OPPOSITION No B 3 057 060

Diego Calabria Alvarez, c/ Venero, nº 4, 10129 Berzocana (Caceres), Spain (opponent), represented by A.A. Manzano Patentes & Marcas, S.L., Avda. Pedro Díez, 21, Duplicado 1º, Oficina 9, 28019 Madrid, Spain (professional representative)

a g a i n s t

Oleifici Sita' S.r.l, Via Roma, snc, 89040 Agnana Calabra (RC), Italy (applicant).

On 31/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 060 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 598 004 for the figurative mark , namely against all the goods in Class 29. The opposition is based on the Spanish trade mark registration No 2 523 305 for the figurative mark . The opponent invoked Article 8(1)(a) and (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

The goods which the opposition is based are the following:

Class 29: Cheeses and milk products.

The contested goods are the following:

Class 29: Edible oils, Edible oils for use in cooking, Cooking oil, Edible oils for glazing food, Vegetable oils for food, Oils for food, Olive oil, Olive oil for food, Extra-virgin olive oil and edible olive oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Truffle oil based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Flavoured oil based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Mixed vegetable oils for culinary purposes based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Hydrogenated oils for food; Hardened oils (hydrogenated oil for food) and solidified oils for food based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Spiced oils based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Chilli oil based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Blended oil (for food) based on oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Onions preserved in oil conforming to the guidelines of the protected geographical indication "Olio di Calabria"; Edible fats; Butter for use in cooking; Fat-containing mixtures for bread slices; Animal oils for food; Groundnut oil; Butter oil; Coconut oil for food; Organic coconut oil for culinary purposes; Colza oil for food; Rice bran oil for food; Camellia seed oil for food; Sunflower oil for food; Maize oil for food; Nut oils; Palm kernel oil for food; Peanut oil [for food]; Canola oil; Linseed oils [edible]; Palm oil for food; Grapeseed oil; Pumpkin seed oil for food; Sesame oil for food; Soybean oil; Soybean oil for cooking; soy bean oil for food; Butter preparations; Coconut oil for food; Maize oil for food; Maize oil for food; Sesame oil for food; Sunflower oil for food; Sunflower oil for food; Colza oil for food; Maize oil for food; Olives stuffed with feta cheese in sunflower oil; Linseed oil for culinary purposes; Olives stuffed with pesto in sunflower oil.

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.

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 assumed to be identical are directed at the public at large with a degree of attention which varies from low to average as some of the goods are cheap mass consumption goods.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark is a figurative mark consisting of a circular label. In the upper centre of the circle there are two verbal elements ‘CALABRIA’ and ‘TRADICIÓN’ which are depicted in a fairly standard typeface and in capital letters. The rest of the circle, composing the majority of the sign, is covered by a figurative element representing a rustic and mountainous landscape where some sheep or mountain goats can be seen at the bottom of the logo. As the corresponding goods are milk products and cheese, this element is considered to be very weak, since it constitutes a typical representation for cheese and milk products.

The word ‘CALABRIA’ will be understood by the relevant public as a well-known region in southern Italy. As such, it is indicative of the geographical provenance of the goods in question, namely that they come from the region of Calabria (14/05/2013, T-19/12, IKFŁT KRAŚNIK, EU:T:2013:242, § 49; 29/10/2015, T-256/14, CREMERIA TOSCANA, EU:T:2015:814, § 39; 04/09/2017, R 621/2017-5, JADED LONDON (fig.). Therefore, ‘CALABRIA’ is devoid of any distinctive character.

The verbal element ‘TRADICIÓN’ will be perceived by the relevant public as transmission of news, literary compositions, doctrines, customs, etc., made from generation to generation (information extracted from Real Academia Española at https://dle.rae.es/tradici%C3%B3n?m=form on 25/03/2020). Consequently, in combination with the other verbal element in the earlier mark, the public will understand that the products are traditionally produced in or from Calabria or that they are traditional Calabrian products. Therefore, ‘TRADICIÓN’ has at most a weak distinctive character.

The earlier sign has no element that is more dominant (visually eye-catching) than other elements.

The contested sign is also a figurative mark composed of the verbal element ‘CALABRIA’, which is clearly the dominant element due to its bigger size, central position and being depicted in bold black capital letters. Above this verbal element, in a smaller font, the word ‘ciao’ is depicted. Although ‘ciao’ of the contested sign does not exist as such in the relevant language, due to is closeness to the Spanish word ‘chao’ it can be easily assumed that the relevant public will associate it with the expression ‘goodbye’ or ‘see you later’; it is considered to be distinctive to an average degree.

The previous assertions concerning the distinctiveness of the element ‘CALABRIA’ in the earlier mark are equally valid for the identical verbal element in the contested sign.

