OPPOSITION Nо B 3 071 978

Expur S.A., 3 Amara Road, Slobozia, Ialomita County, Romania (opponent), represented by Tuca Zbarcea Asociatii, Victoriei Square, America House, West Wing, 8th floor, 4-8 Nicolae Titulescu Ave., 011141 Bucharest, Romania (professional representative)

a g a i n s t

Olior Porcuna S.A., Cardenal Cisneros, 33, 23790 Porcuna, Jaen, Spain (applicant), represented by Ponti & Partners, S.L.P., C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative).

On 16/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 978 is upheld for all the contested goods.

2. European Union trade mark application No 17 961 804 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 17 961 804 (figurative mark). The opposition is based on Romanian trade mark registrations No 71 240 ‘OLIDOR’ (word mark) and No 139 836 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In its submissions of 04/11/2019, the applicant claims that the opponent is not the owner of the earlier trade marks because the name that appears on the documents proving the existence of these earlier rights contains the additional letters ‘SC’. However, ‘SC’ is the abbreviation for Societate Comercială (‘commercial legal entity’ in English) and, consequently, changes neither the legal entity nor the legal form of the opponent. Therefore, the opposition is substantiated.

PROOF OF USE

Proof of use of earlier Romanian mark No 71 240 was requested by the applicant. However, for reasons of procedural economy, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed based on the other earlier right, Romanian trade mark registration No 139 836, which is not subject to a request for proof of use.

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 Romanian trade mark registration No 139 836.

a) The goods

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

Class 29: Edible vegetable oils, bottled and/or in bulk.

The contested goods are the following:

Class 29: Oils and fats.

The contested oils and fats include, as a broader category, the opponent’s edible vegetable oils, bottled and/or in bulk. 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 are directed at the public at large, whose degree of attention, contrary to the assertions of the opponent, is considered average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 verbal element ‘OliDor’ of the earlier mark, as a whole, has no meaning for the relevant public. However, its irregular capitalisation may lead the consumers to dissect this element and look for meaning in its components. In this regard, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, the relevant consumers may break down the verbal element of the sign into the meaningful Romanian word ‘dor’ meaning ‘longing; appetite, taste’ in English (information extracted from DexOnline on 10/11/2020 at https://dexonline.ro/definitie/dor) and the component ‘Oli’. The word ‘Dor’ could be seen as indicating a special appetite for something. However, the position of this component does not conform to the usual grammatical order in which this word is used (‘dor’ of something). Furthermore, the other component, ‘Oli’, has no specific meaning for the relevant goods. Therefore, ‘Dor’ is distinctive. Contrary to the applicant’s assertions, the component ‘Oli’ does not mean, or allude to, ‘oil’ in Romanian as the Romanian equivalent is ulei. Although in some parts of the relevant territory this component could be associated with some regionalisms, such as ‘potters’ or ‘to cover the head with a headscarf’ (information extracted from DexOnline on 10/11/2020 at https://dexonline.ro/definitie/oli), taking into account its position, it is very likely to be perceived as a prefix without any specific meaning. Therefore, this component of the earlier mark is also considered distinctive.

The expression ‘ULEI RAFINAT DE FLOAREA-SOARELUI’ of the earlier mark will be understood as ‘refined sunflower oil’ by the relevant public. Bearing in mind that the relevant goods are oils and fats, this element is descriptive and non-distinctive.

The earlier mark’s figurative element will be perceived as a reference to the purpose of the relevant goods: to be used in salads. Consequently, it has a weak distinctive character.

The contested sign’s verbal element ‘OLIOR’ has no meaning for the relevant public and is, therefore, distinctive. Contrary to the applicant’s opinion, there is no reason to assume that the relevant public will dissect this term in order to perceive a concept, because, as mentioned above, the component ‘Oli’ has a meaning only in some regions of Romania. Moreover, according to settled case-law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not the case here.

The contested sign’s figurative element will be perceived as an olive, with some olive leaves on either side of it, and a droplet inside it. Since these elements will be perceived as a reference to the nature of some of the relevant goods (olive oil), they are devoid of distinctive character.

