DECISION

of the Fourth Board of Appeal

of 18 November 2019

In case R 2074/2018-4

Hamid Ahmad Chakari
Kohlenhofgasse 5/17 1150 Wien Austria	Opponent / Appellant

represented by Anatol Schürer, Kaisergasse 10, 4020 Linz, Austria

v

Ahmad Bakhtiar
Unit 14, Cumberland Business Park, Cumberland Avenue London NW10 7RT United Kingdom	Applicant / Defendant

represented by BDB PITMANS LLP, 50 Broadway, London Westminster SW1H 0BL, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 930 686 (European Union trade mark application No 16 682 403)

The Fourth Board of Appeal

composed of D. Schennen (Chairman), E. Fink (Rapporteur) and L. Marijnissen (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 08/05/2017, Bakhtiar Ahmad (‘the applicant’) sought to register the word mark

SPEENGHAR UK

for goods in Classes 29, 30 and 32, including the following:

Class 30 ‒ Rice; tapioca; sago, spices; sweets [candy], candy with caramel; tea; green tea; black tea; Earl Grey tea; jasmine tea; Darjeeling tea; instant tea; instant tea [other than for medicinal purposes]; Chai tea; iced tea; tea bags; tea based beverages with fruit flavourings; rice pudding; rice vermicelli; prepared rice; frozen prepared rice with seasonings and vegetables; spices; coffee; artificial coffee and tea; cocoa; sugar.

2. On 24/07/2017, Hamid Ahmad Chakari (‘the opponent’) filed an opposition against part of the application, namely the goods in Class 30 as listed in para. 1, based on Article 8(1)(b) and Article 8(5) EUTMR and earlier EUTM No 16 028 508 for the figurative mark in colour

filed on 11/11/2016 and registered on 20/02/2018 for the following goods:

Class 30 ‒ Rice; flour of rice; rice-based snack food; rice cakes; husked rice; enriched rice; flavoured rices; fried rice; cooked rice; steamed rice; frozen prepared rice; foodstuffs made of rice; rice pulp for culinary purposes; extruded food products made of rice; enriched rice [uncooked]; artificial rice [uncooked]; milled rice for human consumption; frozen prepared rice with seasonings and vegetables.

Class 31 ‒ Rice, unprocessed; paddy; rice meal for forage.

3. It claimed reputation in Denmark, Germany and Austria for all the goods for which the earlier mark is registered. No evidence of reputation was submitted.

4. By decision of 30/08/2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety and ordered the opponent to bear the costs.

5. It gave, in particular, the following grounds for its decision:

• The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based. Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

• The goods ‘rice; frozen prepared rice with seasonings and vegetables’ are identically contained in both lists of goods. There is moreover identity between the contested goods ‘rice pudding; rice vermicelli’ and the earlier goods ‘foodstuffs made of rice’. The remainder of the contested goods, namely ‘tapioca; sago, spices; sweets [candy], candy with caramel; tea; green tea; black tea; Earl Grey tea; jasmine tea; Darjeeling tea; instant tea; instant tea [other than for medicinal purposes]; Chai tea; iced tea; tea bags; tea based beverages with fruit flavourings; spices; coffee; artificial coffee and tea; cocoa; sugar’ are dissimilar to any of the earlier goods, which are essentially rice and foodstuffs made of rice that differ in their purpose, distribution channels, sales outlets, producers and methods of use.

• The signs are visually similar to a very low degree and aurally similar to an average degree. The signs coincide in some of the letters of the distinctive word elements, namely ‘SPEENGHAR’ of the contested application and ‘SPIN GHAR’ of the earlier mark, but differ in the figurative elements and the layout of the earlier mark which have no counterpart in the contested word mark. Conceptually, the English-speaking consumer will understand ‘SPIN’ in the earlier mark as meaning the verb ‘to spin’ and hence the signs are not conceptually similar. For the non-English-speaking public, none of the signs has a meaning and the conceptual comparison remains neutral.

• Taking into account the normal degree of distinctiveness of the earlier mark, there is no likelihood of confusion even for the identical goods.

Submissions and arguments of the parties

6. On 25/10/2018, the opponent filed a notice of appeal against the contested decision, requesting that the decision be set aside in its entirety. The statement of grounds of appeal was received on 20/12/2018.

7. The arguments raised in the statement of grounds may be summarised as follows:

• In his submissions before the Opposition Division the opponent already explained that he sells his rice for several years under the earlier trade mark in Austria and other European countries which is sufficient proof of reputation under Article 8(5) EUTMR. The contested decision does not take these submissions into account.

• The findings of the contested decision with regard to the dissimilar goods are incorrect. To find otherwise would prevent the opponent to expand his product range beyond his main product rice to neighbouring products in the future.

