OPPOSITION No B 3 060 374

St. Nicolaus a.s., Ul. 1. mája 113, 031 28 Liptovský Mikuláš, Slovakia (opponent), represented by G. Lehnert, k.s., Budova Orbis, Rajská 7, 811 08 Bratislava, Slovakia (professional representative)

a g a i n s t

Antonella Alessia Amato, Via Terlizzi, 72, 70056 Molfetta (BA), Italy (applicant), represented by Ing. Saverio Russo & C. S.R.L., Via Ottavio Serena, 37, 70126 Bari, Italy (professional representative).

On 18/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 374 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa, artificial coffee; Salt, mustard; Vinegar, sauces (condiments); Spices.

Class 33: Alcoholic beverages (except beers).

2. European Union trade mark application No 17 868 812 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 some of the goods of European Union trade mark application No 17 868 812 (figurative mark), namely against some of the goods in Class 30 and all the goods in Class 33. The opposition is based on Slovakian trade mark registration No 233 732 ‘ST. NICOLAUS’ (word mark), Slovakian trade mark registration No 242 527 (figurative mark), international registration No 1 304 747 (figurative mark) designating Czech Republic, and Slovakian trade mark registration No 241 837 (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.

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 Slovakian trade mark registration No 242 527.

a) The goods

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

Class 30: Mustard; vinegar; ketchup; processed horseradish; condiments.

Class 32: Non-alcoholic beverages.

Class 33: Spirits.

The contested goods are the following:

Class 30: Coffee, tea, cocoa, artificial coffee; treacle; Salt, mustard; Vinegar, sauces (condiments); Spices.

Class 33: Alcoholic beverages (except beers).

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

Mustard; vinegar is/are identically contained in both lists of goods.

The contested sauces (condiments) overlap with the opponent’s condiments. Therefore, they are identical.

The contested coffee, tea, cocoa, artificial coffee is/are similar to the opponent’s non-alcoholic beverages in Class 32. They can have the same producers, distribution channels and relevant public. Furthermore, they are in competition.

The contested salt; spices is/are similar to the opponent’s condiments. They all have the purpose of adding to or enhancing the flavour of food. They can have the same producers, distribution channels and relevant public.

However, the contested treacle is dissimilar to all the opponent’s goods, including the non-alcoholic beverages which the opponent argues is highly similar to treacle with the reasoning that the beverages can be sold both as products ready for consumption or as preparations for making beverages. However, the Opposition Division finds that all the opponent’s goods have a different nature and purpose, as well as different producers, distribution channels and relevant consumers. Furthermore, the goods are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 33

The contested alcoholic beverages (except beers) include, as a broader category, the opponent’s spirits. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Slovakia.

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

The earlier mark is a figurative mark, consisting of the underlined verbal element ‘ST. NICOLAUS’ in slightly stylised, upper case blue letters. To the left of this verbal element is a figurative element consisting of a circle with the pale depiction of what resembles a man profile with a crown on his head. This figure is surrounded by some letters which are barely perceptible. Therefore, they are considered as illegible elements that are likely to be disregarded by the relevant public and will not be taken into consideration in this comparison.

The contested sign consists of the verbal element ‘SAN NICHOLAUS’ in highly stylised, but still easily readable, upper case black letters. To the left in the mark is a figurative element of a circle with a bishop with a glory and two croziers. Written in a circle around this figure are the words ‘CANTINE’ and ‘SAN NICHOLAUS’ and some further figurative elements that are hardly noticeable.

The verbal element ‘ST.’ of the earlier mark will be perceived as an abbreviation of the word ‘Saint’, which has no meaning in relation to the relevant goods, and the element ‘SAN’ of the contested sign has no meaning at all for the relevant public. Therefore, these verbal elements are both distinctive.

The verbal elements ‘NICOLAUS’ of the earlier mark and ‘NICHOLAUS’ of the contested sign will both be perceived as a name by the Slovakian public. Together with their figurative elements they will convey a message on the widely known Christian saint (giving rise to the traditional model of Santa Claus), despite a different version in Slovak (‘Svätý Mikuláš’). These elements in both marks have a normal degree of distinctiveness, as they are not descriptive, allusive or otherwise weak for the goods in question.

