OPPOSITION No B 3 049 437

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen, Germany (professional representative)

a g a i n s t

Bonnat Chocolatier, 10 Cours Senozan, 38500 Voiron, France (applicant), represented by Cabinet Hecke, 28 Cours Jean Jaurès, 38000 Grenoble, France (professional representative).

On 06/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 437 is partially upheld, namely for the following contested goods:

Class 30: Chocolate; Chocolate powder; Chocolate topping; Chocolate syrup; Drinking chocolate; Chocolate beverages with milk; Cocoa; Cocoa powder; Cocoa-based beverages; Cocoa-based ingredients for confectionery products; Artificial coffee; Cocoa; Coffee; Tea.

2. European Union trade mark application No 17 589 706 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 30: Chocolate bars; Chocolate candies; Filled chocolate; Pralines; Caramels; Chocolate chips; Chocolate slabs; Truffles [confectionery]; Filled chocolate bars; Chocolate-coated nuts; Candy with cocoa; Pastries; Confectionery; Confectionery (sweets).

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 589 706 ‘MORENITA’ (word mark). The opposition is based on German trade mark registration No 307 02 839 (figurative mark) and German trade mark registration No 307 02 840 (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 the trade marks on which the opposition is based, namely German trade mark registration No 307 02 839 and German trade mark registration No 307 02 840 .

The date of filing of the contested application is 13/12/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 13/12/2012 to 12/12/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

DE No 307 02 839 and DE No 307 02 840:

Class 30: Coffee, Coffee-based products and beverages with proportion of coffee, Cocoa-based beverage powder.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 04/02/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 09/04/2019 to submit evidence of use of the earlier trade marks. This term was extended until 09/06/2019 at the opponent’s request. On 02/05/2019, within the time limit, the opponent submitted evidence of use.

The evidence consists of the following:

 Annex 1: Pages 4-6: Affidavit dated 26/04/2019 by a proxy holder of the opponent. The affidavit provides information in relation to the use of the marks in Germany during the relevant period, such as minimum sales figures, minimum quantity figures, advertising, labelling, etc. In addition, it explains and refers to all the enclosed Annexes. It also mentions that sales and distribution were carried out by other sales companies of the ALDI North Group of companies and that the opponent consented in advance to that use.

 Annex 2: Pages 7-68: 20 copies of extracts from advertising in magazines showing ‘Moreno’ coffee goods. The advertisements were published as newspaper supplements or placed as handouts in ALDI retail stores in Germany in the period 2013 to 2017 (62 pages).

 Annex 3: Pages 69-119: 16 overviews of newspapers in which the corresponding advertising in magazines (of Annex 2) of ‘Moreno’ goods were added as newspaper supplements. The overviews show the publishing company as well as the title of the newspapers (51 pages).

 Annex 4: Pages 120-126: 7 copies of advertisements of ‘Moreno’ coffee published in various newspapers in Germany in 2013 to 2017 (7 pages).

 Annex 5: Pages 127-132: 6 overviews of newspapers in which advertisements of ‘Moreno’ goods were published, together with publication dates and circulation figures (6 pages).

 Annex 6: Pages 133-140: 8 copies of the packaging of ‘Moreno’ goods (8 pages).

 Annex 7: Pages 141-166: 26 pictures from an exemplarily retail store in Weyhe, Germany (Industriestraße 16, 28844 Weyhe) showing store shelves and pictures of ‘Moreno’ goods (26 pages).

 Annex 8: Pages 167-331: 124 invoices dated between December 2012 – November 2017, issued from various suppliers to the ALDI Group companies in Germany itemising the sale of, inter alia, ‘Moreno’ coffee (165 pages).

 Annex 9: Pages 332-342: 11 copies of sales receipts dated in 2016 and 2017 showing exemplary sales of ‘Moreno’ goods, namely ‘coffee pads’ (Article nos. 9076, 3099, 3436), ‘café crema’ (Article no. 3317), ‘bio café crema’ (Article no. 3953) and ‘caffé espresso’ (Article no. 3318) (11 pages).

 Annex 10: Pages 343-352: 10 copies of printouts from www.aldi-nord.de, showing various ‘Moreno’ goods available for sale, including prices thereof (10 pages).

 Annex 11: Pages 353-360: Extract from an article dated 12/2016 from the German consumer organisation ‘Stiftung Warentest’ showing a product comparison concerning ‘Espresso’ coffee. The comparison includes ‘Moreno’, as well as other trade marks such as ‘Lavazza’, ‘Dallmayr’, ‘illy’, ‘McDonald’s McCafe’, ‘Gepa’, ‘Starbucks’, etc. (8 pages).

