OPPOSITION No B 3 054 582

Grem Spółka z Ograniczoną Odpowiedzialnością Spółka Komandytowa, Ul. Kwitnącej Wiśni 2, 05-462 Majdan, Poland (opponent), represented by Włodarczyk + Włodarczyk Adwokaci i Rzecznicy Patentowi Spółka Partnerska, ul. Spokojna 17 /11, 20-066 Lublin, Poland (professional representative)

a g a i n s t

Elta Group S.r.l., Via Domenico Chelini 9, 00197 Roma, Italy (applicant), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 582 is partially upheld, namely for the following contested goods and services:

Class 29: Dairy products and dairy substitutes; yoghurt; milk-based snacks; having a milk base; drinks based on yogurt.

Class 30: Ice creams, sorbets; ice cream; ice cream desserts; water ice; prepared desserts [chocolate based]; prepared desserts [confectionery]; sweet glazes and fillings; frozen yogurts; frozen yogurt confections; ice-cream cakes; ice lollies; ice milk [ice cream]; ice cream gateaux; ice cream sandwiches; confectionery ices; chocolates; chocolate; pies; pies [sweet or savoury]; fresh pies; cakes, tarts; puddings; custard; crème caramel; ice cream drinks; ice beverages with a cocoa base; ice beverages with a coffee base; ice beverages with a chocolate base; frappes.

Class 43: Ice cream parlour services; services for the preparation of food and drink; services for providing food and drink; providing of food and drink via a mobile truck; preparation and provision of food and drink for immediate consumption; takeaway services; take-away food and drink services; hospitality services [food and drink]; take-away food services; serving food and drinks; providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; bar services; bar and restaurant services; café services; cafeteria services; restaurant services; take-out restaurant services; serving food and drink for guests; serving food and drink for guests in restaurants; bistro services; providing food and drink in bistros; mobile restaurant services; snack-bar services; providing food and drink in Internet cafes; serving food and drink in Internet cafes; serving food and drink in restaurants and bars.

2. European Union trade mark application No 17 848 417 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 848 417 . The opposition is based on Polish trade mark registration No R.256 148 for the word mark ‘GREMMA’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 30: Ice cream; sorbets; ice cream desserts.

The contested goods and services are the following:

Class 29: Meats; processed fruits, fungi and vegetables (including nuts and pulses); oils and fats; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products; soups and stocks, meat extracts; chicken salad; antipasto salads; poultry salads; packaged meats; pre-packaged dinners consisting primarily of game; prepared meals made from poultry [poultry predominating]; prepared meals consisting principally of game; ready cooked meals consisting wholly or substantially wholly of meat; cooked meat dishes; ready cooked meals consisting wholly or substantially wholly of poultry; ready cooked meals consisting wholly or substantially wholly of game; prepared meals made from meat [meat predominating]; prepared meals containing [principally] bacon; prepared meals containing [principally] chicken; prepared meat dishes; prepared dishes consisting principally of meat; prepared meals consisting primarily of kebab; frozen meals consisting primarily of meat; frozen meals consisting primarily of poultry; cooked dish consisting primarily of stir-fried chicken and fermented hot pepper paste (dak-galbi); cooked dish consisting primarily of chicken and ginseng (samgyetang); cooked dish consisting primarily of stir-fried beef and fermented soy sauce (sogalbi); cooked dish consisting primarily of fermented vegetable, pork and tofu (kimchi-jjigae); meat-based snack foods; jellies, jams, compotes, fruit and vegetable spreads; snack mixes consisting of dehydrated fruit and processed nuts; sliced fruit; bottled sliced fruits; canned sliced fruits; prepared salads; fruit salads; vegetable salads; vegetable-based entrees; frozen pre-packaged entrees consisting primarily of seafood; prepared vegetable dishes; prepared meals consisting principally of vegetables; quick-frozen vegetable dishes; fruit-based snack food; candied fruit snacks; dried fruit-based snacks; soy-based snack foods; tofu-based snacks; snack foods based on legumes; fruit- and nut-based snack bars; fruit juices for cooking; vegetable juice concentrates for food; vegetable juices for cooking; milk-based snacks; potato-based snack foods; vegetable-based snack foods; organic nut and seed-based snack bars; nut-based snack foods; grilled vegetables; mixed vegetables; nut-based meal replacement bars; fruit-based meal replacement bars; nut and seed-based snack bars; nut-based food bars; soy-based food bars; fruit leathers; vegetable extracts for food; vegetable extracts for cooking; fruit desserts; dried fruit; legume salads; pre-cut vegetable salads; potato-based salads; potato salad; mixtures of fruit and nuts; dried fruit mixes; dried fruit products; prepared vegetable products; fruit pulp; fruit purees; butter for use in cooking; flavoured oils; edible oils for use in cooking foodstuffs; dishes of fish; prepared dishes consisting primarily of fishcakes, vegetables, boiled eggs, and broth (oden); cheese; beverages having a milk base; drinks based on yogurt; butter; margarine; dips; yoghurt; frittatas; omelets; broth; canned soups; soup concentrates; pre-cooked soup; sashimi; mixes for making soup; chowder; stock [prepared].