The verbal element ‘CANTINE’ of the contested sign will be understood as ‘canteen’ by the relevant public, since it is very close to the equivalent word in the official language in the relevant territory, the Slovak word “kantína”. Bearing in mind that the goods are foodstuffs and beverages, which can be served/prepared in a canteen, this element is weak for the relevant goods, namely for coffee, tea, cocoa, artificial coffee; treacle; salt, mustard; vinegar, sauces (condiments); spices, in Class 30, and alcoholic beverages (except beers), in Class 33.

The figurative element of the man profile with a crown on his head of the earlier mark (if perceived, since the depiction is very pale) and the depiction of a saint with a glory and two croziers in the circular device of the contested sign, which is likely to be associated with Saint Nicholas (mainly due to the verbal elements ‘ST. NICOLAUS’ and ‘SAN NICHOLAUS’) have a normal degree of distinctiveness, as they are not descriptive or otherwise weak for the goods in question.

In the earlier mark, the verbal element ‘ST. NICOLAUS’ is the dominant element, as it is the most eye-catching, because of its size and prominent blue colour.

In the contested sign, the element ‘SAN NICHOLAUS’ to the right in the mark and the figurative element in itself are co-dominant in the mark. However, the elements ‘CANTINE’ and ‘SAN NICHOLAUS’ inside the figurative element are not dominant, as they are not eye-catching, due to their rather hidden place in the mark. Moreover, the latter is a repetition in the mark. Therefore, these elements are secondary in the mark.

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).

Visually, the signs coincide in the first letter ‘S’ and in the verbal element ‘NIC*OLAUS’, which is distinctive. Furthermore, they coincide in a circular device on the left side in the marks. However, they differ in the letters (and punctuation mark) following the first letter ‘S’, namely ‘*T.’ of the earlier mark and ‘*AN’ of the contested sign. Moreover, they differ in an additional letter, the rather hidden ‘H’ in the middle of the highly stylised verbal element ‘NICHOLAUS’ and in the additional verbal elements ‘CANTINE’ (weak) and ‘SAN NICHOLAUS’ (distinctive), placed in the circular device of the contested sign and secondary in the marks, as described above. Moreover, the marks differ in the stylisation of the marks, including the figurative elements and the colours.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first letter ‘S’ and the distinctive letters ‘NIC*OLAUS’, present identically in both signs. The letters ‘ST.’, at the beginning of the earlier mark, being an abbreviation for ‘Saint’, are likely to be pronounced by the relevant public as ‘SAINT’, whereas the letters ‘SAN’ in the contested sign are pronounced as such. The sound of these elements coincide at least in ‘S’ (as said above) and ‘N’. The words ‘CANTINE’ (weak) and ‘SAN NICHOLAUS’ (distinctive) inside the figurative element of the contested sign are not likely to be pronounced by the relevant public, as they are not dominant and ‘SAN NICHOLAUS’ is a repetition in the mark.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with a similar meaning as referring to Saint Nicholas (Santa Claus), the signs are conceptually highly similar.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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.

In the present case, the goods are partly identical, partly similar and partly dissimilar. They target the public at large with an average degree of attention.

The signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually highly similar. The distinctiveness of the earlier mark is normal.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

It should be borne in mind that the relevant goods are also beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Slovak-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s Slovakian trade mark registration No 242 527.

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 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use or reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks and goods:

 Slovakian trade mark registration No 233 732 for the word mark ‘ST. NICOLAUS’:

Class 30: Vinegar; condiments.

Class 32: Non-alcoholic beverages.

Class 33: Spirits.

 International registration No 1 304 747 for the figurative mark designating Czech republic:

Class 30: Mustard; vinegar; ketchup (sauce); processed horseradish; condiments.

Class 32: Non-alcoholic beverages.

Class 33: Spirits.

 Slovakian trade mark registration No 241 837 for the figurative mark :

Class 33: Alcoholic beverages, except beer.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.