These verbal elements are accompanied by a figurative element that represents a sunset/sunrise where the sea and three hills or dunes can be seen, depicted in a simple way. The verbal element ‘CALABRIA’ is placed over the horizon of the sea and the word ‘ciao’ inside the setting/rising sun. These figurative elements are of a low distinctive character as they allude to the place where the goods applied for originate and the representation of a southern landscape is commonly used to indicate a natural origin of the relevant goods, mainly olive oil. Furthermore it in a certain way these elements reinforce the message conveyed by the element CALABRIA.

Visually, both signs coincide in the verbal element ‘CALABRIA’ which is not distinctive. However they differ in the position of this coinciding verbal element within the conflicting signs. ‘CALABRIA’ in the earlier mark is the first word of the sign and is depicted at the top. On the other hand, this verbal element in the contested sign is the second word of the sign and is depicted in the centre. All the remaining elements also differ (the figurative element representing a rustic and mountainous landscape and the second word element ‘TRADICION’ in the earlier mark and the sunset/sunrise and the verbal element ‘ciao’ of the contested sign). The different sizes, positions and elements within the conflicting signs are also relevant.

Therefore the signs are visually similar at most to low degree, to the extent that they coincide in the non-distinctive verbal element ‘CALABRIA’.

Aurally, the signs have the same pronunciation in the terms of the sound of the verbal element ‘CALABRIA’ in both signs. They differ in the position of the verbal element ‘CALABRIA’ (being the first word element in the earlier mark and the second in the contested sign), which gives them a different overall phonetic impression, and in the other verbal elements which make up the signs ‘TRADICIÓN’ and ‘ciao’.

As the figurative elements of both signs will not be pronounced and bearing in mind that the signs only coincide aurally in the non-distinctive verbal element ‘CALABRIA’, they are aurally similar to a lower than average degree.

Conceptually, although the signs share one same verbal element, ‘CALABRIA’, that will be associated with the meaning explained above, is not enough to establish the conceptual similarity, since this element is devoid of any distinctive character and cannot indicate the commercial origin.

In addition, the verbal elements of the earlier mark as a whole, ‘CALABRIA TRADICIÓN’, will be perceived by the relevant public as ‘customs made from generation to generation that come from the region of Calabria’. On the other hand, the verbal elements ‘ciao CALABRIA’ of the contested sign, will be perceived by the relevant public as ‘saying goodbye to the region of Calabria’.

Therefore, the signs are conceptually dissimilar because they overlap in a non-distinctive element and the differentiating elements convey different distinctive concepts, taking also into account the differing (weak) concepts introduced by the figurative elements 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, despite the presence of some weak and non-distinctive elements, 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 lower than average.

e) Global assessment, other arguments and conclusion

The likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade 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,‑ 39/97, Canon, EU: C: 1998: 442, § 17).

It has been assumed that the goods are identical and that they target the general public with a degree of attention which varies from low to average. The signs have been deemed to have an lower than average degree of aural similarity and a at most low degree of visual similarity. Conceptually they are dissimilar. The earlier trade mark has a lower than average distinctive character.

In assessing the importance to be attached to the degree of visual, aural or conceptual between signs, account should be taken of the category of goods and/or services in question and the circumstances in which they are marketed (22/09/1999, C-342/97, Lloyd Schuhfabrik, EU: C: 1999: 323, § 27).

The relevant edible oil and milk products are fairly ordinary consumer products, which are usually purchased in supermarkets or establishments where products are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, 488/07‑, Egléfruit, EU: T: 2010: 145). Therefore, the considerable visual differences between the signs are especially relevant in terms of assessing the likelihood of confusion between the trade marks.

It cannot be ignored that the signs are figurative and that they protect a specific representation of their elements. The coinciding verbal element ‘CALABRIA’ in the has a clear descriptive meaning for the relevant public. In addition, the contested trade mark is complex and has several elements, such as the figurative element of the sunset, which visually stands out, and where the verbal element ‘ciao’, with an average degree of distinctiveness is found.

In the contested sign, the coinciding verbal element ‘CALABRIA’ is placed in a different position and semantic order.

The relevant public will not be confused between the signs. The depictions of the signs vary strongly. The impact of the differing elements outweighs the similarities resulting from the presence of the verbal element ‘CALABRIA’ in the signs and cannot call into question the principle that the similarity of the signs must be assessed by taking into consideration the overall impression given by each of them (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 29; 06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 54).

The overall impression that the earlier mark will cause in the consumer’s minds is sufficiently distanced from that of the contested mark in order for the consumers not to confuse or associate the commercial origins of their goods.

Considering all the above, even assuming that the goods were identical and even for consumers with a low level of attention there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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, 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Rosario GURRIERI

Lars HELBERT

Konstantinos MITROU

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.