The applicant argues that the opponent did not submit translations of some of the evidence of use. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, the invoices, advertisements, packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. In addition, the opponent provided partial translation of some of the relevant parts of the evidence.

Some of the evidence of use filed by the opponent does not originate from the opponent itself but from another company/ies. As explained by the opponent, however, such use was made with its consent. According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. Consequently, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

As far as the affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The documents, such as the invoices, advertising material, pictures, product packaging, etc. show that the place of use is Germany. This can be inferred from the language of the documents and the addresses indicated. Therefore, the evidence relates to the relevant territory. The documents filed fall within or can safely be attributed to refer to use within the relevant period of time.

The evidence provided, for example the invoices, product advertisements, sales figures and sales receipts, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s registered marks are and . The evidence shows uses such as , , , . The Opposition Division considers the evidence shows that the marks are used primarily as registered. Indeed, as regards the registered mark , in some of the documents the two lines are either not included or there are two additional curvy lines on top and at the bottom, but these variations do not alter the distinctive character of the mark as registered, since the word element ‘Moreno’, being the most distinctive of both earlier marks, is clearly legible and is prominently shown. The addition or omission of some purely graphical features such as lines and outlines in colour, are purely banal and decorative figurative elements that appear commonly on packages of goods and do not alter the distinctive character of the registered trade marks.

In view of the above, the Opposition Division considers that the evidence shows use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence shows genuine use of the trade mark for coffee packed in various forms, namely coffee capsules, coffee pads, coffee beans espresso, coffee beans creamy. These goods belong to the following category in the specification: Coffee. As the opponent is not required to prove all the conceivable variations of the category of Coffee for which the earlier marks are registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broader category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for Coffee.

The opponent argues that the evidence also proves use for Coffee-based products. However, the evidence does not show use in relation to any products other than coffee. Therefore, in the lack of evidence to the contrary, this argument is rejected as unfounded and unsupported by the evidence.

Therefore, in its further examination of the opposition, the Opposition Division will only consider the abovementioned goods for which proof of use was demonstrated.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 307 02 839.

a) The goods

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

Class 30: Coffee.

The contested goods are the following (the list of goods in English, as it appears translated):

Class 30: Chocolate; Chocolate bars; Chocolate candies; Chocolate powder; Filled chocolate; Pralines; Caramels; Chocolate topping; Chocolate chips; Chocolate syrup; Chocolate bars; Truffles [confectionery]; Filled chocolate bars; Drinking chocolate; Chocolate beverages with milk; Chocolate-coated nuts; Cocoa; Candy with cocoa; Cocoa powder; Cocoa-based beverages; Cocoa-based ingredients for confectionery products; Pastries; Confectionery; Confectionery; Artificial coffee; Cocoa; Coffee; Tea.

As to the wording of the contested goods and as correctly pointed out by the applicant, the term Confectionery was included twice in the translated English version of the list of goods. However, in the original list of goods in French, it is clear that there is no such repetition and two distinct terms were used (confiseries; sucreries). In the present case, French is the first language of the application and since it is one of the five Office languages, the first language version of the list of goods prevails. Therefore, in order to reflect it and as suggested by the applicant, the Opposition Division has added the term ‘sweets’ in brackets, namely Confectionery; Confectionery (sweets) (see list below).

Likewise, in the translated English version of the list of goods the term Chocolate bars was included twice, whereas the corresponding French terms are barres de chocolat and tablettes de chocolat. Therefore, as suggested by the applicant, these terms have been specified as Chocolate bars and Chocolate slabs.

Therefore, the list of contested goods reads as follows:

Class 30: Chocolate; Chocolate bars; Chocolate candies; Chocolate powder; Filled chocolate; Pralines; Caramels; Chocolate topping; Chocolate chips; Chocolate syrup; Chocolate slabs; Truffles [confectionery]; Filled chocolate bars; Drinking chocolate; Chocolate beverages with milk; Chocolate-coated nuts; Cocoa; Candy with cocoa; Cocoa powder; Cocoa-based beverages; Cocoa-based ingredients for confectionery products; Pastries; Confectionery; Confectionery (sweets); Artificial coffee; Cocoa; Coffee; Tea.

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 30

Coffee is identically contained in both lists of goods.

The contested Artificial coffee is highly similar to the opponent’s Coffee, as they usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested Tea; Cocoa (repeated twice; in the original French version as well) are similar to the opponent’s Coffee. These sets of goods usually coincide in relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested Chocolate; Chocolate topping; Chocolate syrup; Drinking chocolate; Chocolate beverages with milk; Chocolate powder; Cocoa powder; Cocoa-based beverages; Cocoa-based ingredients for confectionery products are all goods that are cocoa- or chocolate-based beverages or related liquids, or are in powder or syrup form and are used for preparing or flavouring such beverages. These contested goods are similar to at least a low degree to the opponent’s Coffee, as they usually coincide in relevant public, distribution channels and/or method of use. Furthermore, some of them are in competition.

