OPPOSITION No B 3 056 710

Natural Balance Foods Limited, Drakes Drive, Crendon Industrial Park, Long Crendon, HP18 9BA, Aylesbury, United Kingdom (opponent), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Bruxelles / Brussel, Belgium (professional representative)

a g a i n s t

Katadyn Produkte AG, Pfäffikerstrasse 37, 8310 Kemptthal, Switzerland (applicant), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 710 is partially upheld, namely for the following contested goods:

Class 5: All the goods applied for.

Class 29: All the goods applied for except: meat; freeze-dried meat; prepared dishes consisting principally of meat; prepared meals consisting primarily of meat substitutes; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products; soups and broths; meat extracts; dried milk.

Class 30: All the goods applied for except: sandwiches and pizzas, spring rolls and seaweed rolls, tortilla dishes; salts, seasonings, flavourings and condiments; puddings in powder form; coffee (granulated or powdered).

Class 32: All the goods applied for.

2. European Union trade mark application No 17 865 412 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 865 412 for the figurative mark . The opposition is based on European Union trade mark registration No 15 273 949 for the figurative mark . 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

As a preliminary remark, the applicant points out that there are some discrepancies between the translation into English of the wording of some of the goods in Class 29 and the original wording as filed in the first language of the EUTM application (i.e. German). In this regard, it should be noted that, as the first language of the EUTM application is one of the five languages of the Office, the definitive version of the list of goods is the text in the first language. Therefore, the contested Consisting mainly of vegetables, Freeze-dried pre-prepared meals and dishes should read freeze-dried pre-prepared meals and dishes consisting mainly of vegetables.

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

Class 29: Prepared meals and snack foods consisting primarily of fruit, nuts and vegetables; fruit and nut based snack bars; snack foods and snack bars containing fruits, nuts, seeds, vegetables, herbs and spices; high-protein snack bars containing fruits, nuts, vegetables, seeds, herbs and spices; low carbohydrate snack foods (fruit, nut and vegetable based); prepared dried fruit mixes; infused raisins.

Class 30: Confectionery; nutritional confectionery; low carbohydrate confectionery; chocolates; sweets; biscuits; cookies; flapjacks; cereals; flour and preparations made from flour; cereal-based snack foods and snack bars; snack bars containing a mixture of grains, nuts and dried fruit (confectionery); high-protein cereal bars; low carbohydrate cereals.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; Meal replacement powders.

Class 29: Meat; Freeze-dried meat; Prepared dishes consisting principally of meat; Freeze-dried vegetables; Freeze-dried pre-prepared meals and dishes consisting mainly of vegetables; Prepared meals consisting primarily of meat substitutes; Fish, seafood and molluscs; Dairy products and dairy substitutes; Birds eggs and egg products; Processed fruits, fungi and vegetables (including nuts and pulses); soups and broths; Meat extracts; Dried milk.

Class 30: Freeze-dried dishes with main ingredient being pasta; Freeze-dried dishes with main ingredient being rice; Prepared meals containing [principally] pasta; Ready meals predominantly containing rice; Ready meals and savoury snacks, namely snacks based on corn, cereals or flour, biscuits and crackers, dumplings, pancakes, pasta, rice and cereal dishes, pasties and farinaceous foods, sandwiches and pizzas, spring rolls and seaweed rolls, steamed buns, tortilla dishes; Salts, seasonings, flavourings and condiments; Bread; Cookies; Muesli; Cereal bars and energy bars; Mousses; Creams being desserts; Puddings in powder form; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Coffee (granulated or powdered); Cocoa (granulated or powdered); Powdered preparations containing cocoa for making beverages or chocolate mousses.

Class 32: Preparations for making beverages.

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

The terms ‘including’, ‘principally’, ‘mainly’ and ‘predominantly’, used in the applicant’s list of goods, and the term ‘primarily’, 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. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods 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.

