OPPOSITION No B 2 861 774

Campofrio Food Group, S.A.U., Parque Empresarial La Moraleja, Avenida de Europa, 24, 28108 Alcobendas (Madrid), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Harb Holding International S.A.L., Haret Hreik- Mouawad Street, Nahle Building P.O.X. 25/146, Gobeiry, Beirut, Lebanon (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 861 774 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all of the goods of European Union trade mark application No 16 191 108 for the figurative mark , namely against all of the goods in Classes 29, 30, 31 and 32. The opposition is based on the marks below:

• International trade mark registration No 654 873 designating the Czech Republic, Austria, Latvia, Italy, Benelux, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Poland, Hungary, Croatia, Germany and France for the figurative mark , for which the opponent invoked Article 8(1)(b) EUTMR;

• Spanish trade mark registration No 1 992 275 for the figurative mark , for which the opponent invoked Article 8(1)(b) and (5) EUTMR;

• Spanish trade mark registration No 1 992 276 for the figurative mark , for which the opponent invoked Article 8(1)(b) EUTMR;

• Spanish trade mark registration No 1 992 277 for the figurative mark , for which the opponent invoked Article 8(1)(b) EUTMR;

• Spanish trade mark registration No 1 992 278 for the figurative mark , for which the opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

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 marks 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

International trade mark registration No 654 873 (earlier mark 1)

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; green vegetables, preserved, dried and cooked meat and fish; jellies and jams; eggs, milk and other dairy products; edible oils and fats, dishes made from meat, fish or green vegetables. 

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and cereal preparations, bread, pastry and confectionery; edible ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices and ice. 

Spanish trade mark registration No 1 992 275 (earlier mark 2)

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and pulse, vegetables, meat and fish; jellies and jams; eggs, milk and milk products; edible oils and fats; meat, fish or vegetable-based prepared dishes.

Spanish trade mark registration No 1 992 276 (earlier mark 3)

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper; vinegar, sauces (condiments); spices; ice.

Spanish trade mark registration No 1 992 277 (earlier mark 4)

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.

Spanish trade mark registration No 1 992 278 (earlier mark 5)

Class 32: Beers; aerated waters and other non-alcoholic beverages; syrups for making beverages; fruit juices; syrups.

The contested goods are the following:

Class 29: Vegetables and potatoes (preserved, dried or cooked), fruits (preserved, dried or cooked), mushrooms (preserved, dried or cooked), meat, poultry, game, fish and seafood, all these products also in the form of extracts, soups, jellies, pastes, preserves, ready-made dishes, frozen or dehydrated; jams; eggs; milk, cream, butter, cheese preparations having a base of milk; milk substitutes; milk-based beverages; milk-based and cream-based desserts; yoghurts; soya milk (milk substitute), preparations based mainly on soya milk; edible oils and fats; protein preparations for human food; non-dairy creamers; sausages; charcuterie; peanut butter; soups, soup concentrates, broth, stock cubes, bouillon, consommés.

Class 30: Coffee, coffee extracts, coffee-based preparations and beverages; iced coffee; coffee substitutes, extracts of coffee substitutes, preparations and beverages based on coffee substitutes; chicory; tea, tea extracts, tea-based preparations and beverages; iced tea; malt-based preparations; cocoa and cocoa-based preparations and beverages; chocolate, chocolate products, chocolate-based preparations and beverages; confectionery, sweets, candies; sugar; chewing gum; natural sweeteners; bakery products, bread, yeast, pastry; biscuits, cakes, cookies, wafers, toffees, puddings; ice cream, water ices, sherbets, frozen confections, frozen cakes, soft ices, frozen desserts, frozen yoghurts; binding agents for making ice cream and/or water ices and/or sherbets and/or frozen confections and/or frozen cakes and/or soft ices and/or frozen desserts and/or frozen yoghurts; honey and honey substitutes; breakfast cereals, muesli, corn flakes, cereal bars, ready-to-eat cereals; cereal preparations; rice, pasta, noodles; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes; pizzas; sandwiches; mixtures of alimentary paste and oven-ready prepared dough; sauces; soya sauce; ketchup; aromatising or seasoning products for food, edible spices, condiments, salad dressings, mayonnaise; mustard; vinegar.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beverages (non-alcoholic); juices (fruit and vegetable) for use as a beverage; waters (beverages, not for medical purposes).

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier IR - trade mark 1 Earlier Spanish trade marks 2-5
Earlier trade marks	Contested sign

The relevant territory is the Czech Republic, Austria, Latvia, Italy, Benelux, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Poland, Hungary, Croatia, Germany and France for the earlier trade mark 1 and Spain for earlier trade marks 2-5.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about commercial origin due to similarities that pertain solely to non-distinctive elements.

