OPPOSITION No B 3 066 153

Grabower Süßwaren GmbH, Kiebitzweg, 19300, Grabow, Germany (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA, Amsterdam, Netherlands (professional representative)

a g a i n s t

Pečivárne Lipt. Hrádok s.r.o., Liptovská Porúbka 347, 03301 Liptovský Hrádok, Slovakia (applicant), represented by Jiří Macek, Sázavská 16, 120 00, Praha 2-Vinohrady, Czech Republic (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 153 is partially upheld, namely for the following contested goods and services:

Class 30: Long-life and longer-life bakery products; pastries; pastries (pastry products); wafers; wafers with filling; wafers with coated edges; half-coated and fully-coated wafers; cookies; petits fours [cakes]; biscuits; bread (ginger-); cereal bars; high-protein cereal bars; muesli; oat-based foodstuffs; peanut confectionery; almond confectionery; filled pies; pastries; sweetmeats [candy]; chocolate; sweetmeats [candy]; pralines; cereal snacks; rice snacks; rusks; wafer sticks; layer cakes; deserts; pies; farinaceous foods; mousses (chocolate -); mousse cakes; edible paper; savoury bakery products (crackers); edible fruit ices; chocolate spreads; chocolate-nut spreads; confectionery for decorating christmas trees; fudge; chocolate topping.

Class 35: Retailing and wholesaling of goods, namely long-life and longer-life bakery products, pastries, pastries (pastry products), wafers, filled wafers, wafers with coated edges, half-coated and fully-coated wafers, biscuits, petits fours, biscuits, gingerbread, cereal bars, high-protein cereal bars, muesli, oat-based foodstuffs, peanut confectionery, almond confectionery, filled cakes, confectionery products, confectionery, chocolate, sweetmeats, pralines, cereal snacks, rice snacks, rusks, wafer sticks and chimney cakes, cupcakes and tartlets, desserts, cakes, farinaceous foods, chocolate mousses, mousse cakes, edible paper, savoury bakery products (crackers), chocolate spreads, chocolate-nut spreads, confectionery for decorating Christmas trees, fondants, chocolate toppings and icing.

2. European Union trade mark application No 17 867 821 is rejected for all the above goods and services. It may proceed for the remaining 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 17 867 821 . The opposition is based on, inter alia, European Union trade mark registration No 6 094 734 . 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.

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 European Union trade mark registration No 6 094 734 .

1. The goods and services

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

Class 5: Baby food.

Class 29: Meat, fish, poultry, game; meat extracts, fruit and vegetables (preserved, dried and cooked), jellies, marmalade; eggs, milk, milk powder, preserved ready meals, pickled.

Class 30: Cocoa, sugar, chocolate and chocolate products, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, ices, honey, syrups (sugar syrup), yeast, baking powder, salt, mustard, vinegar, pepper, sauces; spices.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes, fresh fruits and vegetables, malt.

The contested goods and services are the following:

Class 30: Long-life and longer-life bakery products; pastries; pastries (pastry products); wafers; wafers with filling; wafers with coated edges; half-coated and fully-coated wafers; cookies; petits fours [cakes]; biscuits; bread (ginger-); cereal bars; high-protein cereal bars; muesli; oat-based foodstuffs; peanut confectionery; almond confectionery; filled pies; pastries; sweetmeats [candy]; chocolate; sweetmeats [candy]; pralines; cereal snacks; rice snacks; rusks; wafer sticks; layer cakes; deserts; pies; farinaceous foods; mousses (chocolate -); mousse cakes; edible paper; savoury bakery products (crackers); edible fruit ices; chocolate spreads; chocolate-nut spreads; confectionery for decorating christmas trees; fudge; chocolate topping.

