OPPOSITION No B 2 834 292

Trade & More, S.L., C/ Fernando Pessoa 54-64, 08030 Barcelona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421 2º, 08008 Barcelona Spain (professional representative)

a g a i n s t

Bahlsen GmbH & Co. KG, Podbielski-Str. 11, 30163 Hannover, Germany (applicant), represented by Klawitter Neben Plath Zintler Knpz Rechtsanwälte, Kaiser-Wilhelm-Str. 9, 20355 Hamburg, Germany (professional representative).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 834 292 is upheld for all the contested goods:

Class 29: Meats; fish, not live; poultry, not live; game, not live; meat extracts; frozen fruits; fruit, preserved; dried fruit; fruit, stewed; frozen vegetables; preserved vegetables; vegetables, dried; vegetables, cooked; jellies for food; jams; compotes; eggs; milk; dairy products; edible oils; edible fats; potato snacks; raisins; dried nuts; roasted nuts; salted nuts; spiced nuts; dried fruit products; fat-containing mixtures for bread slices; yogurt; dairy products and dairy substitutes.

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour; cereal preparations; bread; pastries; chocolate confectionery containing pralines; snack foods consisting principally of confectionery; chocolate for confectionery and bread; non-medicated confectionery in jelly form; chocolate candies; flour confectionery; prepared desserts [confectionery]; confectionery items coated with chocolate; candy coated confections; truffles [confectionery]; ices; honey; golden syrup; yeast; baking powder; salt; mustard; vinegar; sauces [condiments]; spices; ice; cookies; aperitif biscuits; rolled wafers [biscuits]; cakes; chocolate; chocolate based products; candy bars; chocolates; bonbons made of sugar; sweetmeats [candy]; marzipan; extruded food products made of wheat; extruded food products made of rice; extruded food products made of maize; popcorn; waffles.

2. European Union trade mark application No 15 954 522 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 954 522 for the figurative mark , namely against all the goods in Classes 29 and 30. The opposition is based on, inter alia, European Union trade mark registration No 15 240 039 for the figurative mark . 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 15 240 039.

1. The goods

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

Class 29: Edible oils and fats; olive oil; corn oil; edible oils; spiced oils; cooking oils; edible fats; shortening; butter for use in cooking; snack foods based on nuts; snack foods based on vegetables; vegetable-based snack foods; meat-based snack foods; nut-based snack foods; soy-based snack foods; potato-based snack foods; stock; soups; dips; croquettes; stock cubes; extracts for soups; spiced nuts; roasted nuts; salted nuts; prepared nuts; bottled vegetables; potato sticks; soup pastes; french fries; fish in olive oil; desserts made from milk products; snack foods based on legumes; dairy products and dairy substitutes; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; fish, seafood and molluscs; jellies, jams, compotes, fruit and vegetable spreads; olives, preserved; dried olives; olives, [prepared]; olives, [prepared]; canned processed olives; olive paste; olive puree; pates.

Class 30: Ready to eat savory snack foods made from maize meal formed by extrusion; extruded wheat snacks; prepared foodstuffs in the form of sauces; snack foods made from corn; snack foods made from wheat; crisps made of cereals; tortilla snacks; puffed corn snacks; snack foods consisting principally of bread; sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments; syrups and treacles; salt; sauces; cookies; toasts [biscuits]; salted biscuits; rusks; aperitif biscuits; bread; pastries, cakes, tarts and biscuits (cookies); sauces [condiments]; canned sauces.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products; fungi; unprocessed olives; unprocessed olives; olives, fresh; nuts [fruits].

The contested goods are the following:

Class 29: Meats; fish, not live; poultry, not live; game, not live; meat extracts; frozen fruits; fruit, preserved; dried fruit; fruit, stewed; frozen vegetables; preserved vegetables; vegetables, dried; vegetables, cooked; jellies for food; jams; compotes; eggs; milk; dairy products; edible oils; edible fats; potato snacks; raisins; dried nuts; roasted nuts; salted nuts; spiced nuts; dried fruit products; fat-containing mixtures for bread slices; yogurt; dairy products and dairy substitutes.

