OPPOSITION No B 2 872 938

Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (opponent), represented by Nicola Franzky, c/o Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

Ravintoraisio Oy, Raisionkaari 55, 21200 Raisio, Finland (applicant), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative).

On 29/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 872 938 is partially upheld, namely for the following contested goods:

Class 5: Dietary and nutritional supplements; dietary supplements for humans; protein dietary supplements.

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; processed vegetables; processed legumes; milk and milk products; edible fats and edible oils.

Class 30: Flour; cereals; preparations made from cereals; vegetable flour; oatmeal; crushed oats; oat flakes; processed oats; oat-based food; cereal-based snack food; processed cereals for food for human consumption; oats for human consumption; prepared food and snacks mainly consisting of grains for human consumption; prepared food mainly consisting of cereals for human consumption; cereal-based fast food; high-protein cereal bars; cereal based food bars.

Class 31: Seeds; unprocessed cereals; oats; unprocessed oats; nuts; foodstuffs and fodder for animals.

Class 32: Non-alcoholic beverages; preparations for making beverages; smoothies containing grains and oats; smoothies.

2. European Union trade mark application No 16 183 212 is rejected for all the above goods. It may proceed for the remaining goods.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 16 183 212 ‘OATTO’. The opposition is based on European Union trade mark registration No 13 713 151 . 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.

1. The goods and services

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

Class 35: Wholesaling and retailing of health care preparations, dietetic substances for medical use, food for babies, frozen, preserved, dried and cooked fruits and vegetables, milk and milk products, edible oils and fats, flour and preparations made from cereals, bread, pasty and confectionery, grains and agricultural products, fresh fruits and vegetables, seeds, natural plants, foodstuffs for animals, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, preparations for making beverages.

The contested goods are the following:

Class 5: Dietary and nutritional supplements; Dietary supplements for humans; Protein dietary supplements.

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; Processed vegetables; Meat substitutes; Processed legumes; Prepared vegetable dishes; Vegetable-based meat substitutes; Prepared meals consisting primarily of meat substitutes; Vegetable-based snack foods; Protein-based snacks; Milk and milk products; Edible fats and edible oils.

Class 30: Flour; Cereals; Preparations made from cereals; Vegetable flour; Oatmeal; Crushed oats; Oat flakes; Processed oats; Oat-based food; Cereal-based snack food; Processed cereals for food for human consumption; Carbohydrate preparations for food; Oats for human consumption; Prepared food and snacks mainly consisting of grains for human consumption; Prepared food mainly consisting of cereals for human consumption; Cereal-based fast food; High-protein cereal bars; Cereal based food bars.

Class 31: Seeds; Unprocessed cereals; Oats; Unprocessed oats; Nuts; Foodstuffs and fodder for animals.

Class 32: Non-alcoholic beverages; Preparations for making beverages; Smoothies containing grains and oats; Smoothies.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

According to the applicant ‘the public is well aware that retailers/wholesalers most often are not the manufacturers of the products being sold, and goods of a large variety of different producers are sold under one roof’. Furthermore, the applicant argues that the public does not confuse ‘the trademark indicating the economic origin of the product (that is, the manufacturer) to the mark informing them the economic origin of the service through which they came across to the product (that is, the retailers/whole-seller)’.

In this regard it should be noted that retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

Taking the above into account retail services relating to the sale of particular goods and other goods are not similar. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

However, retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The aforesaid rules will be applied with regard to the below comparison of the goods and services.

Contested goods in Class 5

It follows from the above explanations that the contested dietary and nutritional supplements; dietary supplements for humans; protein dietary supplements are similar to a low degree to the opponent’s retailing of dietetic substances for medical use. The Opposition Division considers that the goods and services in question have the same distribution channels and the same consumers. Furthermore, they are complementary.

Contested goods in Class 29

For the same reasons, the contested preserved, frozen, dried and cooked fruits and vegetables; processed vegetables; processed legumes; milk and milk products; edible fats and edible oils are similar to a low degree to the opponent’s services, that is, retailing of frozen, preserved, dried and cooked fruits and vegetables, milk and milk products, edible oils and fats accordingly. These goods and services also have the same distribution channels, target the same consumers and are complementary.

The remaining contested goods in Class 29, that is, meat substitutes; prepared vegetable dishes; vegetable-based meat substitutes; prepared meals consisting primarily of meat substitutes; vegetable-based snack foods; protein-based snacks are dissimilar to the opponent’s services. Reference is made to the above given explanations. The Opposition Division considers that the goods and services in question differ in their nature, purpose, distribution channels, sales outlets, producers and the method of use. Furthermore, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 30

The contested flour; cereals; preparations made from cereals; vegetable flour; oatmeal; crushed oats; oat flakes; processed oats; oat-based food; cereal-based snack food; processed cereals for food for human consumption; oats for human consumption; prepared food and snacks mainly consisting of grains for human consumption; prepared food mainly consisting of cereals for human consumption; cereal-based fast food; high-protein cereal bars; cereal based food bars are similar to a low degree to the opponent’s services, that is, retailing of flour and preparations made from cereals. The above given explanations shall apply. The goods and services in question have the same distribution channels and the same consumers. Furthermore, they are complementary.

