OPPOSITION No B 2 919 549

Goeie Peer B.V., Spoorwegemplacement 1, 2991 VT, Barendrecht, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA, Den Haag, Netherlands (professional representative)

a g a i n s t

Summerfruit S.R.L., Via Farosi 435, Castel Bolognese (RA), Italy (applicant), represented by Studio Torta S.P.A., Via Viotti 9, 10121 Torino, Italy (professional representative).

On 01/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 919 549 is upheld for all the contested goods.

2. European Union trade mark application No 16 493 108 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 493 108, DORED. The opposition is based on European Union trade mark registration No 53 588 41, SWEET DORED. 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.

a) The goods and services

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

Class 31: Agricultural, horticultural, forestry products; tree-nursery products; fruit(-bearing) trees and parts thereof, such as grafts, buds, cuttings, fruits, seeds, (living) plants, flowers, pieces of plants, cultivation material, tissue culture material, all the aforementioned goods in particular relating to pear varieties.

The contested goods are, after a limitation, the following:

Class 31: Kiwifruits.

Class 32: Fruit beverages and fruit juices.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 31

The contested kiwifruits are included in the broad category of, or overlap with, the opponent’s agricultural, horticultural, forestry products. Therefore, they are identical.

Contested goods in Class 32

The contested fruit beverages are similar to a low degree to the opponent´s agricultural, horticultural, forestry products as they coincide in distribution channels, relevant public and producer.

The contested fruit juices are similar to a low degree to the opponent´s agricultural, horticultural, forestry products, for the same reasons.

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

The degree of attention is considered to be average.

c) The signs

SWEET DORED	DORED
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 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.

Both marks are word marks.

The first verbal element ‘SWEET’ of the earlier mark is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, the UK and Malta, where it is used as an adjective indicating that something contains a lot of sugar e.g. the sweet taste of wild strawberries https://www.collinsdictionary.com/dictionary/english/sweet, 28/01/2019). As this is directly descriptive of fruits and beverages and juices based on fruits, this element is non-distinctive. The second and last verbal element of the earlier mark ‘DORED’ is also the sole verbal element of the contested sign. It has no meaning for the relevant public and is, therefore, distinctive.

Being word marks, there are no dominant elements.

Visually and aurally, the signs coincide in ‘DORED’ which is the entire contested sign and distinctive. They differ in the verbal element ‘SWEET’ of the earlier mark which has no counterpart but is non-distinctive, and therefore of reduced impact.

Therefore, the signs are highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the first element of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) 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).

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.

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 goods are identical and similar to a low degree.

The signs are highly similar from both a visual and an aural perspective, as the distinctive element ‘DORE’, which is the contested sign, is entirely contained in the earlier mark, itself distinctive. The sole differentiating element is non-distinctive.

Therefore, there is a clear likelihood of confusion even for the goods which are similar only to a low degree.

Indeed, 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 or services 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 average consumer in the English- speaking part of the 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 53 588 41, SWEET DORED. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN Keeva DOHERTY Aldo BLASI

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.