Class 35: Retailing and wholesaling of goods, namely long-life and longer-life bakery products, pastries, pastries (pastry products), wafers, filled wafers, wafers with coated edges, half-coated and fully-coated wafers, biscuits, petits fours, biscuits, gingerbread, cereal bars, high-protein cereal bars, muesli, oat-based foodstuffs, peanut confectionery, almond confectionery, filled cakes, confectionery products, confectionery, chocolate, sweetmeats, pralines, cereal snacks, rice snacks, rusks, wafer sticks and chimney cakes, cupcakes and tartlets, desserts, cakes, farinaceous foods, chocolate mousses, mousse cakes, edible paper, savoury bakery products (crackers), chocolate spreads, chocolate-nut spreads, confectionery for decorating Christmas trees, fondants, chocolate toppings and icing; Brokering the trade of goods, namely long-life and longer-life bakery products, pastries, pastries (pastry products), wafers, filled wafers, wafers with coated edges, half-coated and fully-coated wafers, biscuits, petits fours, biscuits, gingerbread, cereal bars, high-protein cereal bars, muesli, oat-based foodstuffs, peanut confectionery, almond confectionery, filled cakes, confectionery products, confectionery, chocolate, sweetmeats, pralines, cereal snacks, rice snacks, rusks, wafer sticks and chimney cakes, cupcakes and tartlets, desserts, cakes, farinaceous foods, chocolate mousses, mousse cakes, edible paper, savoury bakery products (crackers), chocolate spreads, chocolate-nut spreads, confectionery for decorating Christmas trees, fondants, chocolate toppings and icing.

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

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

Contested goods in Class 30

Pastries; pastries (pastry products); biscuits; pastries; chocolate are identically contained in both lists of goods (including synonyms).

The contested cookies are included in the broad category of, or overlap with, the opponent’s biscuits. Therefore, they are identical.

The contested farinaceous foods include, as a broader category, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested long-life and longer-life bakery products; bread (ginger-); rusks are included in the broad category of, or overlap with, the opponent’s bread. Therefore, they are identical.

The contested wafers; wafers with filling; wafers with coated edges; half-coated and fully-coated wafers; peanut confectionery; almond confectionery; sweetmeats [candy]; sweetmeats [candy]; pralines; wafer sticks; edible paper; confectionery for decorating Christmas trees; fudge are included in the broad category of, or overlap with, the opponent’s confectionery. Therefore, they are identical.

The contested petits fours [cakes]; filled pies; layer cakes; pies; mousse cakes are included in the broad category of, or overlap with, the opponent’s cakes. Therefore, they are identical.

The contested cereal bars; high-protein cereal bars; muesli; oat-based foodstuffs; cereal snacks; rice snacks; savoury bakery products (crackers) are included in the broad category of, or overlap with, the opponent’s preparations made from cereals. Therefore, they are identical.

The contested mousses (chocolate); chocolate spreads; chocolate-nut spreads; chocolate topping are included in the broad categories of, or overlap with, the opponent’s chocolate or chocolate products. Therefore, they are identical.

The contested edible fruit ices are highly similar to the opponent’s confectionery as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested deserts (sic) are similar to the opponent’s chocolate products. These goods are all foodstuffs designated for a sweet tooth, or at least include such goods. It follows that they have the same purpose and generally can be found in the same distribution channels targeting the same consumer. Moreover, as they are interchangeable, they are also in competition.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and wholesaling of goods, namely long-life and longer-life bakery products, pastries, pastries (pastry products), wafers, filled wafers, wafers with coated edges, half-coated and fully-coated wafers, biscuits, petits fours, biscuits, gingerbread, cereal bars, high-protein cereal bars, muesli, oat-based foodstuffs, peanut confectionery, almond confectionery, filled cakes, confectionery products, confectionery, chocolate, sweetmeats, pralines, cereal snacks, rice snacks, rusks, wafer sticks and chimney cakes, cupcakes and tartlets, desserts, cakes, farinaceous foods, chocolate mousses, mousse cakes, edible paper, savoury bakery products (crackers), chocolate spreads, chocolate-nut spreads, confectionery for decorating Christmas trees, fondants, chocolate toppings and icing are similar to a low degree to the opponent’s goods in Class 30.

