OPPOSITION No B 3 056 436

Contesini Group S.r.l., Via Girolamo Corvi 1, 46010 Commessaggio (Mantova), Italy (opponent), represented by ING. C. Corradini & C. S.r.l., Via Dante Alighieri 4, 42121 Reggio Emilia, Italy (professional representative)

a g a i n s t

Alimentias Emc, SL, Calle Jorge Juan, Número 141 5ºD, 28028 Madrid Spain (applicant).

On 24/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 436 is upheld for all the contested goods.

2. European Union trade mark application No 17 873 403 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 873 403 . The opposition is based on, inter alia, European Union trade mark registration No 2 803 278 . 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

The goods on which the opposition is based are, inter alia, the following:

Class 29: Fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; milk products; charcuterie; frozen fruits and vegetables.

The contested goods are the following:

Class 29: Dairy products and dairy substitutes; Meats; Roasted nuts; Roast nuts; Edible nuts; Shelled nuts; Seasoned nuts; Salted nuts; Preserved nuts; Nuts, prepared; Spiced nuts; Dried nuts; Processed quinces.

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.

The contested dairy products are identically contained in both lists of goods (including synonyms such as the opponent’s milk products).

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

Processed quinces are hard, acid pear-shaped fruits used in preserves or as flavouring. These goods are included in or overlap with the opponent’s preserved fruits, and therefore are identical.

The contested dairy substitutes are highly similar to the opponent’s milk products as they usually coincide in producer, relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested roasted nuts; roast nuts; edible nuts; shelled nuts; seasoned nuts; salted nuts; preserved nuts; nuts, prepared; spiced nuts; dried nuts are similar to a low degree to the opponent’s preserved vegetables as they usually coincide in producer, relevant public and distribution channels.

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 various degrees 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 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 verbal elements of the signs are not meaningful in certain territories, for example in those countries where Italian or Spanish are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech, Bulgarian and Hungarian-speaking part of the public.

The verbal elements ‘Alimentis’ in the earlier mark and ‘alimentias’ in the contested sign are meaningless, and therefore distinctive for the public subject to the present assessment.

None of the signs has an element that could be considered clearly more dominant than other elements.

The earlier mark’s and most of the contested mark’s figurative components are merely decorative. The stylised ear of wheat in the contested sign will be perceived as such; nevertheless, its distinctive character is low in relation to the foodstuff covered by the contested mark as it will be seen to refer to the nourishment-related purpose of the goods.

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.

Visually, the signs coincide in the letters ‘Alimenti*s’. The signs differ in the contested mark’s ninth letter, ‘a’. The signs also differ in their graphic representation, although the typeface is fairly standard lower case in both signs, apart from the first, capitalised letter of the earlier sign. The signs’ differing figurative elements or the stylised ear of wheat are decorative or distinctive to a low degree and thus do not have much impact on consumers.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Alimenti*s’, present identically in both signs. The pronunciation only differs in the sound of the ninth letter ‘A’ in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the ear of wheat will be associated with a meaning, the signs are conceptually not similar. However, on account of the low distinctive character of this element the difference does not have much impact.

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

d) Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning 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

The goods are identical or similar, to a high, average or low degree. The signs are visually similar to an above average degree and aurally to a high degree. In fact, the verbal element of the contested mark contains only one additional letter, which, being its ninth letter, could easily be overlooked by the relevant consumers.

The Opposition Division is of the view that the differences in a single letter towards the end of the sign or in decorative or lowly distinctive figurative elements are not sufficient to offset the significant visual and aural similarities. Therefore the consumers, composed of the public at large, will readily assume that the identical or similar goods, even those similar only to a low degree, come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Czech, Bulgarian and Hungarian-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 well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Marianna KONDAS

Aldo BLASI

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.