Class 30: Coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee-based beverages; tea-based beverages; coffee; espresso; chocolates; chocolate; frappes; preparations based on cocoa; cocoa products; herbal preparations for making beverages; preparations for making beverages [cocoa based]; preparations for making beverages [coffee based]; preparations for making beverages [chocolate based]; preparations for making beverages [tea based]; chocolate drink preparations; tea; mate [tea]; cereals; doughs, batters, and mixes therefor; yeast and leavening agents; dried and fresh pastas, noodles and dumplings; food preparations based on grains; carbohydrate preparations for food; aromatic preparations for cakes; aromatic preparations for pastries; preparations made from cereals; pasta; ice cream drinks; ice beverages with a cocoa base; ice beverages with a coffee base; ice beverages with a chocolate base; ice cream desserts; frozen yogurt confections; ice-cream cakes; ice cream; water ice; ice lollies; ice milk [ice cream]; ice cream gateaux; ice cream sandwiches; filled baguettes; cereal-based meal replacement bars; chocolate-based meal replacement bars; oat bars; chocolate-based ready-to-eat food bars; pizza bases; pre-baked pizzas crusts; brioches; burritos; calzones; pies; crepes; pancakes; fajitas; pasta salad; macaroni salad; rice salad; toasted sandwiches; sandwiches containing chicken; sandwiches containing fish; hamburgers contained in bread rolls; toasted cheese sandwich with ham; sandwiches containing fish fillet; sandwiches containing meat; toasted cheese sandwich; filled bread rolls; sandwiches containing minced beef; sandwiches containing salad; macaroni with cheese; flaky pastry containing ham; pasta containing stuffings; frozen pastry stuffed with meat and vegetables; frozen pastry stuffed with vegetables; pastries consisting of vegetables and meat; pastries consisting of vegetables and poultry; pastries consisting of vegetables and fish; frozen pastry stuffed with meat; noodle-based prepared meals; pasta-based prepared meals; rice-based prepared meals; meals consisting primarily of rice; savory pastries; egg pies; pies containing meat; pies containing vegetables; pies containing fish; pies containing poultry; pies containing game; meat pies [prepared]; pork pies; pot pies; pies [sweet or savoury]; meat pies; prepared rice dishes; rice based dishes; pasta dishes; prepared pizza meals; dry and liquid ready-to-serve meals, mainly consisting of pasta; ready-made dishes containing pasta; prepared meals containing [principally] rice; prepared meals in the form of pizzas; prepared meals containing [principally] pasta; dry and liquid ready-to-serve meals, mainly consisting of rice; frozen meals consisting primarily of pasta; frozen meals consisting primarily of rice; pizzas; boxed lunches consisting of rice, with added meat, fish or vegetables; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; snack food products made from rusk flour; snack food products made from cereal starch; snack food products made from maize flour; canned pasta foods; sandwiches; spaghetti and meatballs; sushi; canapes; tacos; fresh pies; salted tarts; tortillas; cereal bars and energy bars; sweets (candy), candy bars and chewing gum; bread; pastries, cakes, tarts and biscuits (cookies); salted biscuits; puddings; waffles; confectionery ices; crackers; custard; croissants; crème caramel; prepared desserts [chocolate based]; prepared desserts [confectionery]; biscotti dough; pandoro; panettone; bakery goods; savory sauces, chutneys and pastes; seasonings; aromatic preparations for food; condiments; alimentary seasonings; spice extracts; cooking essences; mayonnaise-based spreads; sauces; sauces [condiments]; spices; sweet glazes and fillings; syrups and treacles; bread rolls; rusks; soft rolls [bread].