The remaining figurative aspects of the signs – namely the rather standard stylisation and the colours of the verbal elements – will not attract the consumer’s attention away from the elements they embellish.

The earlier mark’s figurative element and its verbal element ‘OliDor’ are co-dominant, because they are the most eye-catching.

The contested sign has no element that could be considered clearly more dominant than other elements.

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).

As stated by the applicant, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. According to Office practice, signs with three or less letters/numbers are considered short signs. In the case at issue, the distinctive verbal elements of the signs contain six and five letters respectively. Therefore, they cannot qualify as ‘short signs’, or even as ‘relatively short signs’, and the applicant’s argument in this regard must be put aside.

Visually, the signs coincide in the strings of letters ‘OLI’ and ‘OR’, placed in the same positions within their distinctive verbal elements. Furthermore, they have similar structures: a figurative element above a verbal element. They differ in the letter ‘D’ in the middle of the earlier mark’s distinctive verbal element, and in its additional expression ‘ULEI RAFINAT DE FLOAREA-SOARELUI’. They further differ in the figurative elements and aspects of the signs, which, however, have less impact on consumers for the reasons explained above.

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

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‛OLI(*)OR’, present identically in both signs. The pronunciation differs in the sound of the letter ‛D’ of the earlier mark, which has no counterpart in the contested sign. The additional element of the earlier mark, ‘ULEI RAFINAT DE FLOAREA-SOARELUI’, is unlikely to be pronounced due to its descriptive character, size and non-dominant position. Consequently, the signs have the same rhythm and intonation, and a very similar length.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark’s verbal element as explained above, the other sign has no meaning in that territory. Furthermore, the figurative elements of the signs will be associated with dissimilar meanings. Therefore, the signs are conceptually not 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, despite the presence of a weak and a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical. They target the public at large, whose degree of attention is average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to an average degree, aurally highly similar and conceptually not similar. In particular, the marks coincide in five out of six letters in their distinctive verbal elements. The differences between the signs are confined to one additional letter in the earlier mark, and non-distinctive or secondary elements and aspects in both signs.

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. The coincidences are found not only at the beginnings of the distinctive elements of the signs (a string of three letters), but also at their ends, and this increases their weight.

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). Therefore, it cannot be ruled out that consumers may overlook the missing letter in the middle of the contested sign and confuse the signs.

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). The similarities between the signs, together with the identity of the relevant goods, are clearly enough to counteract their dissimilarities and lead consumers to confuse the commercial origin of those identical goods.

The applicant refers to previous decisions of the Office to support its arguments (02/06/2004, B 399 297; 19/09/2012, B 1 852 170; 19/09/2011, B 1 612 863; 18/10/2006, B 822 678; 29/07/2005, B 678 054; 20/06/2002, B 291 247). 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the applicant are not relevant to the present proceedings because the outcomes were based on the low degree of visual similarity between the signs, or a different overall impression attributed to the high level of attention of the public. The low degree of visual similarity was due to various factors and their combinations: elaborate stylisation, different structures, different beginnings and different dominant elements. In one of the cases, visual dissimilarity was found together with a low degree of aural similarity. In another case, the high degree of attentiveness of the relevant public led to an overall impression that there was no likelihood of confusion. Furthermore, all the cases referred to different relevant goods and services.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

Furthermore, the most recent decision cited by the applicant is from 2012 and the Office’s practice may have changed since then.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The applicant refers to a judgment (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 93) to support its argument that phonetic similarity is not enough to create a likelihood of confusion. However, as mentioned above, an overall assessment of the visual, aural and conceptual similarities between the marks should be made. In the case referred to by the applicant, there were significant visual differences between the signs, both of which consisted of only two letters/symbols. Consequently, this is not applicable to the present case.

The applicant further claims that it is the owner of a Spanish trade mark, No 427 042 , registered in 1964 and that the verbal element ‘Olior’ corresponds to its company name. However, when assessing similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered or applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38). It is also irrelevant if the applicant owns other similar or identical marks. Consequently, this argument of the applicant must be put aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 139 836. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Romanian trade mark registration No 139 836 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 right 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, 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

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

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.