A broker usually acts as an agent who charges a fee or commission for its services. Such commercial agency services are not considered to be a sale service. It follows that the contested brokering the trade of goods, namely long-life and longer-life bakery products, pastries, pastries (pastry products), wafers, filled wafers, wafers with coated edges, half-coated and fully-coated wafers, biscuits, petits fours, biscuits, gingerbread, cereal bars, high-protein cereal bars, muesli, oat-based foodstuffs, peanut confectionery, almond confectionery, filled cakes, confectionery products, confectionery, chocolate, sweetmeats, pralines, cereal snacks, rice snacks, rusks, wafer sticks and chimney cakes, cupcakes and tartlets, desserts, cakes, farinaceous foods, chocolate mousses, mousse cakes, edible paper, savoury bakery products (crackers), chocolate spreads, chocolate-nut spreads, confectionery for decorating Christmas trees, fondants, chocolate toppings and icing cannot be subject to the same arguments as the comparison of goods with retail services. Therefore, these contested services are dissimilar to the opponent’s goods as they do not share any relevant points of contact that would justify a finding of similarity.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As the verbal elements of the contested sign are meaningful in the English-speaking part of the European Union, the Opposition Division finds it appropriate to focus the comparison of the signs on the English language-speaking part of the public such as Ireland, Malta, and the United Kingdom.

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).

The contested figurative sign consists of the stylised words ‘Nature’ and ‘Line’ placed one above the other in stylised lettering in which the lower end of the letter ‘L’ extends horizontally beneath the word ‘Line’. Underneath the said verbal elements appears the word combination ‘FAMILY BAKERY’ in upper-case letters in a slightly stylised typeface. Above the letter ‘a’ of ‘Nature’ is placed a device of a leaf in the colour green. All the said elements appear against an orange, rectangular-shaped background.

In English, the word ‘line’ can mean a kind of product that a company makes or sells (information extracted from Collins English Dictionary on 26/09/2019 at https://www.collinsdictionary.com/dictionary/english/line). As this verbal element will be perceived as referring to a particular group or kind of products, it is weakly distinctive of the relevant goods and services (which concern the retailing and wholesaling of products).

The usual meaning of the verbal element ‘Nature’ is all the animals, plants, and other things in the world that are not made by people, and all the events and processes that are not caused by people (information extracted from Collins English Dictionary on 26/09/2019 at https://www.collinsdictionary.com/dictionary/english/nature). In relation to the relevant goods and services, the element ‘Nature’ indicates that they are, or contain, natural products. This verbal element will be perceived as referring to the fact that the relevant goods and services are natural or contain natural ingredients, and so it will be weakly distinctive thereof.

The vast majority of the relevant public under analysis will perceive the word combination ‘Nature Line’ univocally as referring to a line of natural products provided by the applicant undertaking. This is so, despite the fact that this combination consists of two nouns rather than being in a grammatically correct form such as, for example, Natural Line, due to the close similarity between the words ‘Nature’ and ‘Natural’. As this word combination is allusive of the relevant goods and services, it possesses below average distinctive character for such goods and services.

Given the position and size of the word-combination ‘FAMILY BAKERY’, it will not play a significant role in the perception of the contested sign by the public under analysis. Indeed, for such public, ‘FAMILY BAKERY’ will be perceived as being descriptive and so without distinctive character for the relevant goods and services because it simply informs the consumer that the relevant goods and services are produced by, or are provided by, a family bakery business.

The leaf device (which together with the word ‘Nature’ emphasises the natural character of the goods and services) and the orange background will be perceived as serving a primarily decorative function within the contested sign.

The earlier figurative mark consists of the verbal elements ‘linea’ and ‘natura’ depicted one above the other in lower case letters, each such element being presented in a different, slightly stylised type face. Above the said verbal elements, in the top right hand corner of the earlier mark is located a figurative device of what appears to be a simple flower shape in white. The said verbal and figurative elements appear against a red, square-shaped background.

Although the verbal elements ‘linea’ and ‘natura’ are Italian for the English words ‘line’ and ‘nature’ respectively, the vast majority of the relevant public under analysis will understand the meaning of each such verbal element, given their close similarity to the said corresponding English words, ‘Line’ and ‘Nature’ respectively .