In light of the above given explanations, the remaining contested goods in Class 30, that is, carbohydrate preparations for food are dissimilar to the opponent’s services. The Opposition Division considers that the goods and services in question differ in their nature, purpose, distribution channels, sales outlets, producers and the method of use. Furthermore, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 31

The contested seeds; unprocessed cereals; oats; unprocessed oats; nuts; foodstuffs and fodder for animals are similar to a low degree to the opponent’s retailing of seeds, grains and agricultural and forestry products, foodstuffs for animals accordingly. The above given explanations shall apply. These goods and services have the same distribution channels and the same consumers. Furthermore, they are complementary.

Contested goods in Class 32

In view of the above explanations, the contested non-alcoholic beverages; preparations for making beverages; smoothies containing grains and oats; smoothies are similar to a low degree to the opponent’s services, that is, retailing of non-alcoholic beverages; preparations for making beverages for the same reasons (same distribution channels, same consumers and complementary goods).

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 similar to a low degree are directed at the public at large.

The degree of attention may vary from below average to average as some of the contested goods are rather cheap products for daily consumption.

3. The signs

	OATTO
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 figurative mark consisting of the word element ‘OTTO’, written in bold red letters and slightly stylised.

The contested sign is a word mark consisting of the word ‘OATTO’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The element ‘OTTO’ of the earlier mark will be understood by part of the relevant public, for example in Germany, Austria and Denmark, as a common male name (see for example the German definition at www.duden.de/rechtschreibung/Otto_maennlicher_Vorname). As it has no meaning in connection with the relevant goods or services, the term ‘OTTO’ is distinctive, both for the part of the public that will understand its meaning and for the part that will not.

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.

As the above mentioned meaning of ‘OTTO’ has an impact on the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will not understand the meaning of this element, such as the Spanish-, Portuguese-, Slovenian-, Croatian-, Czech-, Slovak-, Romanian- and Polish-speaking public as it would be a very uncommon name in these countries.

The applicant argues that the contested sign is made of two English words, namely ‘oat’ and ‘to’. According to the applicant ‘the mark … contains a wordplay suggesting to the public that it is a question of oat products for any purpose or directed at anyone’. The Opposition Division considers that the relevant public will rather perceive the sign as a whole and thus not perceive the alleged play on words, even if it would understand the word ‘oat’. Therefore, the opponent’s argument has to be set aside.

With regard to the word ‘OATTO’ it is meaningless and therefore distinctive with regard to the goods in question.

Concerning the earlier sign, its graphic stylization is only secondary because the colour will be perceived as mere decoration and the font is relatively standard. The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their first and their last three letters ‘OTTO’/’O*TTO’. However, they differ in the second letter ‘A’ of the contested sign and the stylisation of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory such as Spain, Portugal, Slovenia, Croatia, the Czech Republic, Slovakia, Romania and Poland, the pronunciation of the signs coincides in the sound of their first and their last three letters ‘OTTO’/’O*TTO’. The pronunciation differs in the sound of the letter ‛A’ of the contested mark, which has no counterpart in the earlier sign. It should be however noted that the letter ‘A’ being a vowel and following another vowel ‘O’ will be hardly audible, at least in some of the chosen languages (e.g. Polish). It is because the sounds of these two vowels merge into one single sound which is also confirmed by the transcription that was provided by the applicant.

Therefore, the signs are aurally highly similar.

Conceptually, as mentioned above, neither of the signs has a meaning for the public in the relevant territory such as the Spanish-, Portuguese-, Slovenian-, Croatian-, Czech, Slovak-, Romanian- and Polish-speaking public since the word ‘OTTO’ will not necessarily be recognised as a male name by that public. Since a conceptual comparison is not possible, 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. The opponent, in its letter of 06/02/2018, argued only that ‘the distinctiveness of the earlier marks is clearly above average’. The Opposition Division considers that this claim does not explicitly concern the earlier mark’s particular distinctiveness by virtue of its intensive use or reputation. Apart from that, this claim was made by the opponent after the substantiation period expired. Therefore, it cannot be taken into account.

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 services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §22).

In the present case, the goods are partly similar to a low degree and partly dissimilar. The conflicting marks are visually similar to an average degree and aurally highly similar. The conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public, that is, the public at large, may vary from below average to average and the distinctiveness of the earlier mark is normal.

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).

The signs only differ in one letter which is the second character of the contested sign and the different stylization of the earlier mark. Even considering that, as the applicant claims, these signs are rather short, these differences are not enough to enable the consumer to safely distinguish between the signs. Contrary to what the applicant claims, that part of the relevant public on which the assessment focuses, will also not perceive any conceptual aspects that could help it to differentiate between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public that will not understand the meaning of ‘OTTO’, such as Spanish-, Portuguese-, Slovenian-, Croatian-, Czech-, Slovak-, Romanian- and Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 713 151. 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 similar to a low degree to the services 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.

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

Claudia ATTINÀ

Michal KRUK

Elena NICOLÁS GÓMEZ

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.