OPPOSITION No B 3 021 584

Blue Diamond Growers, Corporation, 1802 C Street, 95811, Sacramento, United States of America (opponent), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft Mbb, Bavariaring 11, 80336 Munich, Germany (professional representative)

a g a i n s t

Fruta De Andalucia S. Coop. And. Paraguay 16 21800 Moguer/Huelva, Spain (applicant), represented by Newpatent Puerto 34, 21001 Huelva, Spain (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 584 is upheld for all the contested goods and services, namely

Class 31: Unprocessed blueberries; fresh cranberries.

Class 35: Retail services in relation to horticulture products; wholesale services in relation to horticulture products; all of the services solely and exclusively in relation to products made from raw, fresh and unprocessed blueberries.

2. European Union trade mark application No 17 335 101 is rejected for all the contested goods and services. It may proceed for the remaining non-contested services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 335 101, for the figurative mark , namely against all the goods in Class 31 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 6 739 387, for the figurative mark . 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.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. However, as already communicated by the Office, the request for proof of use concerning two of these trade marks cannot be taken into account because it concerns marks that, at the date of filing of the contested trade mark, had not been registered for at least five years.

Therefore, for reasons of economy of proceedings, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 6 739 387, for the figurative mark , which is not subject to a proof of use obligation.

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

Class 31: Fresh fruits and vegetables and nuts including fresh products containing nuts (as far as included in class 31), especially unprocessed edible nuts; edible seeds.

After limitation requested by the applicant on 08/01/2019, the English version of the list of the contested goods and services reads as follows:

Class 31: Unprocessed blueberries; fresh cranberries.

Class 35: Retail services in relation to horticulture products; wholesale services in relation to horticulture products; all of the services solely and exclusively in relation to products made from raw, fresh and unprocessed cranberries.

The above limitation was filed in Spanish and was aimed at limiting the services of the class 35 by the expression todos los servicios relacionados unica y exclusivamente con productos de arándanos crudos, frescos y sin elaborar. Considered that the English translation of the Spanish word ‘arándanos’, as such, is ‘blueberry’, the inclusion of the word ‘cranberry’ in the English version of the list of services is the result of an obvious clerical mistake of the Office when translating the proposed limitation into English. Therefore, the limitation of the list of the contested services should read all of the services solely and exclusively in relation to products made from raw, fresh and unprocessed blueberries, and will be compared as such.

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

The terms including and especially used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. Therefore, contrary to the applicant’s view, these terms introduce a non-exhaustive list of examples.

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 unprocessed blueberries; fresh cranberries are included in the broad category of the opponent’s fresh fruits. Therefore, they are identical.

Contested services in Class 35

The contested retail services in relation to horticulture products; wholesale services in relation to horticulture products; all of the services solely and exclusively in relation to products made from raw, fresh and unprocessed blueberries are similar to a low degree to the opponent’s fresh fruits. This is because retail/wholesale services concerning the sale of particular goods are similar (to a low degree) to those particular goods (05/05/2015, T 715/13, Casteilo (fig.) / Castello 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, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they can target the same public. The goods covered by the retail/wholesale services and the specific goods covered by the other mark have to be identical 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. In the present case, the opponent’s broad category of fresh fruits covers all types of unprocessed and fresh fruits and consequently includes raw, fresh and unprocessed blueberries.

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, all the goods and some of the services (being retail services) found to be identical or similar to a low degree are directed at the public at large. In relation to these goods and services, the degree of attention will be average.

The remaining wholesale services which were found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise. In respect to these services, the degree of attention will be higher than average.

3. The signs

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).

The earlier mark is a figurative mark composed of the verbal elements ‘BLUE DIAMOND’ depicted in white standard typeface and underlined by a white curved line on a rhomboidal type black background. There are no elements in this mark that are more dominant or eye-catching.

The contested sign is a figurative mark of hexagonal shape encompassing the verbal elements ‘BLUE DIAMOND’ in a golden slightly stylised typeface accompanied by the Spanish expression ‘la joya de las berries’ in significantly smaller letters and with a figurative element depicting a diamond with a leave on top of it. All of these elements are placed on a decorative background in shades of blue and violet resembling a diamond. The mark also include a golden circle encompassing the Spanish expression ‘Fruta de Andalucia’ in a slightly stylised red and green typeface with a stylised depiction of a red fruit, possibly a strawberry, with a green leaf on top.

Given their size, pale colour and position, the Spanish expression ‘la joya de las berries’ and the figurative element depicting a diamond with a leave on top of it are secondary in comparison to the other elements of the contested sign.

As the meaning of the differing expressions ‘la joya de las berries’ and ‘Fruta de Andalusia’ of the contested sign can affect their distinctiveness, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for which a likelihood of confusion might be higher.

The common verbal element ‘BLUE’, is a basic English word and therefore generally comprehensible by the public in the entire relevant territory (see by analogy, 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 45). As a consequence, the relevant public, albeit not English-speaking, will be able to grasp the meaning of this element, as an adjective referring to a basic colour.