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour; cereal preparations; bread; pastries; chocolate confectionery containing pralines; snack foods consisting principally of confectionery; chocolate for confectionery and bread; non-medicated confectionery in jelly form; chocolate candies; flour confectionery; prepared desserts [confectionery]; confectionery items coated with chocolate; candy coated confections; truffles [confectionery]; ices; honey; golden syrup; yeast; baking powder; salt; mustard; vinegar; sauces [condiments]; spices; ice; cookies; aperitif biscuits; rolled wafers [biscuits]; cakes; chocolate; chocolate based products; candy bars; chocolates; bonbons made of sugar; sweetmeats [candy]; marzipan; extruded food products made of wheat; extruded food products made of rice; extruded food products made of maize; popcorn; waffles.

Contested goods in Class 29

Jellies for food; jams; compotes; fish, not live; dairy products (listed twice); edible oils; edible fats; potato snacks; roasted nuts; salted nuts; spiced nuts; dairy substitutes; eggs are identically contained in both lists of goods (including synonyms).

The contested frozen fruits; fruit, preserved; dried fruit; fruit, stewed; frozen vegetables; preserved vegetables; dried fruit products; vegetables, dried; vegetables, cooked; raisins are included in the opponent’s processed fruits and vegetables (including nuts and pulses). Therefore, they are identical.

The contested milk; yogurt are included in the opponent’s dairy products. Therefore, they are identical.

The contested fat-containing mixtures for bread slices are included in the opponent’s fats. Therefore, they are identical.

The contested dried nuts overlap with the opponent´s processed fruits in Class 29. Therefore they are identical.

The opponent’s meat-based snack foods have the same origin, methods of use and can be addressed to the same people and sold in the same places as the contested meats, which are the main ingredient of these contested goods. When the ingredient can be considered as being the main ingredient of the prepared dish, a similarity will exist (04/05/2011, T-129/09, Apetito, EU:T:2011:193), where the Court confirms the finding of similarity between a particular foodstuff and prepared meals mainly consisting of that same foodstuff. Therefore, they are similar.

The opponent’s soups can have the contested meat extracts as their main ingredient. Accordingly, they can have a similar nature and the same purpose. Furthermore, they are often marketed and distributed by the same undertakings and placed on adjacent shelves for sale in shops. Consequently, these goods are considered similar.

The contested poultry, not live; game, not live are similar to the opponent’s fish, since they are all foodstuffs made of animal origin and, therefore, they are in competition with each other, share the same method of use and target the same public.

Contested goods in Class 30

Coffee; tea; cocoa; sugar; yeast; salt; sauces [condiments]; cookies; aperitif biscuits; cakes; chocolate (mentioned twice) are identically contained in both lists of goods (including synonyms).

The contested ices (mentioned twice) are identically contained in both lists of goods (including synonyms – ice creams).

The contested rice; tapioca; sago; flour; cereal preparations; baking powder; extruded food products made of wheat; extruded food products made of rice; extruded food products made of maize are included in the opponent’s processed grains, starches, and goods made thereof, baking preparations and yeasts. Therefore, they are identical.

The contested bread; pastries; chocolate confectionery containing pralines; snack foods consisting principally of confectionery; chocolate for confectionery and bread; non-medicated confectionery in jelly form; chocolate candies; flour confectionery; prepared desserts [confectionery]; confectionery items coated with chocolate; candy coated confections; truffles [confectionery]; rolled wafers [biscuits]; chocolate based products; candy bars; bonbons made of sugar; sweetmeats [candy]; marzipan; popcorn; waffles are included in the opponent’s baked goods, confectionery, chocolate and desserts. Therefore, they are identical.

The contested honey is included in the opponent’s bee products. Therefore, they are identical.

The contested vinegar; spices are included in the opponent’s seasonings condiments. Therefore, they are identical.

The contested artificial coffee is similar to a high degree to the opponent´s coffee, since they have the same producers, method of use, distribution channels, and target the same relevant public. Moreover, they are in competition with each other.