The earlier Spanish trade marks 2-5 are figurative marks and consist of the text ‘Campofrío’ in white standard font letters with a black outline, which is displayed within a red label (horizontal wave-like label that is curved on each end) with a gold coloured rim (according to the indications). Earlier mark 1 includes the same device and verbal element as in all the earlier Spanish trade marks, but includes in addition a cropped square in the background, which is divided into three equal fields that are depicted in different shades of red and burgundy.

The verbal element ‘Campofrío’ may for the Portuguese- and Spanish-speaking part of the public be understood as ‘cold field’ or ‘cold countryside’. These meanings do not indicate or allude to the goods or their characteristics in any way. Therefore, the verbal element of the earlier mark is distinctive. For the remaining part of the public, ‘Campofrío’ is meaningless and is, therefore, also considered as a distinctive element. As regards the figurative elements of the earlier marks, the red wave-like figurative element on which the text is placed will be perceived as an ordinary decorative label that essentially serves to bring the verbal elements to the attention of the public. These kinds of labels and use of colour are especially common for goods such as foodstuffs and beverages, as in the present case. Furthermore, the cropped square in different shades of red and burgundy, present in earlier trade mark 1, comprises basic geometric shapes. Therefore, the figurative elements of the earlier marks are all considered non-distinctive.

The contested sign is also a figurative mark consisting of an elongated label with curved ends, which is filled with red and has a thick rim shaded in white and red. Inside the label are some Arabic characters in white with green coloured shadows.

As regards the red label of the contested sign, the assessment of distinctiveness made above concerning the label of the earlier mark applies equally for this element. The Arabic characters included in the contested sign will not be understood by the majority of the relevant public, but will rather be perceived as some Arabic figurative element that is not without distinctiveness. Having said this, it is also worth noting that whilst its presence is duly noted the characters may not be particularly memorable. However, considering the get up of the contested sign, it is these characters that are the most distinctive element compared to the red label for the reasons previously expounded.

As for all of the marks, there are no elements that can be considered more visually outstanding than others.

Visually, the signs only coincide in the fact that all of them include a label-like element in red. Firstly, the label is, as explained above, non-distinctive for the goods at issue. Secondly, these labels are even represented in different manners. While the label in the contested sign is only slightly curved on each side, the label of the earlier marks has clearer swirls on its ends. Furthermore, the labels differ in their outside rims as the label of the contested sign has a thick rim in shades of white and red, while the label in the earlier marks has a thin gold coloured rim. In addition to the fact that the marks differ in other less distinctive elements, such as the cropped square of earlier mark 1 in shades of red and burgundy, they also clearly differ further in more distinctive elements of the signs, such as the verbal element ‘Campofrío’ of the earlier marks and the Arabic characters of the contested sign. Although the characters inside the red labels of all signs are in white, they are different in the colouring of the outline/shadow of these characters, being green in the contested sign and black in earlier marks. Also, the characters in the earlier marks are Latin while those in the contested sign are Arabic.

Taking the above into account and keeping in mind that the signs only coincide in irrelevant aspects, such as the concept of non-distinctive red labels and the filling of the characters inside the labels being white, it is concluded that the signs are visually not similar.

Purely figurative signs are not subject to a phonetic assessment. As the contested mark is purely figurative, it is not possible to compare them aurally. Consequently, the phonetic aspect does not influence the assessment of the similarity of the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the Portuguese- and Spanish-speaking part of the public, the earlier marks evoke the concept of a ‘cold field’ or ‘cold countryside’. The contested sign on the other hand does not have any clear distinctive concepts, but it does, by its figurative elements, allude to the notion of something Arabic. As there are no common distinctive concepts between the signs, they are considered conceptually not similar.

As the signs do not coincide in any of their aspects, they are found dissimilar.

The opponent refers to three previous decisions, respectively of the General Court, and the Boards of Appeal, and argues that these cases support the opponent’s view on the existence of a high degree of visual similarity between the trade marks in conflict. The cases referred to are the following:

• 12/09/2007, T-363/04, La Española, EU:T:2007:264

v

• 25/03/2010, joined cases T-5/08, T-6/08 and T-7/08, EU:T:2010:213, Master Beverage Industries (Golden Eagle)

and v

, and

• 14/03/2017, R 448/2016-2, BLACKWATER (fig.) / DEVICE OF A PAW PRINT (fig.) et al.

v

The Opposition Division is of the view that none of the cases referred to by the opponent is comparable to, and thereby not relevant for, the present proceedings. In all of the cases referred to, the similarities between the signs derive from elements such as a seated woman dressed in traditional clothes, a steaming red mug with a white inside surface filled with hot beverage and coffee beans, and an animal paw print. All of these coinciding elements possess more distinctive character than the coinciding element in the present case, where the similarity between the signs are confined only to non-distinctive labels that are overall represented in different manners as explained above. Consequently, the factual differences of these cases clearly justify a different outcome, and the opponent’s arguments must thereby be set aside.

4. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: 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.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled.

Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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

Vanessa PAGE

Tu Nhi VAN

Marta Maria CHYLIŃSKA

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.