Contested goods in Class 5

‘Protein snack bars’ are intended to add protein to one’s diet either for weight loss and muscle gain or for bodybuilding. ‘High‑Protein Snack Bars’ are also low in sugar and their protein content is derived entirely from whey protein concentrate and milk protein isolate.

‘Dietary supplements and dietetic preparations’ are substances prepared for special dietary requirements. They are intended for people who, due to their needs or to some illness, have special requirements with regard to food that a normal diet cannot meet.

‘Meal replacements’ are designed to replace a meal due to their measured energy and nutritional content. They are designed to help weight loss and managing one’s diet, especially when following a low carbohydrate diet or a high protein diet.

Accordingly, the contested dietary supplements and dietetic preparations; meal replacement powders are similar to the opponent’s high‑protein snack bars containing fruits, nuts, vegetables, seeds, herbs and spices in Class 29, since they have the same purpose and target the same relevant public. These goods can originate from the same undertakings and use the same distribution channels.

Contested goods in Class 29

The contested freeze-dried pre-prepared meals and dishes consisting mainly of vegetables are included in the broad category of, or overlap with, the opponent’s prepared meals and snack foods consisting primarily of vegetables in Class 29. Therefore, they are identical.

The contested freeze-dried vegetables; processed fruits, fungi and vegetables (including nuts and pulses) are similar to the opponent’s prepared meals and snack foods consisting primarily of fruit, nuts and vegetables in Class 29. It is clear that the opponent’s goods have as their main ingredients the said contested goods, being processed in a certain way and offered in a different form, and that all of them have the same purpose and can be provided to the same end-consumer, who can choose to prepare the meal on his own or to buy it already completely prepared or semi-ready for consumption. These goods are in competition and are sold in the same outlets.

However, the contested meat; freeze-dried meat; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products; soups and broths; meat extracts; dried milk are dissimilar to the opponent’s goods in Classes 29 and 30. Firstly, the opponent’s goods in Class 29 relate to fruits, nuts, seeds, vegetables, herbs and spices. The opponent claims that some of these goods could also contain meat, fish, etc. As stated above, although the specific goods are only examples of items included in the category and that protection is not restricted to them, similarity cannot be found in respect to any other product that ‘could’ be contained in the opponent’s prepared meals and snack foods. They may be combined in a dish as almost all the available nutrition, but this does not make them similar. Ingredients used for the preparation of foodstuffs are a subcategory of raw materials and treated in the same way as raw materials in general. Consequently, 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 (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). The producers are different and they are sold in different shops or in specific areas of a large supermarket. Furthermore, the natural origin of the opponent’s goods clearly differs from the animal origin of the applicant’s goods. Secondly, the opponent’s goods in Class 30, which are mainly confectionery, sweets, cereals and snack bars, have no relevant points in common with the above mentioned contested goods, as they usually have different producers and distribution channels. Furthermore, they are not complementary or in competition.

For the same reasons, the contested prepared dishes consisting principally of meat; prepared meals consisting primarily of meat substitutes are also dissimilar to the opponent’s goods in Classes 29 and 30. In this regard, although the opponent’s goods in Class 29 include prepared meals, they consist primarily of products of natural origin (i.e. fruit, nuts and vegetables). As concluded above, meat and vegetables, for instance, may be combined in a dish as almost all the available nutrition, but this does not make them similar.

Contested goods in Class 30

Biscuits and crackers; cookies; pancakes are identically contained in both lists of goods (including synonyms).

The contested muesli is included in broad category of the opponent’s cereals. Therefore, they are identical.

The contested dumplings, pasta, pasties and farinaceous foods; steamed buns; bread are included in the broad category of the opponent’s preparations made from flour. Therefore, they are identical.

The contested cereal bars and energy bars are included in the broad category of, or overlap with, the opponent’s cereal‑based snack foods and snack bars. Therefore, they are identical.

