OPPOSITION Nо B 3 094 838

 

The Wonderful Company LLC, 11444 West Olympic Boulevard, 10th Floor, 90064 Los Angeles, United States of America (opponent), represented by Bird & Bird LLP, Avenue Louise 235, 1050 Bruxelles, Belgium (professional representative) 

 

a g a i n s t

 

Zhou Jian, 15c, Block 9, Section 15, Taoyuanju, Qianjin Road Two, Bao'an District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 Rue Ramey, 75018 Paris, France (professional representative).

On 14/10/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 094 838 is upheld for all the contested goods, namely: Class 29: Nuts, prepared; Fruits, tinned [canned (Am.)]; Fruit jellies. Class 32: Fruit juice; Smoothies.
2.		European Union trade mark application No 18 027 818 is rejected for all the contested goods. It may proceed for the remaining (non-contested) goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 027 818 ‘Wonderful Moment’ (word mark), namely against some of the goods in Classes 29 and 32, as set out in the ‘Preliminary remark’ of this decision.

The opposition is based on the following earlier rights:

1. European Union trade mark registration No 11 887 064 (figurative mark) based on goods in Classes 29 and 31;

2. European Union trade mark registration No 7 019 276 (figurative mark) based on goods in Class 29;

3. European Union trade mark application No 18 003 720 (figurative mark) covering goods and services in Classes 29, 30, 31, 32 and 35. The Opposition Division notes, however, that on 26/09/2019, the Office refused this application under Articles 7(1)(b) and 7(2) EUTMR;

4. United Kingdom trade mark registration No 3 362 873 (figurative mark) based on goods and services in Classes 29, 30, 31, 32 and 35;

5. European Union trade mark registration No 13 092 317 ‘POM WONDERFUL’ (word mark) based on goods in Classes 29, 30, 31 and 32;

6. European Union trade mark registration No 13 093 612 (figurative mark) based on goods in Classes 29, 30, 31 and 32.

The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to each earlier right.

 

PRELIMINARY REMARK

In accordance with Article 46(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EU trade mark application.

In accordance with Article 2(2)(i) EUTMDR, the notice of opposition may contain an indication of the goods and services against which the opposition is directed.

On 18/09/2019, the opponent filed notice of opposition against the contested EU trade mark application, indicating that the opposition was directed against some of the goods for which registration is sought, namely against some of the goods in Classes 29 and 32. These goods were clearly listed in the relevant field of the notice of opposition. However, by submitting further facts, evidence and arguments on 17/05/2020, the opponent indicated that the opposition was directed against all of the goods of the contested application in Classes 29 and 32 (page 1 of the opponent’s observations). Thus the opponent modified and broadened the extent of opposition.

The contested EU trade mark application was published on 05/07/2019. The opposition period expired on 05/10/2019. It means that the broadening of the extent of opposition, received by the Office on 17/05/2020 as mentioned above, was lodged after the expiry of the period of three months following the publication of the EU trade mark application against which it is directed and within which oppositions may be filed. Therefore, the broadening of the extent of the contested goods is inadmissible and the opposition is deemed to be directed against some of the goods in Classes 29 and 32, as listed in section a) of this decision.

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 11 887 064, as this earlier right is the most relevant vis-à-vis the contested trade mark application.

 

a) The goods

 

In relation to earlier European Union trade mark registration No 11 887 064, the goods on which the opposition is based are the following:

Class 29: Processed fruits and vegetables.

Class 31: Fresh citrus fruits; fresh fruits; fresh vegetables.

The contested goods are the following:

Class 29: Nuts, prepared; Fruits, tinned [canned (Am.)]; Fruit jellies.

Class 32: Fruit juice; Smoothies.

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 29

The contested nuts, prepared can be considered identical to the opponent’s processed fruits in Class 29. Firstly, when interpreting the term ‘nuts’ from a botanical point of view, they are firm shelled fruit with an edible kernel. Secondly, the terms ‘prepared’ and ‘processed’ overlap in the sense that it is impossible to clearly separate these methods of processing when they relate to agricultural/horticultural products.

In any event, the contested nuts, prepared are at least similar to an average degree to the opponent’s processed fruits and vegetables in Class 29. Both categories of goods include snacks, for example dried, salted and otherwise prepared or processed nuts, fruits and vegetables (almonds, pistachios, raisins, bananas, apples, potatoes, beetroot etc.). They can be sold as a mix. These goods serve the same purpose and satisfy the needs of the same consumers looking for snack foods. Moreover, these goods are in competition. They are found in the same sections of supermarkets and are displayed on the same shelves at the greengrocers. They also originate from the same undertakings operating in the field of processed agricultural/horticultural products.

