OPPOSITION No B 3 065 216

Industrias Alimentarias de Navarra, S.A., Pol. Peñalfons, s/n, Apartado 3, 31330 Villafranca (Navarra), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014, Madrid Spain (professional representative)

a g a i n s t

Organto Europe B.V., Ginnekenweg 240, 4835 NJ Breda, Netherlands, (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 216 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 902 921 . The opposition is based on, inter alia, European Union trade mark registration No 3 415 114 ‘IAN’ (word 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 European Union trade mark registration No 3 415 114.

a) The goods and services

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

Class 29: Meat, fish, poultry and games; meat extracts; preserved, dried and cooked vegetables and fruits; jellies, jams, fruit sauces; eggs, milk and milk products; edible fats and oils.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice.

Class 31: Agricultural, horticultural and forestry products and grains (not included in other classes); live animals; fresh vegetables and fruits; seeds, natural plants and flowers; animal feed, malt.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; preserved, dried and cooked beans; preserved, frozen, dried and cooked peas; Preserved, dried and cooked pulses; Preserved, dried and cooked asparagus; Preserved, dried and cooked broccolini; Preserved, dried and cooked soya beans; Preserved, dried and cooked pea pods; Frozen fruit and vegetables; Frozen beans; Frozen peas; Frozen pulses; Frozen asparagus; Frozen broccolini; Frozen soya beans; Frozen pea pods; Jellies, jams, compotes; Eggs, milk and milk products; Organic milk; Edible oils and fats.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice, tapioca, sago; Flour and preparations made from cereals, bread, pastry and confectionary, ices; Sugar; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Dried herbs; Spices; Ice.

Class 31: Unprepared and unprocessed agricultural, aquacultural, horticultural and forestry products; Unprepared and unprocessed cereals and seeds; Fresh fruits, vegetables and herbs; Organic fresh fruit; Organic fresh vegetables; Organic fresh herbs; Beans, fresh; Peas, fresh; Fresh pulses; Fresh asparagus; Fresh broccolini; Fresh soya beans; Fresh pea pods; Natural plants and flowers; Flower bulbs, seedlings and plant seeds; Live animals; Foodstuffs and beverages for animals; Malt.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; Business management; Business administration; Office functions; Publication of advertising texts; Distribution of advertising material; Promotional activities; Advertising; Conducting of business; Business administration, business communication, business strategic, business organisational and business economic consultancy; Provision of commercial information; Business advice relating to franchising; Marketing services; Market canvassing, market research and market analysis; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, preserved, dried and cooked beans, preserved, dried and cooked peas, preserved, dried and cooked pulses and preserved, dried and cooked asparagus; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of preserved, dried and cooked broccolini, preserved, dried and cooked soya beans, preserved, dried and cooked pea pods, frozen fruits and vegetables, frozen beans, frozen peas, frozen pulses, frozen asparagus, frozen broccolini, frozen soya beans and frozen pea pods; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of jellies, jams, compotes, eggs, milk and milk products, organic milk, edible oils and fats, coffee, tea, cocoa, artificial coffee, rice, tapioca, sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), dried herbs, spices and ice; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of raw and unprocessed agricultural, aquacultural, horticultural and forestry products, raw and unprocessed cereals and seeds, fresh fruits, vegetables and herbs, organic fresh fruit, organic fresh vegetables, organic fresh herbs, fresh beans, peas, fresh pulses, fresh asparagus and fresh broccolini; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of fresh soya beans, fresh pea pods, natural plants and flowers, flower bulbs, seedlings and seeds for planting, live animals, foodstuffs and beverages for animals and malt; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages and alcoholic beverages; Organisation of events for commercial and advertising purposes; Compiling, managing and processing data files; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.

Some of the contested goods and services are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

IAN
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 earlier mark ‘IAN’ might be seen as a male first name by the English-speaking part of the public. Since it has no meaning for the goods in question it is distinctive. For the remaining part of the public these letters have no meaning and are, therefore, also distinctive.

The element ‘organic’ of the contested sign will be understood by the public in the European Union in the sense of ‘biological’. This word is widely used in the market and its equivalent is nearly identical in most European languages (e.g. orgánico in Spanish, organisch in German, organique in French, organisca in Swedish, organiczny in Polish etc.) Since it indicates that the goods in question are goods produced without employment of e.g. chemical fertilizers, growth stimulants, antibiotics, or pesticides, this element is at most of a weak distinctiveness.

The element ‘I am organic’ will be understood as a whole by the English-speaking public as a slogan indicating that the goods in question are ‘biologically’ produced goods. Therefore, it is as a whole at most of a weak distinctiveness.

For the non-English speaking part of the public the element ‘I Am’ has no meaning and is therefore distinctive.

The element ‘ORGANTO’ of the contested sign has no meaning for the relevant public and is therefore distinctive.

As regards the contested sign, it is composed of verbal elements and less distinctive figurative elements of a purely decorative nature.

The opponent claims that only the element ‘I AM’ of the contested sign is dominant, however, the Opposition Division is of the view that the entire element ‘I am organic’ is the dominant one due to the fact that it is represented in the same font size and the same letter type and the entire expression is clearly visually outstanding in the sign.

Visually, the signs coincide in the letters ‘IA’. However, they differ in all the remaining elements. The different letters ‘M’ versus ‘N’, the space between the letters ‘I’ and ‘A’ in the contested sign, the additional word elements ‘Organic’ and ‘Organto’, the (slight) stylization of the word elements in the contested sign and the figurative elements of the contested sign. Even if some elements of the contested sign, like the word ‘organic’, are weak or written in a much smaller font, their presence cannot be totally neglected. The overall impression of the signs is totally different.

Therefore, the signs are – at best - similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘IA’, present identically in both signs. The pronunciation differs in the letters ‘M’ versus ‘N’ of the signs and in the additional word elements ‘organic’ and ‘organto’. Even if the word ‘organic’ is of a weak distinctiveness and the word ‘organto’ is written in a much smaller font, these words cannot be totally neglected.

Therefore, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the English-speaking part of the public both signs have a meaning. As the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

The non-English speaking part of the public will perceive the meaning of the element ‘organic’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

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

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).

Even if the goods and services were assumed to be identical, the differences in the signs outweigh the coincidences. The signs are visually similar at most to a very low degree and aurally to a low degree. Moreover, no conceptual similarity has been established between the signs.

Especially the goods themselves 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).

Even considering that the element ‘organic’ of the contested sign is at most of a weak distinctiveness, the figurative element is of a purely decorative nature and the element ‘organto’ is written in a much smaller font, these elements cannot be totally neglected.

Additionally, the earlier sign has only three letters; it is, consequently, a short mark and it is considered that the fact that the element ‘I AM’ of the contested sign differs in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

It should also be considered that, according to the case-law, in relatively short signs, the elements at the end and centre of a word are as important as the initial elements (16/09/2006, T-221/06, Bebimil, EU:T:2009:330, § 47).

The additional elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the earlier sign is a short mark.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Spanish trade mark registration No 1 279 243 for the word mark ‘IAN’ and Spanish trade mark registration No 2 564 999 for the word mark ‘IAN’.

Since these marks are identical to the one that has been compared, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Volker MENSING

Reiner SARAPOGLU

Anna MAKOWSKA

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.