The contested mousses; creams being desserts are at least similar to the opponent’s confectionery as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested ready meals and savoury snacks, namely snacks based on corn, cereals or flour are at least similar to the opponent’s cereal‑based snacks foods and snack bars, as they can have the same producers, relevant public and distribution channels.

The contested processed grains, and goods made thereof are at least similar to the opponent’s snack bars containing a mixture of grains, nuts and dried fruit (confectionery), as they can have the same producers, relevant public and distribution channels.

The contested freeze-dried dishes with main ingredient being rice; ready meals predominantly containing rice; rice and cereal dishes are similar to the opponent’s cereal‑based snacks foods and snack bars, as they can have the same producers, relevant public and distribution channels.

The contested starches, and goods made thereof are similar to the opponent’s flour and preparations made from flour. 'Starch' may take the consistency of ‘flour’ and be used to thickening other foodstuffs on account of their starch content. They can be in competition and they coincide in producers, relevant public and distribution channels.

The contested baking preparations and yeasts are similar to the opponent’s flour as they usually coincide in producer, relevant public and distribution channels.

The contested cocoa (granulated or powdered) is similar to the opponent’s chocolates as they have the same nature. They usually coincide in producer, relevant public and distribution channels.

The contested powdered preparations containing cocoa for making beverages or chocolate mousses are similar to the opponent’s chocolates as they have the same nature. They usually coincide in producer, relevant public and distribution channels.

‘Pasta’ falls under the broad category of farinaceous foods. Accordingly, the contested freeze-dried dishes with main ingredient being pasta; prepared meals containing [principally] pasta are at least similar to low degree to the opponent’s preparations made from flour, as they can have the same producers, relevant public and distribution channels.

However, the contested sandwiches and pizzas, spring rolls and seaweed rolls, tortilla dishes; salts, seasonings, flavourings and condiments; puddings in powder form; coffee (granulated or powdered) are dissimilar to the opponent’s goods in Classes 29 and 30. These goods have no relevant points in common and they usually have different producers and distribution channels. Furthermore, they are not complementary or in competition.

Contested goods in Class 32

The contested preparations for making beverages are similar to a low degree to the opponent’s prepared dried fruit mixes in Class 29 as they usually coincide in producer and relevant public.

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 varying degrees are mainly directed at the public at large and some also to business customers with specific professional knowledge or expertise in the case of some of the goods (e.g. preparations for making beverages).

The degree of attention will vary from low to average.

c) 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘TREK’ that the signs have in common is meaningful in English. Furthermore, the remaining verbal elements present in the contested sign are also meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as this is the scenario in which the signs show more similarities and is thus where a likelihood of confusion would be most likely to arise.

The element ‘TREK’ of the earlier mark will be understood either as a verb, referring to the action of going on a journey across difficult country, usually on foot, or as a noun, meaning journey. Bearing in mind that the relevant goods are mainly prepared meals, snack foods and snack bars, confectionery, chocolates, biscuits, flour and preparations made from flour, the degree of distinctiveness of this element is lower than average for part of these goods, namely for those goods that are ready for consumption, as the relevant public could easily think that those goods are specially prepared to carry and eat while trekking. However, for other goods, such as flour, the distinctive character of this element is normal.

The additional verbal element ‘JC’s’ contained in the earlier mark, will be disregarded by consumers due to its very small, barely readable letters and secondary position within the mark giving it a negligible character. Therefore, it will not be considered in the comparison.

The verbal elements ‘TREK’N EAT’ of the contested sign will be understood as an expression derived from the words ‘trek and eat’, in particular as an invitation to go trekking and eat. Bearing in mind that the relevant goods are mainly dietary supplements, prepared meals and dishes, snacks, energy bars, starches, yeast and preparations for making beverages, the degree of distinctiveness of this expression is weak for part of these goods, namely for those goods that are ready for consumption, as it is a clear message to consumers that the goods in question are specially prepared to carry and eat while trekking. However, for other goods, such as starches and yeast, the distinctive character of this expression is normal. However, contrary to the applicant’s opinion, especially the word ‘EAT’ is clearly descriptive and, therefore, non‑distinctive in relation to all the goods in question, as it directly informs the consumers of the purpose of the goods, whether they are ready for immediate consumption (e.g. processed fruits, fungi and vegetables (including nuts and pulses), biscuits and crackers) or unprocessed goods (e.g. starches, yeast and preparations for making beverages).