The remaining contested goods, however, namely Chocolate bars; Chocolate candies; Filled chocolate; Pralines; Caramels; Chocolate chips; Chocolate slabs; Truffles [confectionery]; Filled chocolate bars; Chocolate-coated nuts; Candy with cocoa; Pastries; Confectionery; Confectionery (sweets) are not similar to the opponent’s Coffee. These sets of goods differ in nature. The contested goods are not consumed as beverages and their intended purpose is not preparation of beverages or drinks. These goods differ from the opponent’s goods in purpose and method of use. These goods are neither in competition, nor complementary and their commercial origin is usually distinct.

In support of its observations, the opponent quotes the following decision of the General Court, namely T-498/18 of 24/10/2019, Moreno/Happy Moreno choco, EU:T:2019:763). Indeed, in that judgment the Court finds that the goods ‘confectionery, sweetmeats [candy], wafer biscuits, wafer rolls, pastries’ and ‘coffee, coffee-based beverages or cocoa-based beverage powder’ are similar (see § 65). In particular, the following is stated (see § 64, Moreno case):

However, as regards distribution channels, it must be noted, as was observed by EUIPO, that the applicant accepts that the goods at issue are likely to share the same distribution channels and does not dispute that they are intended for the same consumers. In addition, the goods covered by the marks at issue are generally displayed, particularly in supermarkets, in the same or nearby sections, so that the relevant public is likely to believe that they may come from the same producers (see, to that effect, judgment of 26 April 2016, Franmax v EUIPO — Ehrmann (Dino), T-21/15, not published, EU:T:2016:241, § 27).

However, the Opposition Division does not consider that these findings can be automatically transposed to the comparison of goods in the present opposition case. As correctly noted by the Court (at § 65, Moreno case),

As regards the complementarity of those goods, it must be noted that, although confectionery, candy, wafer biscuits, wafer rolls and pastries may be accompanied by beverages, their use is neither indispensable nor important for the consumption of coffee, coffee-based beverages or cocoa-based beverage powder or vice versa, even if the relevant public would be likely to consume them together (28 October 2015, MoMo Monsters, T-736/14, not published, EU:T:2015:809, § 28 and 29).

Furthermore, in relation to the ‘distribution channel’ factor, the Opposition Division notes that too much emphasis should not be placed on this factor, as modern supermarkets, drugstores and department stores sell goods of all kinds. The relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a common origin merely because they are sold at the same outlet.

Only where the goods in question are offered in the same section of such shops, where homogeneous goods are sold together, will this favour similarity. In such cases it must be possible to identify the section by its territorial and functional separation from other sections (e.g. dairy section of a supermarket, the cosmetics section of a department store) (see Guidelines for Examination in the Office, Part C Opposition, Section 2 Double identity and likelihood of confusion, Chapter 2 Comparison of goods and services).

In the present case, the Opposition Division is of the opinion that the opponent’s coffee is usually not found in the same sections of shops as confectionery goods or chocolates. The fact that these goods can be found in nearby sections of supermarkets is not sufficient, in the Opposition Division’s view, for arguing that consumers will therefore consider that the goods share a common commercial origin. It cannot be denied that there are a multitude of different products originating from different undertakings that may be found in nearby sections in supermarkets and it is rather unlikely that consumers would consider all those goods to be produced by the same undertakings on this basis.

Moreover, the General Court also stated the following in relation to ‘coffee-based beverages’ vs. ‘confectionery’ (28/10/2015, MoMo Monsters, T-736/14, not published, EU:T:2015:809, § 30)

Fifth, the Court cannot uphold the applicant’s argument that the similarity between the goods at issue results in particular from the fact that they are sold in the same commercial establishments, share the same distribution channels and are intended for the same consumers. In the first place, it must be stated that the evidence put forward by the applicant with regard to the identical nature of the distribution channels relates only to certain specific outlets (see, by analogy, judgment of 24 March 2010 in 2nine v OHIM — Pacific Sunwear of California (nollie), T‑364/08, EU:T:2010:115, paragraph 39). Next, it should be recalled that the fact that the goods may be sold in the same commercial establishments, such as coffee chains, is not particularly significant, since very different kinds of goods can be found in those outlets, without consumers automatically attributing the same origin to them (see, to that effect, judgment of 26 October 2011 in Intermark v OHIM — Natex International (NATY’S), T‑72/10, EU:T:2011:635, paragraph 37 and the case-law cited). Finally, in the light of the assessments carried out in paragraphs 23 to 29 above, it must be held that, even if the goods at issue are intended for the same consumers, the Board of Appeal acted correctly in concluding that those goods differed in nature and purpose and were neither complementary nor in competition.

