verbal element ‘AEGEAN’ as the primary indicator of the commercial origin of the goods provided under the contested sign. Considering the presence also of further figurative elements in the conflicting signs and the low distinctiveness of the earlier mark, the Opposition Division is of the view that the relevant public will be able to safely hold the conflicting signs apart.

The opponent maintains that the average consumer usually retains the established similarities between trade marks rather than their differences. However, contrary to the opponent’s view, it cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

The above findings are not called into question by the opponent’s reference to the judgement of the General Court of 15/12/2016, T-212/15, Gourmet, EU:T:2016:746 involving the same earlier mark. It is to be pointed out that in the case referred to by the opponent the conflicting signs were made up of the word ‘GOURMET’ being the only verbal element of the marks. Therefore, considering the differing additional distinctive word element in the present case, the Opposition Division is of the view that the circumstances are different, thus justifying the different outcome in the case.

Considering all the above, and even taking into account the interdependence principle and the imperfect recollection principle, referred to by the opponent, there is no likelihood of confusion on the part of the public, even for identical goods. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1)(b) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 10/11/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/03/2017.

The opponent submitted the evidence of reputation on 02/10/2017 (following the applicant´s proof of use request), that is, after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish that the trade mark on which the opposition is based has a reputation.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Given that some of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded also insofar as these grounds are concerned.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Eva Inés PÉREZ SANTONJA

Denitza STOYANOVA-VALCHANOVA

Renata COTTRELL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.