Class 43: Rental of furniture, linens and table settings; providing temporary accommodation; services for providing food and drink; boarding for animals; tapas bars; salad bars; bistro services; cocktail lounge buffets; cookery advice; wine tasting services (provision of beverages); providing of food and drink via a mobile truck; providing accommodation for functions; providing food and drink in internet cafes; providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; providing food and drink in bistros; providing food and drink in doughnut shops; providing information about bartending; providing information about bar services; providing reviews of restaurants; providing reviews of restaurants and bars; providing personalized meal planning services via a website; providing information in the nature of recipes for drinks; delicatessens [restaurants]; restaurant information services; arranging of meals in hotels; arranging of wedding receptions [food and drink]; corporate hospitality (provision of food and drink); pizza parlors; food preparation for others on an outsourcing basis; preparation and provision of food and drink for immediate consumption; preparation of meals; pubs; grill restaurants; cocktail lounge services; tea rooms; food sculpting; contract food services; takeaway services; teahouse services; travel agency services for booking restaurants; banqueting services; bar services; bar and restaurant services; juice bars; café services; beer garden services; beer bar services; cafeteria services; take-away food and drink services; consulting services in the field of culinary arts; consultancy services relating to food preparation; consultancy services relating to food; consultancy services relating to baking techniques; personal chef services; wine bar services; providing drink services; ice cream parlour services; canteen services; private members drinking club services; hospitality services [food and drink]; take-away food services; restaurant services; tempura restaurant services; self-service restaurant services; serving food and drinks; hotel restaurant services; restaurant services incorporating licensed bar facilities; sushi restaurant services; take-out restaurant services; restaurant services provided by hotels; club services for the provision of food and drink; mobile restaurant services; private members dining club services; carvery restaurant services; snack-bar services; sommelier services; self-service cafeteria services; services for the preparation of food and drink; night club services [provision of food]; provision of information relating to the preparation of food and drink; provision of information relating to restaurants; provision of information relating to bars; serving of alcoholic beverages; serving beverages in microbreweries; serving beverages in brewpubs; serving food and drink for guests; serving food and drink in internet cafes; serving food and drink in doughnut shops; serving food and drink in restaurants and bars; serving food and drink for guests in restaurants.

An interpretation of the wording of the list of goods and services is required to first determine the scope of protection of these goods and services, and second, to help interpreting the wording used in the comparison below.

The terms ‘including’, used in the applicant’s lists of goods (Class 29), and ‘such as’ or ‘in particular’ (used in the comparison below) indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). On the contrary, the term ‘namely’, used to show the relationship of individual goods or services to a broader category, is exclusive and restricts the scope of protection only to the goods/services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Preliminary remark on the goods

The opponent’s earlier mark is registered for ice creams and ice cream desserts, namely smooth, sweet and cold foods prepared from a mixture of milk products and/or flavourings and often eaten as a snack or dessert, and sorbets, namely a frozen dessert made from sweetened water with flavouring (typically fruit juice or fruit purée, wine, liqueur, or very rarely, honey).