It follows that, for the vast majority of the public under analysis, the verbal elements ‘linea’ and ‘natura’ will be perceived as referring to the corresponding English words ‘line’ and ‘nature’ respectively and, in combination, these verbal elements, despite not being words in English, will also allude to the concept of a line of products.

While the said figurative device of a flower is not descriptive of the relevant goods and services, it alludes to the plant-based nature of the relevant goods and so it possesses low distinctive character in respect of the relevant goods and services. Moreover, given its simple, outline shape and its location in the corner of the earlier mark, this figurative element will be perceived by the relevant consumers under analysis as playing a secondary or ancillary role within the earlier mark relative to the said verbal elements.

Neither sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs at issue coincide in the verbal elements ‘line*’ and ‘natur*’, although in swapped positions, differing in the final vowel ‘a’ of ‘linea’ of the earlier mark and the final vowel of ‘natur*’ for both signs, in the word combination ‘FAMILY BAKERY’ of the contested sign, and in the figurative elements of the two signs as has been set out above.

Taking into account the relative size and the position of the word combination ‘FAMILY BAKERY’ as well as its descriptive nature, as stated above, and the merely secondary or decorative nature of the figurative elements of both of the signs at issue, they are considered to be visually similar to an average degree.

Aurally, the earlier mark will be pronounced as ‘linea natura’ and the contested sign as ‘Nature Line FAMILY BAKERY’ although at least part of the relevant public under analysis will not pronounce the descriptive word combination ‘FAMILY BAKERY’ (also considering its smaller size and secondary position) but focus their attention only on the verbal elements ‘Nature Line’ of the contested sign. Despite the word-order reversal (‘Linea Natura’/’Nature Line’), the signs at issues are considered to be phonetically similar to an average degree given the similarity in sound of these respective verbal elements.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

To the extent that both signs at issue convey the concept of a line of natural products for the vast majority of the relevant public under analysis, the signs are conceptually similar. That said, the impact of the concepts of the said verbal elements is limited due to the weak distinctiveness of each of those verbal elements.

The differing word combination ‘FAMILY BAKERY’, in the contested sign, is non-distinctive and the figurative elements are also of limited distinctiveness. Moreover, the concepts of the figurative elements are broadly-speaking similar (the flower device of the earlier mark; the leaf device of the contested sign) as they both concern plant life and, thus, they will increase further the overall degree of semantic similarity between these two signs.

Taking all of the above into account, the signs are considered to be conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Therefore, the distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

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).

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 or economically linked undertakings.

For the relevant public under analysis, the signs at issue have been found to be visually, phonetically, and conceptually similar to an average degree. The goods and services are partly identical, partly similar to varying degrees, and partly dissimilar. The distinctive character of the earlier mark as a whole is normal despite the presence of weak elements therein, and the degree of attention of the relevant consumer is average.

In support of the registration of the contested mark, the applicant included with its observations evidence in the form of sample invoices and brochures bearing the contested sign, stating that this evidence indicates that the mark applied for ‘may be registered into the Trademark Register’.

With regard to such materials, the Opposition Division points out that right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM is subject to possible examination within the context of opposition proceedings.

Therefore, when considering whether or not the EUTM applied for falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM (e.g. the use of the contested mark by the applicant) are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

In the present case, taking all of the relevant factors into account, including that of interdependence, the Opposition Division considers that although the impact of the coinciding elements is limited due to the weak distinctive character of those elements, the impact of the differentiating elements is not of great significance and is not sufficient to clearly distinguish the marks,

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 094 734. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar (to various degrees).

The opponent has also based its opposition on the following earlier trade mark: German trade mark registration No 30 745 918 . Since this mark is identical to the one that has been compared and covers the same scope of goods, the outcome cannot be different with respect to the services in Class 35 for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The other earlier right invoked by the opponent, German trade mark registration No 30 701 286 protected in Class 30 for fine pastries and confectionery; foamed sugar sweets covers a narrower scope of goods. Therefore, the outcome cannot be different with respect to the contested services in Class 35 for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services in Class 35.

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

Boyana NAYDENOVA

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.