The contested mustard is highly similar to the opponent’s spices. These goods have the same purpose (flavouring), are in competition, have the same distribution channels and points of sale, can target the same consumers and are likely to come from the same kind of undertakings.

The contested golden syrup is similar to the opponent’s sugar in as much as they usually coincide in the relevant public, the distribution channels and are in competition.

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 to different degrees are directed at the public at large. They are rather cheap products that are bought and consumed on a daily basis. Therefore, the degree of attention paid by the public during the purchase of the goods involved is deemed to be lower than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark consisting of the elements ‘&’ placed over the letter ‘o’ of the word ‘More’, written in black stylized letters. A black fork is depicted on the left and the letter ‘M’ is formed by the prongs of the fork.

The contested sign is a figurative mark composed of the verbal element ‘KEKS’, the element ‘&’ placed above the word ‘MORE’, all written in brown uppercase letters. The verbal elements are set against a large yellow rectangle with three green lines: one at the top, a smaller one in the middle, and one at the bottom.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘KEKS’ and ‘MORE’ are meaningful in certain territories, for example in Bulgaria (‘кекс’ in Bulgarian and Czech) where ‘KEKS’ means ‘cake’ and in the United Kingdom where ‘MORE’ is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for whom the words will be seen as fanciful terms and therefore as distinctive to an average degree.

The symbol ‘&’, placed in both signs, will be perceived as the ampersand symbol meaning ‘and’, and its distinctiveness is normal in relation to the goods in question.

As regards to the figurative elements of the contested sign, namely the yellow rectangle with three green lines, they serve purely decorative purposes and are, therefore, contrary to the applicant´s argument, weak.

The fork of the earlier mark will be associated with ‘an implement with two or more prongs used for lifting food to the mouth or holding it when cutting’ (information extracted from https://en.oxforddictionaries.com/definition/fork on 21/06/2018). Bearing in mind that the relevant goods are different kinds of foodstuffs, this element is weak for all of the relevant goods.

None of the elements in both marks have a more dominant role than the other ones.

Visually, the signs coincide in the elements ‘& MORE’, which constitute the entire earlier sign. However, they differ in their figurative elements and in the word ‘KEKS’ of the contested sign.

As explained above, the figurative elements of the marks are weak and therefore their impact at a visual level is reduced.

Furthermore, 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).

As the earlier mark as a whole is contained within the verbal elements of the contested sign, and as these verbal elements are given more weight by the public when perceiving the sign as a whole, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MORE’ and of the element ‘&’ (although depicted differently in the contested mark), present identically in both signs. The pronunciation differs in the sound of the letters ‛KEKS’ at the beginning of the contested mark, which have no counterpart in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the signs and their possible perception by the relevant public. Both signs contain the element ‘&’ and ‘MORE’ and the public will understand these elements with the meanings specified above. As a consequence, the signs are conceptual similar to a high 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element in the mark, namely the fork, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In this case, the goods have been found partly identical and partly similar to various degrees and are directed at the public at large, with a lower than average degree of attention. Neither of the signs have any element that is more dominant than the others. The earlier mark is distinctive to a normal degree. The signs are visually and aurally similar to an average degree and conceptually similar to a high degree. Moreover, the additional figurative elements of the signs are weak for the reasons set out above in part c) of this decision. Consequently, the relevant public cannot distinguish the signs on account of these weak elements.

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).

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 or services

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 this case, it is considered that the coincidences between the signs, together with the identity and similarity (to different degrees) of the goods involved, are enough to outweigh their dissimilarities.

The above finding is even more evident when considering that the relevant public´s level of attention is lower than average during the purchase of the goods, since those consumers pay less attention to the marks, and therefore will more easily overlook the possible differences between them.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that they might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or as a variation of the earlier mark, configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character, given that many trade marks include the elements ‘& MORE’. In support of their argument, the applicant refers to several trade mark registrations in Germany and the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘& MORE’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 240 039. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 15 240 039 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Francesca DRAGOSTINI

Cristina CRESPO MOLTO

Cynthia DEN DEKKER

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 paid.