• Visually, the words ‘SPIN GHAR’ and ‘SPEENGHAR’ are nearly identical, there is only a difference of two letters, namely ‘I’ versus ‘EE’. The dominant element of the earlier mark is the word ‘SPIN GHAR’; the graphic elements in the form of a mountain and a horse are of secondary importance. Consumers will perceive the contested word mark as the verbal variant of the earlier figurative mark.

• Aurally, the English pronunciation of the letters ‘I’ and ‘EE’ is very similar. There is a very high risk of confusing the trade marks phonetically.

• Conceptually, English-speaking consumers will perceive ‘SPIN GHAR’ and ‘SPEENGHAR’ as meaningless words. However, the trade marks also address the Arabic-speaking public, who understand ‘SPIN GHAR’ as indicating the name of a mountain in Afghanistan. The rice sold under the earlier trade mark comes from the region of this mountain, mainly from Northern India and Pakistan, very close to Afghanistan. Therefore, the concept of both trade marks is very similar.

8. The applicant requests that the Board dismiss the appeal and make an award of costs in his favour.

9. His arguments may be summarised as follows:

• Contrary to the submissions of the opponent, the earlier mark forms a single unit and cannot be split into two separate marks, one with English and one with Arabic word elements.

• Visually, the signs are dissimilar, and aurally, they are similar to a low degree. A conceptual comparison is not possible. The English-speaking public perceives ‘SPIN GHAR’ as two separate words and ‘SPIN’ as a reference to the English verb ‘to spin’. Conceptually, the arguments of the opponent are contradictory in that he claims that his rice comes from Northern India and Pakistan whereas the ‘SPIN GHAR’ mountain range is in Afghanistan.

• The earlier mark has a normal degree of distinctiveness. Because of the other verbal and figurative elements, ‘SPIN GHAR’ cannot be considered to be the dominant element of the earlier mark.

Reasons

10. The appeal is not well founded. There exists no likelihood of confusion pursuant to Article 8(1)(b) EUTMR and reputation of the earlier mark under Article 8(5) EUTMR was not proven.

Article 8(1)(b) EUTMR

11. Under Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17). The reference point is whether the relevant public will perceive the goods or services concerned as having the same commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).

12. The earlier mark is an EUTM. Therefore, the relevant territory in respect of which the likelihood of confusion must be assessed is the European Union. The conflicting goods are foodstuffs of daily consumption that address the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

Comparison of the goods

13. The assessment of the similarity of the goods and services must take into account all relevant factors, which include their nature, their purpose and their method of use, and whether they are in competition with each other or complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, §§ 32, 38) and whether consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 37).

14. The contested goods in Class 30 ‘rice, rice pudding; rice vermicelli; prepared rice; frozen prepared rice with seasonings and vegetables’ are identical to the goods ‘rice; frozen prepared rice; foodstuffs made of rice; frozen prepared rice with seasonings and vegetables’ of the earlier mark.

15. There is an average degree of similarity between the contested goods ‘tapioca; sago’, which are starchy substances used as a thickener for soups and puddings, and the goods of the earlier mark ‘rice; flour of rice’. Since the latter may also be used as a thickener or in cooking sweet dishes, these goods may overlap in purpose and method of use.

16. As for the remainder of the contested goods ‘spices; sweets [candy], candy with caramel; tea; green tea; black tea; Earl Grey tea; jasmine tea; Darjeeling tea; instant tea; instant tea [other than for medicinal purposes]; Chai tea; iced tea; tea bags; tea based beverages with fruit flavourings; spices; coffee; artificial coffee and tea; cocoa; sugar’, the Opposition Division correctly found them to be dissimilar to any of the earlier goods in Classes 30 and 31. The fact that spices and sugar might be used to season or sweeten a rice dish cannot suffice to establish a relevant similarity and the remaining goods all concern various types of beverages that differ from rice and rice foodstuffs not only in nature but also in method of use.

Comparison of the signs

17. The comparison of the conflicting marks shall assess the visual, aural or conceptual similarity of the marks in question, based on the overall impression given by the marks and bearing in mind, in particular, their distinctive and dominant elements (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28 and more recently 14/11/2017, T-129/16, claranet (fig.) / CLARO et al. EU:T:2017:800, § 27 and the case-law cited). The assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 29; 28/04/2004, C-3/03 P, Matratzen, EU:C:2004:233, § 32).

18. The signs to be compared are:

    Contested application	EarlierEUTM
    SPEENGHAR UK

19. The contested mark consists of the words ‘SPEENGHAR UK’. The relevant end consumer outside the UK is unlikely to attribute any meaning to the letters ‘UK’ since the abbreviation used in trade internationally is ‘GB’ for ‘Great Britain’ and not ‘UK’. For the majority of the relevant public, both elements of the sign therefore have equal weight in the overall impression.