The common verbal element ‘DIAMOND’ designates a precious stone for the English-speaking public. Furthermore, the meaning of this word will also be perceived by the Spanish-speaking public in the relevant territory, since it can be considered as a word forming part of the basic vocabulary of the English language and it is close to the word ‘diamante’ having the same meaning in Spanish (03/05/2018, T-234/17, DIAMOND ICE / DIAMOND CUT, ECLI:EU:T:2018:259, § 39).

Considering that the meaning of the common expression ‘BLUE DIAMOND’ does not describe or allude to the goods and services in question, it has an average degree of inherent distinctiveness.

Although it does not constitute a basic shape, the rhomboidal type figurative element in the earlier mark presents a very limited stylisation and will be perceived as serving a decorative function. Therefore, the most distinctive element in the earlier mark is the verbal element ‘BLUE DIAMOND’.

In the contested sign the Spanish expression ‘la joya de las berries’ (meaning ‘the jewel of the berries’) included in the contested sign constitutes a laudatory slogan for the relevant public since it alludes to the quality of the relevant goods which are also the object of the relevant services.

The Spanish expression ‘Fruta de Andalucia’ (meaning ‘fruit of Andalusia’) is clearly non-distinctive for the relevant public since it describes the goods in question (which are also the object of the relevant services) and their geographical provenience.

The figurative element depicting a diamond with a leave on top of it in the contested sign does not evoke any clear meaning in relation to the goods and services in question. Therefore, it has an average degree of distinctiveness.

The figurative element depicting a stylised red fruit is weak since it alludes to the goods and services in question.

The background resembling a diamond, despite presenting a certain degree of stylisation, will be perceived as serving a decorative function.

Visually, the signs coincide in the words ‘BLUE DIAMOND’ being the sole verbal element of the earlier mark and its most distinctive element. The signs differ in the rhomboidal figurative element which serves as a background in the earlier mark and in all the additional figurative and verbal elements of the contested sign, namely, the expressions ‘la joya de las berries’ and ‘Fruta de Andalucia’, the depiction of the diamond and of a red fruit as well as the hexagonal background. The signs also differ in the stylisation of the respective verbal elements.

Reference is made to the previous assertions concerning the distinctiveness of the elements composing the signs under comparison.

It must be noted that when signs consist of both verbal and figurative components, 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; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in in the sound of the letters composing the words ‘BLUE DIAMOND’ being the sole verbal element and the most distinctive element of the earlier mark. The pronunciation differs in the additional expressions ‘la joya de las berries’ and ‘Fruta de Andalucia’ included in the contested signs which are however secondary and non-distinctive or of lower than average distinctiveness.

Moreover, due to their size and the fact that they are respectively composed of a descriptive indication and of a laudatory slogan, they most likely will not be pronounced.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, the common element ‘BLUE DIAMOND’ introduces the concept of a blue diamond gem. Such a concept is reinforced in the contested sign by the figurative element depicting a diamond (albeit with a leave on top of it), by the laudatory slogan and by the decorative diamond background. The differing concepts introduced by the additional elements in the contested sign (i.e. the concept of fruit, berries and leaves) are non-distinctive and, therefore, will have a very limited impact.

Therefore, the signs are conceptually highly similar.

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.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As shown above, the relevant goods and services are identical or similar to a low degree. Some of them are directed at the public at large who will display an average degree of attention while some are directed to the professional public who will display a higher than average degree of attention The earlier mark has an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs are aurally and conceptually highly similar (if not identical at an aural level) and visually at least similar to a low degree. Their similarity results from the fact that the sole verbal element of the earlier mark is entirely reproduced in the contested sign as a distinctive and independent and observable element.

It is true that there are some additional elements in the contested sign, and that the common element ‘BLUE DIAMOND’ is depicted with different stylisations in both signs under comparison. Nevertheless, these differing elements are incapable of sufficiently differentiating the signs. In particular, the additional verbal elements of the contested sign are secondary and/or non-distinctive, or have a lower than average degree of distinctiveness, while the remaining elements, namely the differing stylisations of the signs and the figurative elements of the contested sign, will have a limited impact. As already explained, verbal components of a sign usually have a stronger impact on the consumer than the figurative component.

It is common practice, for manufacturers to make variations of their trade marks, for example, altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logos and other devices. Therefore, when encountering the conflicting signs, the relevant consumers who only rarely have the chance to directly compare two trade marks and must rely on the imperfect recollection that they have kept in their mind, are likely to mentally register that the verbal element ‘BLUE DIAMOND’ is common to both signs. As a result, they will perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same or economically linked commercial origin to the relevant goods and services, even when it displays a higher than average degree of attention.

Considering all the above, there is a likelihood of confusion for the Spanish-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.

Applying the aforementioned principle of interdependence, and taking into account the degree of attention of the relevant public, it is considered that the high degree of aural and conceptual similarity between the signs is sufficient to offset the low degree of similarity between some of the goods. Therefore, there is a likelihood of confusion, including for the services that are similar to a low degree.

Therefore, the opposition is well founded, on the basis of the opponent’s European Union trade mark registration No 6 739 387. It follows that the contested trade mark must be rejected for all of the contested goods and services.

As the earlier European Union trade mark registration No 6 739 387 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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.

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, 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

Nicole CLARKE

Rosario GURRIERI

Erkki MÜNTER

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.