The figurative element in the contested sign consisting of a large photograph of mountains, trees and a lake will be perceived by the relevant public in conjunction with the expression ‘TREK’N EAT’, in particular that the goods in question are specially prepared to carry and eat while trekking. Therefore, the distinctive character of this element in relation to the relevant goods coincides with that of the expression ‘TREK’N EAT’, as analysed above.

Although the figurative element of the contested sign occupies most of the sign, it does not overshadow the verbal elements of the mark depicted right next to it. Furthermore, it must be recalled 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). In the contested sign, it is foreseen that the relevant public will refer to the sign by its verbal expression rather than describing the image of the photograph, which will probably not be attributed much trade mark significance.

Visually, the signs coincide in the word ‘TREK’, which is the only element perceived in the earlier mark and the first word in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as it is the part that first catches the attention of the reader. The signs differ in the additional verbal elements contained in the contested sign, namely the apostrophe and the letter ‘N’ and the word ‘EAT’. Furthermore, the signs differ in the large photograph included in the contested sign, as well as in the stylisation of the letters in the respective signs. In this regard, the typeface of the letters in the contested sign is rather standard and the typeface of the letters in the earlier mark is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the element it embellishes.

Therefore, taking into account the above principles and assertions on the distinctiveness of the elements of the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable ‘TREK’, which is the only element that will be pronounced in the earlier mark and the first one in the contested sign. The pronunciation differs in the sound of the letter ‘N’ and in the word ‘EAT’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, taking into account the above principles and assertions on the distinctiveness of the elements of the signs, especially the non‑distinctive character of the word ‘EAT’, they are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a very similar meaning, the signs are conceptually highly similar.

As the signs have been found similar in the three aspects 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for some of the goods in question, namely prepared meals and snack foods consisting primarily of fruit, nuts and vegetables; high-protein snack bars containing fruits, nuts, vegetables, seeds, herbs and spices; prepared dried fruit mixes in Class 29, and confectionery; chocolates; biscuits; cookies; flapjacks; cereals; preparations made from flour; cereal-based snack foods and snack bars; snack bars containing a mixture of grains, nuts and dried fruit (confectionery) in Class 30. The mark has a normal degree of distinctiveness for the remaining goods (i.e. flour) in relation to which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

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).

In the present case, the goods are partly identical, partly similar to varying degrees and partly dissimilar. They are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). The goods mainly target the public at large whose degree of attention will vary between low and average.

As established above, the inherent distinctiveness of the earlier trade mark must be seen as lower than average for some of the goods in question. A coincidence in an element with a reduced distinctiveness will not normally, on its own, lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a low (or equally reduced) degree of distinctiveness, or are of insignificant visual impact and the overall impression of the marks is similar.

In the present case, the signs are visually and aurally similar to an average degree and conceptually highly similar, for the reasons explained above. They mainly differ in the photograph of the contested sign, which will not be assigned much trade mark significance, and the additional word ‘EAT’ of the contested sign, which is, however, non‑distinctive. Accordingly, the differing elements and aspects cannot prevent the relevant public from associating the signs in question, due to their common component ‘TREK’, which is the only element perceived in the earlier mark.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. Furthermore, it is common practice in the relevant market of ordinary consumer products to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new products, or to endow a trade mark with a new, fashionable image. In the present case, even if consumers are able to pay an average degree of attention, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them.

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The opposition is also successful as regards those goods that are similar to a low degree on account of the similarities between the signs and the interdependence principle (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

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

Aldo BLASI

Marta GARCÍA COLLADO

Sylvie ALBRECHT

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.