Although the judgment quoted by the opponent, namely, 24/10/2019, T-498/18, Moreno/Happy Moreno choco, EU:T:2019:763, as well as the closely related judgment of 24/10/2019, T-708/18, Moreno/Flis Happy Moreno choco, EU:T:2019:762, are relatively recent, the General Court did not explain therein and failed to give any reasons as to why it found it appropriate to deviate from the findings, such as those in the abovementioned MoMo Monsters case (28/10/2015, T-736/14).

In addition, as regards the producers of the goods in the present case, it is noted that the relevant public will perceive goods as having a common commercial source only when 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 (see to this effect, 11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

In this respect, although it cannot be excluded that some (the commercially most successful) manufacturers may produce both categories of goods under comparison, their usual commercial origin cannot be considered to be the same and the opponent has not submitted any evidence to the contrary.

As mentioned, the above quoted Moreno judgements do not explain why there is a deviation from previous judgements. In case their line of reasoning is strictly followed by the Opposition Division, potentially all foodstuffs sold in a supermarket can end up being established similar, as they are all found in nearby sections and in the same retail outlets.

In view of all the above reasons and findings, the Opposition Division considers that the contested Chocolate bars; Chocolate candies; Filled chocolate; Pralines; Caramels; Chocolate chips; Chocolate slabs; Truffles [confectionery]; Filled chocolate bars; Chocolate-coated nuts; Candy with cocoa; Pastries; Confectionery; Confectionery (sweets) are dissimilar to the opponent’s Coffee. As outlined above, these sets of goods differ in nature, purpose, methods of use, they are not in competition or complementary and their commercial origin is usually not the same.

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

c) The signs

	MORENITA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 figurative and consists of the verbal element ‘Moreno’, written in a fairly standard font. The letters appearing in the middle are slightly smaller than the remaining letters and the word is in grey colour on a black background framed by a grey border. The contested sign is a word mark and consists of the verbal element ‘MORENITA’.

The earlier mark has no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

The verbal elements ‘Moreno’ and MORENITA’ included in the signs have no meaning in the relevant territory and their inherent distinctiveness is normal in relation to the goods.

As to the figurative elements of the earlier mark, such as the background, colours and font of the letters, these elements will be seen as purely decorative, as they are ordinary shapes and/or commonplace. Therefore, these elements will hardly be attributed any distinctiveness.

Furthermore, when signs consist of both verbal and figurative components, in principle, 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). Therefore, the word element in the earlier mark is more distinctive and more important than the figurative elements.

Visually, the signs coincide in their beginnings, namely in the sequence of letters ‘Moren-’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (top to bottom), which makes the part placed at the left of the sign (the initial/upper part) the one that first catches the attention of the reader. Furthermore, the coincidence is found in the only verbal and most distinctive element of the earlier mark and coincides with the only element of the contested sign. The signs differ in their last letters (‘O’ in the earlier mark vs. ‘ITA’ in the contested sign), as well as in the additional barely distinctive and decorative figurative elements of the earlier mark. Consequently, taking into account the fact that the coincidences between the signs are in their beginning and in a distinctive element, as well as the certain visual differences and their respective weight, it is concluded that the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MOREN-’ of their inherently distinctive verbal elements ‘Moreno’ and ‘MORENITA’ and differs in the sound of the final letters ‘O’ and ‘ITA’, respectively. Therefore, taking into account the fact that the coincidences between the signs are in their beginning but also accounting for the differences at their ends, it is considered that the marks are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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 some barely distinctive, if at all, figurative elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and similar (to a high, normal and at least low degree), and partly dissimilar to the opponent’s goods. The relevant public is the public at large and the degree of attention is average. The inherent distinctive character of the earlier mark is normal.

The signs are visually similar to an above average degree and they are aurally similar to at least an average degree. The conceptual aspect is neutral and does not influence the assessment of the similarity of the signs.

The main coincidences in the signs occur in the beginnings of their inherently distinctive verbal elements. While it is true that the signs differ in their ends and in the barely distinctive figurative elements of the earlier marks, the coincidences in the marks clearly prevail. Furthermore, 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).

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).

Considering all the above, there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 307 02 839.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those 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.

The opponent has also based its opposition on the following earlier trade mark German trade mark registration No 307 02 840. Proof of use was requested and examined above and it was found that the evidence shows genuine use of the trade mark for Coffee. Therefore, since this mark covers the same scope of goods as the one which has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Reiner SARAPOGLU

Liliya YORDANOVA

Jakub MROZOWSKI

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.