It cannot be denied that there is certain relation between the opponent’s goods and some of the contested goods in Class 29 (i.e. fruit desserts, preserved fruit, jams, jellies, compotes, nuts, seeds) and in Class 30 (i.e. sweet coatings and fillings, waffles; crepes; pancakes; pastries and biscuits (cookies)), namely to the extent that such products may be used as a garniture, in combination with or simply as an ingredient for the opponent’s goods.

Nevertheless, the mere fact these goods may be an ingredient or used in combination (with ice creams and sorbets), is not sufficient for the public to conclude that they originate from the same commercial undertaking, that is to say, these goods are not complementary. Complementary goods are those which are closely connected in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 48). Furthermore, ingredients used for the preparation of foodstuffs are a subcategory of raw materials and the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36).

In the present case, ice cream is manufactured out of several products, milk and cream being the principle ingredients, and contains additional additives, which then undergo freezing. The finished product is no longer the mere sum of its ingredients, but a product that has been transformed significantly in terms of taste and texture. These goods will differ significantly in their usual distribution channels as well and, as previously mentioned, the contested goods, even if they might be essential and core ingredients of ice creams, derive from entirely different food production sectors.

Contested goods in Class 29

The contested dairy products and dairy substitutes; yoghurt; milk-based snacks; beverages having a milk base; drinks based on yogurt are at least similar to an average degree to the earlier mark’s ice cream desserts to the extent that these goods are dairy products (of the same nature) and may be in competition with each other. Furthermore, due to their characteristics of milk-based products, they will often originate from the same producers, target the same relevant public and be available through the same distribution channels.

The remaining contested goods in Class 29 encompass various categories of foodstuffs that the Opposition Division considers generally different from the opponent’s goods in particular: cheese; butter, margarine; meats; fish, seafood and molluscs; soups and stocks, meat extracts; broth and various juices for cooking; birds eggs and egg products; oils and fats; salads, snack food and other ready-made or semi-prepared (including frozen) dishes and meals (such as prepared meat dishes; frozen meals consisting primarily of meat; prepared vegetable dishes; quick-frozen vegetable dishes; omelets; prepared salads, etc.) and processed fruit and vegetables, including seeds, nuts and legumes (such as jellies, jams, compotes, fruit and vegetable spreads, etc.). Despite being edible food products, all the above categories of goods differ in their natures and nutritional purposes. They will not normally have a common commercial origin and when displayed in stores or supermarkets would appear in different designated sections (meat; fish; vegetables, ready-made dishes, etc.). These goods are neither in competition nor complementary to each other. The goods at hand are therefore dissimilar to the opponent’s goods.

Contested goods in Class 30

The contested ice creams, sorbets; ice cream; ice cream desserts; water ice are identically contained in both lists of goods (including synonyms)

The contested prepared desserts [chocolate based]; prepared desserts [confectionery]; sweet glazes and fillings; frozen yogurts; frozen yogurt confections; ice-cream cakes; ice lollies; ice milk [ice cream]; ice cream gateaux; ice cream sandwiches; confectionery ices; chocolates; chocolate; pies; pies [sweet or savoury]; fresh pies; cakes, tarts; puddings; custard; crème caramel; ice cream drinks; ice beverages with a cocoa base; ice beverages with a coffee base; ice beverages with a chocolate base; frappes are at least similar to a low degree to the earlier mark’s ice cream and ice cream desserts to the extent that they may coincide in various or all of the following Canon criteria: they can be found at the same distribution channels/points of sale, be directed at the same consumers, originate from the same kind of undertakings. Furthermore, some of these goods may also have the same nature or/and purpose; in addition, some of them could be in competition with each other (i.e. the goods that are frozen confectionery).