The contested fruits, tinned [canned (Am.)]; fruit jellies are included in the broad category of the opponent’s processed fruits in Class 29. Therefore, they are identical.

Contested goods in Class 32

The contested fruit juice is extracted from fruit. The contested smoothies are drinks that are predominantly made from fruit and/or vegetables (juice, pulp, or both) and some other ingredients. These goods are similar to a low degree to the opponent’s fresh citrus fruits; fresh fruits; fresh vegetables in Class 31. It is increasingly common nowadays to offer freshly squeezed juice in the fruit and vegetable section in supermarkets, at the greengrocers or health food stores. Furthermore, fruit juices and smoothies, whether refrigerated or pasteurised, are often sold in the same or nearby sections of supermarkets where one can find fresh fruits and vegetables. They are purchased by the same consumers who can reasonably expect that these agricultural and horticultural products are produced by the same undertaking.

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 varying degrees are directed at the public at large. 

The relevant public’s degree of attention varies from average to low, mainly depending on the frequency of purchase and the price of the goods at issue. In particular, the habitual purchasing behaviour associated with some of these goods which are plain and inexpensive foodstuffs, for example snack foods and fruit juice, may result in a low degree of attention.

c) The signs

 

	Wonderful Moment
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 English word ‘WONDERFUL’, present in both signs, is meaningful in the Anglophone territories (i.e. the United Kingdom, Ireland and Malta) and also in other countries where a significant part of the public has sufficient knowledge of English as a foreign language. For example, the Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23).

In order to take into account the strong conceptual link between the signs which contributes to the overall similarity between them, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union.

The term ‘WONDERFUL’ means, inter alia, extremely fine, excellent. This concept is laudatory and has limited distinctiveness in relation to the relevant goods covered by both marks, as the quality of foodstuffs and beverages can be described, or at least promoted, as ‘wonderful’.

The earlier mark is comprised of a fairly standard depiction of this word, in white letters against a black rectangle, a purely decorative shape that is devoid of distinctiveness in itself. Although the letter ‘o’ is slightly stylised into a heart-shape, this feature neither precludes the word ‘WONDERFUL’ from being immediately read and understood, nor does it divert the consumer’s attention from the semantic content of the sign’s verbal element.

Firstly, the heart-shape is not more eye-catching than the other graphemes of the word. Secondly, although it evokes the notion of ‘I love it’ and, by extension, denotes one’s preferred choice or personal favourite, it must be pointed out that, on the relevant market of foodstuffs, such a graphical feature is quite banal and has weak distinctive character in relation to the goods at issue. All in all, the semantic content of the earlier mark as a whole points to the idea of ‘this is excellent (i.e. wonderful) and I love it’.

The contested sign, taken as a whole, will be associated with a point in time at which something extremely fine, excellent happens. In relation to the relevant goods, the concept conveyed by the sign has weak distinctiveness. This is because the meaning residing in the element ‘WONDERFUL’, albeit laudatory and of limited distinctiveness for the goods, prevails over the meaning conveyed by the word ‘MOMENT’, a concept that merely refers to a given point in time when something happens. In the context of foodstuffs and beverages, the public is likely to perceive it as a brief time when one can consume food, a break to enjoy a snack etc. Since the word ‘MOMENT’ cannot be artificially dissected from the overall impression of the contested sign which will be perceived in its entirety, its distinctiveness cannot be assessed individually and it is as weak as the word ‘WONDERFUL’.

Neither of the signs has any visually dominant element.

 

Visually, the signs coincide in the word ‘WONDERFUL’. Although this word is slightly stylised in the earlier mark, the weight that this difference has on the comparison is quite low, for the reasons given above. The black rectangle in the earlier mark has almost no impact on the present comparison.

The signs differ in the additional word in the contested sign, ‘MOMENT’. Its presence is not, however, capable to counteract the fact that the signs share the word ‘WONDERFUL’, taking into account the above considerations regarding the equally limited distinctiveness of both of these words. Furthermore, the word that the signs have in common is placed in the initial part of the contested sign, which is where the public tends to focus its attention, and the additional word in the contested sign is shorter than the common word.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the word ‘WONDERFUL’, considering that the heart-shape in the earlier mark has no impact on the way the word is read and pronounced.

The pronunciation of the contested sign differs in the sound of the word ‘MOMENT’ which has no counterpart in the earlier mark. 

Nevertheless, and for similar reasons as outlined in the visual comparison above, the signs are aurally similar to an average degree.