20. The earlier mark is a figurative sign. It consists essentially of an orange rectangle divided into two almost identical mirror images of various word and graphic elements and which are linked by a pointed figurative element formed by three stripes in the colours black, red and green. The left-hand image shows a rectangle with a naturalistic depiction of a wild brown horse with black mane moving from left to right in a landscape of paddy fields, mountains and several snow-covered peaks under a blue sky. Placed against this blue sky is a red label shape with gilt-edged binding that shows the words ‘SPIN GHAR’ in blue bold letters. There are also several round icons reminiscent of food quality labels and seals as well as dates and wording containing product information. The right-hand side of the mark is an exact mirror image of the left-hand side but with the word elements depicted in what appears to be Arabic. Overall, the mark appears to show the two sides of a label for a packaging of rice with product indications both in English and Arabic. Given the numerous figurative elements of the marks that cannot said to be commonplace in relation to the goods at issue, consumers have no reason to focus their attention on the words ‘SPIN GHAR’ and hence there is no element in the earlier mark that will be perceived as more dominant than the others.

21. Visually, the signs differ in the numerous figurative elements of the earlier mark that have no counterpart in the contested application. The only coincidence is limited to some letters of the word elements ‘SPIN GHAR’ of the earlier mark and the word ‘SPEENGHAR’ of the application. However, in the overall impression of the earlier mark, ‘SPIN GHAR’ accounts for only a rather insignificant part and the application contains the additional letters ‘UK’ which are not to be found in the earlier mark. Overall, the signs are visually dissimilar.

22. Aurally, the signs are similar only to the extent that the earlier mark will be referred to as ‘SPIN GHAR’ and not by making reference to its numerous figurative elements, in particular the wild brown horse. In this case, pronunciation of ‘SPEENGHAR’ and ‘SPIN GHAR’ coincides in the starting sound ‘SP’ and the second syllable ‘GHAR’, but differs in the middle sound ‘EEN’ versus ‘IN’ and the additional element ‘UK’ of the application, if pronounced. Overall, the degree of phonetic similarity is not more than average.

23. Conceptually, neither signs has a meaning in relation to the goods at issue. In combination with the word ‘GHAR’ which is not an English term, consumers have no reason to understand the word ‘SPIN’ as referring to the English verb ‘to spin’. No different result applies when assuming that part of the relevant public might recognize ‘SPEENGHAR’ and ‘SPIN GHAR’ as the name of the Spīn Ghar mountain range in Afghanistan, because the name of a mountain as such has no conceptual meaning that could give rise to a conceptual comparison.

Overall assessment of the likelihood of confusion

24. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

25. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

26. The level of attention of the relevant public for the conflicting goods, which target the public at large, is normal.

27. The inherent distinctiveness of the earlier mark is normal. Enhanced distinctiveness has not been proven. The opponent did not submit a single piece of evidence that could demonstrate the market share held by the earlier mark, the intensity, geographical extent and duration of its use, the size of investment made by the undertaking in promoting it and the proportion of the relevant section of the public which, because of the mark, identifies the relevant goods as originating from a particular undertaking (see 14/09/1999, C-375/97, Chevy, EU:C:1999:408, §§ 22-27; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

28. Taking into account the normal distinctiveness of the earlier mark, the visual dissimilarity and the average phonetic similarity of the signs, there exists no likelihood of confusion even for the identical goods. The earlier mark contains various word and figurative elements that in their entirety create an overall impression which is different from that of the contested sign and which will allow consumers to safely distinguish the signs even when affixed to identical goods. Given the nature of the goods, which are foodstuffs generally sold side by side in supermarkets and groceries and not ordered orally over the counter, the phonetic similarity is of limited significance in the overall assessment and, on its own, insufficient to justify the findings of a likelihood of confusion (18/11/2013, T-377/10, Jambo Afrika, EU:T:2013:600, § 61).

Article 8(5) EUTMR

29. The opposition based on Article 8(5) EUTMR must fail from the outset because the opponent did not provide any evidence to prove the enhanced distinctiveness let alone reputation of the earlier trade mark. Reputation of the earlier trade mark is one of a number of cumulative criteria, and failure to satisfy it is sufficient to render that provision inapplicable (25/05/2005, T-67/04, SpaFinders, EU:T:2005:179, § 30).

30. Consequently, the opposition fails on both grounds of opposition invoked and the appeal is to be dismissed.

Costs

31. Since the appellant (opponent) is the losing party within the meaning of Article 109(1) EUTMR, it must bear the costs of the opposition and appeal proceedings.

Fixings of Costs

32. In accordance with Article 109(7) EUTMR and Article 18(1)(c)(i) and (iii) EUTMIR, the Board fixes the representation costs to be paid by the appellant to the defendant at the amount of EUR 300 for the opposition proceedings and of EUR 550 for the appeal proceedings. The total amount is EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the opposition and appeal proceedings;

3. Fixes the amount of costs to be paid by the appellant to the defendant for the opposition and appeal proceedings at EUR 850.

Signed D. Schennen

Signed E. Fink

Signed L. Marijnissen

Registrar: Signed H.Dijkema