By contrast, a part of the remaining goods, i.e. coffee, teas and cocoa and substitutes therefor, are drinks that are traditionally served hot or warm and mainly sold as dry products (grains, powder or leaves), which consumers then use as ingredients to create the said beverages by adding them to boiling or warm water (21/05/2015, R 1971/2013-1, SAHNISSIMO / SANISSIMO, § 38- 39). Another part of the goods, i.e. salts, sugars, aromatic preparations for cakes; savory sauces, spice extracts; cooking essences; sauces [condiments]; syrups and treacles, are various seasonings, spices, flavourings and essences, and condiments generally used as ingredients or/and to add a particular texture and flavouring of a meal. The remaining contested goods are various savory snack and convenience foodstuffs, namely food that is commercially prepared (often through processing) to optimize ease of consumption (such as pasta; baguettes; sandwiches; sushi; bread rolls; tacos; etc.), as well as processed grains, starches, and goods made thereof, preparations made from cereals; baking preparations and yeasts; doughs, batters, and mixes therefor; bread; bakery goods). All these goods are also considered dissimilar to the opponent’s goods in Class 30. Even though some of these goods may be offered along in the same venues providing food and drinks, this is not a sufficient reason to deem them similar either. The contested goods above have completely different natures, methods of use and nutrition purposes as foodstuffs. They are not complementary to the opponent’s goods or in competition with them on the foodstuffs market, namely they cannot be used as substitutes for any of them, nor can they be main ingredients for the preparation of the opponent’s goods. In addition, these goods originate from different undertakings in the foodstuffs industry and consumers have a clear idea of such distinct origin.

Finally, while ices are to be understood as ‘ice creams’, the term ice is to be understood as ‘cooling ice’. Although these goods consist (partly or not) of frozen water, their commercial nature is different because the former is a foodstuff whereas the latter is an auxiliary product used for preserving and/or cooling foodstuffs. Their purpose and distribution channels are different. Furthermore, they are neither in competition nor complementary. Consequently, the contested ice is considered dissimilar to the opponent’s goods.

Contested services in Class 43

In principle, the mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, it has been established in case-law that in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). In particular, goods and services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

In the present case, the contested ice cream parlour services will obviously offer the opponents’ products, namely ice-cream, and consumers will believe that the goods and services are sold or provided by the same undertaking. Likewise, similarity can be established in relation to the broader categories of contested services which might, inter alia, cover provision of ice cream (i.e. one of the opponent’s goods), namely the following: services for the preparation of food and drink; services for providing food and drink; providing of food and drink via a mobile truck; preparation and provision of food and drink for immediate consumption; takeaway services; take-away food and drink services; take-away food services; serving food and drinks.

As to the contested providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; hospitality services [food and drink]; bar services; bar and restaurant services; café services; cafeteria services; restaurant services; take-out restaurant services; serving food and drink for guests; serving food and drink for guests in restaurants; bistro services; providing food and drink in bistros; mobile restaurant services; snack-bar services; providing food and drink in Internet cafes; serving food and drink in Internet cafes; serving food and drink in restaurants and bars, it cannot be excluded that these also include provision of ice cream. This is reasoned by the fact that along drinks/meals offered to consumers, it is common that bars and restaurants may also offer in-house confectionery, pastries and, not excluded, ice-creams (04/06/2015, T-562/14, YOO, ECLI:EU:T:2015:363, § 26). All the above contested services are, therefore, considered similar to a low degree to the opponents’ ice-cream desserts and sorbets.

By contrast, another part of the contested services related to food and drinks such as serving of alcoholic beverages; serving beverages in microbreweries; serving beverages in brewpubs; serving food and drink in doughnut shops; teahouse services; wine tasting services (provision of beverages); food sculpting; sommelier services, have completely different objects of trade, in particular they provide different foods (doughnuts; pizza; tapas; salads; delicatessens, grill, etc.) and/or drinks (alcohol; cocktail, tea, juice, beer, wine, etc.) from the opponent’s ones and, in general, they do not belong to the traditional place where the opponent’s goods may be offered. Since no clear complementarity relationship can be established for them as with the above mentioned services, the Opposition Division finds them dissimilar.