Conceptually, the public under analysis will associate the signs with a similar meaning related to something extremely fine and excellent. The differences result from the ‘I love it’ concept conveyed by the heart-shape in the earlier mark, and the brief period of time referred to by the contested sign’s element ‘MOMENT’. These concepts do not put a significant distance between the semantic content conveyed by each sign, since all of these ideas can cross the public’s mind when taking a break (i.e. a moment) to enjoy a snack.

Therefore, notwithstanding the limited distinctiveness of the concept that the signs share, the signs are conceptually similar to a high degree.

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, all of the earlier marks invoked as basis of opposition have been extensively used and enjoy an enhanced scope of protection. However, the present assessment is focused on earlier EU trade mark registration No 11 887 064 , based on processed fruits and vegetables in Class 29 and fresh citrus fruits; fresh fruits; fresh vegetables in Class 31.

To substantiate this claim, the opponent submitted an affidavit and a copious amount of evidence which essentially consists of product images, spreadsheets detailing the advertising expenses, samples of endorsements and social media placements with influencers, documents referring to giveaways and sampling campaigns, promotional competitions and coupons, online and printed press promotional articles, point of sale get-up, TV and press promotional campaigns, presence in fairs and exhibitions, third party references to the ‘POM WONDERFUL’ and ‘WONDERFUL’ marks, and documents detailing the sales of the various goods in the EU market.

In the affidavit, it is stated that according to the opponent company’s marketing strategy, ‘a particular prominence was given to the mark WONDERFUL in relation to processed and unprocessed nuts, whilst in relation to fruit juices and beverages The Wonderful Company has focused on the marketing of said products under the mark POM WONDERFUL’ (page 2, paragraph 6).

Indeed, it transpires from the entirety of the evidence submitted that the earlier mark ‘WONDERFUL’ (including in a figurative representation) is used in relation to prepared nuts (pistachios and almonds), whereas in relation to the other goods that are relevant for the present assessment, particularly fresh fruits, the mark that is used is ‘POM WONDERFUL’ (including in a figurative representation).  

At this point, the Opposition Division finds it appropriate not to undertake a full assessment of the evidence filed to substantiate the claim for reputation/enhanced distinctiveness with respect to the earlier right on which the present assessment is focused, namely EU trade mark No 11 887 064.

On the one hand, any recognition among the relevant public and enhanced distinctiveness acquired through use would relate to specific goods in Class 29. As shown in section a) of this decision, these goods are identical or at least similar to an average degree to the contested goods in Class 29.

On the other hand, the earlier mark at issue is not used in relation to the relevant goods in Class 31 and, therefore, the conclusions drawn from the assessment of the evidence of enhanced distinctiveness would not have a material impact on the outcome of the opposition.

Therefore, for the abovementioned reasons of procedural economy, the evidence filed by the opponent to prove the claim for reputation and enhanced distinctiveness 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. Considering what has been stated above in section c) of this decision and focusing on the English-speaking part of the public in the relevant territory, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

 

 

e) Global assessment, other arguments and conclusion

The contested goods are identical or similar to varying degrees to the goods on which the opposition is based in relation to earlier EU trade mark registration No 11 887 064 .

Admittedly, for the English-speaking consumers in the European Union which is the part of the relevant public under analysis, the inherent distinctiveness of the common element of the signs, i.e. the word ‘WONDERFUL’, and also that of the earlier mark as a whole is low. In this regard, the following must be borne in mind.

Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

As shown in detail in section c) of this decision, the degree of similarity between the overall impressions produced by the signs is average on the visual and aural levels and, from the conceptual perspective, the signs are highly similar.

Considering the categories of the goods covered by the conflicting signs and since they are ordinary consumer products directed at the public at large whose degree of attention varies from average to low in relation to the purchases in question, the overall similarity between the signs is sufficient to give rise to a situation where consumers believe that the differences between the signs that are confined to elements that are not more distinctive than the common element, ‘WONDERFUL’, denote a variation of the main brand or stem from marketing considerations, but not that that the differences in the signs mean that the goods originate from different undertakings.

On account of all the foregoing, the Opposition Division concludes that 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 well founded on the basis of the opponent’s European Union trade mark registration No 11 887 064.

It follows that the contested trade mark must be rejected for all the contested goods.

As regards the goods that have been found similar to a low degree, it is recalled that 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).

In the present case, the similarity between the signs, coupled with at most average degree of the public’s attention in relation to the goods at issue are sufficient to counteract the remote similarity between some of the goods, and a likelihood of confusion exists also in relation to them.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark under analysis, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness, for some of the relevant goods as set out in section d) of this decision.

 

As earlier European Union trade mark registration No 11 887 064 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).

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

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

 

 

Cristina CRESPO MOLTO

Solveiga BIEZA

Biruté SATAITE-GONZALEZ

 

 

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.