Finally, the rest of the contested services are more of administrative or contract services related to accommodation or food and drink, provision of information and consultancy, arranging, planning, booking, (i.e. rental of furniture, linens and table settings; providing accommodation for functions; cookery advice; arranging of wedding receptions [food and drink], etc. ). The services have evidently nothing in common with the opponent’s goods and are also considered dissimilar.

b) Relevant public — degree of attention

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention will vary from below the average to average to the extent that some of the goods may be products for everyday consumption (frequently purchased) and of a relatively cheap character.

c) Comparison of the signs and distinctiveness of the earlier mark

GREMMA
Earlier trade mark	Contested sign

The relevant territory is Poland.

The element ‘GREMMA’ constituting the earlier mark has no meaning for the relevant public. Consequently, in the absence of any claim by the opponent with regard to its earlier mark’s distinctiveness, it is considered of average distinctiveness in relation to the goods involved.

As regards the contested sign, it is composed of a distinctive verbal element, ‘GRAMMO’, and less distinctive figurative elements of a purely decorative nature, namely the stylisation of its letters, black background and a green dot within the letter ‘O’. Given the very plain and banal character of the former, the verbal element of the sign is in any event considered more distinctive than the figurative elements embellishing it.

In addition, contrary to what the applicant argues, and for the sake of completeness, the Opposition Division notes that 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).

Furthermore, the applicant also argues that the verbal element ‘GRAMMO’ will be understood as a reference to the ‘gram’ as in ‘unit of weight equal to 0.001kg’. The Opposition Division notes that the relevant public has no reason to split up the verbal element into ‘gram’ and ‘mo’ but will perceive the verbal element in its entirety as a fanciful (and meaningless) word; furthermore, the applicant’s argument has not been supported by any evidence proving otherwise and it has to be eventually set aside.

Visually and aurally, the signs coincide in the letters ‘GR*MM*’. They differ in their second vowels, ‘Е’ and ‘A’ (in the earlier mark) and ‘A’ and ‘O’ (in the contested sign). The signs additionally differ in the figurative components of the contested sign, which are however considered of a reduced impact in the overall perception of the sign.

Account is taken of the fact that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

In the present case, in addition to having identical beginnings, ‘GR-’, the signs coincide in their overall lengths (six letters), as well as in their structures and rhythm and intonation, namely identical consonants between which vowels appear. The Opposition Division notes that the presence of the double letter ‘MM’ in the middle of the signs is also particularly striking from a visual perspective and from an aural perspective it will most likely lead to an identical sound [m].

Therefore, considering the above findings, the signs are visually and aurally similar to 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) Global assessment, other arguments and conclusion

The conflicting goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar; the degree of attention usually paid by consumers during their purchase will vary from average to below average for the reasons mentioned above. The earlier mark enjoys a normal degree of distinctiveness.

As established above, the signs are visually and aurally similar to an average degree, this finding supported by the fact that the signs bear very close structures (identical beginnings, identically present double consonant ‘MM’ in the middle, use of two vowels between the consonants, same lengths). The lower degree of significance of the figurative component of the contested sign has already been discussed above, and emphasis is put on the fact that the verbal element, ‘GRAMMO’, will be the element that will principally help consumers identify the commercial origin of the goods/services, whereas the figurative components may at most have the function of attracting consumers’ attention to the particular brand.

Account is also 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). Furthermore, consumers tend to perceive the signs as a whole and do not proceed to analyse their details or the letters of which they are composed. It can also not be excluded that, given their imperfect recollection of the signs, consumers may overlook the exact manner in which the differing vowels ‘a’, ‘e’ and ‘o’ appear. Consequently, the similarities between the signs are overwhelming and consumers may indeed confuse the signs, especially given that none of them conveys a clear and unambitious concept to help consumers distinguish between them.

In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors in the assessment. In the present case, the lesser degree of similarity between some of the goods and services in question may be offset by the greater similarity between the signs themselves.

Considering all the above, the Opposition Division finds that 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 Polish trade mark registration No R.256 148.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, including to a low degree, to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

María Clara IBÁÑEZ FIORILLO

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.