OPPOSITION No B 3 087 690

Raffinerie Tirlemontoise Société Anonyme, Avenue de Tervueren 182, 1150 Brussels, Belgium (opponent), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Brussels, Belgium (professional representative)

a g a i n s t

Philip Schirmer, Florastrasse 188, 50733 Köln, Germany and Leonard Hamacher, 6129 Paseo Tapajos, Carlsbad CA, 92009, United States of America (applicants).

On 12/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 690 is upheld for all the contested goods.

2. European Union trade mark application No 18 034 513 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 034 513 for the word mark ‘SUKRA’. The opposition is based on European Union trade mark registration No 16 939 928 for the word mark ‘SHUKR’. 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 the following:

Class 1: Chemical substances for preserving foodstuffs, artificial sweeteners.

Class 5: Dietetic sweeteners for medical purposes; sugars for medical and dietetic use.

Class 30: Sugar; sweeteners (natural -).

The contested goods are the following:

Class 5: Dietary and nutritional preparations; dietary and nutritional supplements; dietary fiber to aid digestion; dietary supplements for humans; health food supplements for persons with special dietary requirements; food for diabetics; food supplements; food supplements in liquid form; nutritional supplements; sugar substitutes for diabetics.

Class 30: Foodstuffs made of a sweetener for making a dessert; foodstuffs made of a sweetener for sweetening desserts; fructose for food; fruit sugar; honey substitutes; natural low calorie sweeteners; natural sweeteners.

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 5

The contested dietary and nutritional preparations; dietary and nutritional supplements; dietary supplements for humans; health food supplements for persons with special dietary requirements; food for diabetics; food supplements; food supplements in liquid form; nutritional supplements; sugar substitutes for diabetics include as broader categories, or overlap with, the opponent’s dietetic sweeteners for medical purposes. All these goods serve the purpose of nutrition, either for specific or general dietary requirements. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested dietary fiber to aid digestion aims to improve or prevent a health problem and is therefore at least similar to the earlier dietetic sweeteners for medical purposes. These goods share the same purpose (improving or preventing a health problem) and relevant public. They may coincide in method of use, producer and distribution channels.

Contested goods in Class 30

Natural sweeteners are identically contained in both lists of goods (including synonyms).

The contested fructose for food; fruit sugar; natural low calorie sweeteners are included in the broad category of the earlier sweeteners (natural -). Therefore, they are identical.

The contested foodstuffs made of a sweetener for making a dessert; foodstuffs made of a sweetener for sweetening desserts overlap with the earlier sweeteners (natural-). Therefore, they are identical.

The contested honey substitutes are at least similar to the earlier sweeteners (natural-). These goods share their methods of use, are in competition, and coincide in distribution channels, end users, and, potentially, producers.

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 as well as business customers with specific professional knowledge.

The degree of attention may vary from average (e.g. for sugar) to high (e.g. for dietetic sweeteners for medical purposes), depending on the specialised nature of the goods, the frequency of purchase and their price. Some of the relevant goods serve a medical purpose or target diabetics.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The same principles apply to products which are serving medical purposes or target consumers with specific nutritional needs (e.g. diabetics). Such products may have an impact on the health of the relevant public, who will therefore apply a high degree of attention in relation to such goods.

c) The signs

SHUKR	SUKRA
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 parties claimed that the signs in dispute might be associated with a certain meaning (e.g. in Arabic) or might be allusive (e.g. as a reference to sugar) in parts of the relevant territory. However, for a considerable part of the relevant public the signs are neither meaningful nor allusive. This is true, for example, for the part of the relevant public that does not understand Arabic and has no (close) equivalent in its national language that would allow an association with sugar. This is the case, for example, for the Spanish-speaking public, who will, in general, neither understand Arabic nor associate any of the signs in dispute with sugar (the Spanish equivalent for sugar is the rather different word ‘azúcar’). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Both marks are word marks, which, by definition, have no elements that could be considered more dominant than other elements. Furthermore, neither mark has a meaning, or is allusive or otherwise weak for the relevant (Spanish-speaking) public. Therefore, they have a normal degree of distinctiveness.

Visually, the signs coincide in four out of five letters, namely ‘S(*)UKR(*)’. Both signs start with the letter ‘S’ and they share the order of the overlapping letters ‘UKR’. The signs differ to the extent that the earlier mark includes the letter ‘H’ (placed in second position) and the contested sign the letter ‘A’ (placed in last position). Considering the abovementioned overlap, the signs are therefore visually similar to an average degree.

Aurally, the earlier mark will be pronounced by the relevant public as ‘SUKR’, whereas the contested sign will be pronounced as ‘SU-KRA’. Although the signs differ in the number of syllables (one versus two), they coincide in the sound of most of their letters, namely ‛S-U-K-R’. The signs only differ in the sound of the additional letter ‘A’, which, however, is placed at the very end of the contested sign. The second letter of the earlier mark, ‘H’, will not, according to the Spanish pronunciation rules, be pronounced. Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and target the public at large as well as professionals, whose degree of attention will vary from average to high depending on the goods in question. The distinctiveness of the earlier mark must be seen as normal. The signs are visually similar to an average degree and aurally similar to a high degree. A conceptual comparison is not possible and therefore does not influence the assessment of similarity of the signs.

The signs in dispute coincide in the majority of their letters (four out of five) and their sequence within the signs. Furthermore, they coincide in their beginnings (the letter ‘S’), which is usually the part which catches the consumers’ attention. The signs differ in the letter ‘A’, which, due to its positioning at the very end of the contested sign, has less impact on the perception of the mark. Finally, the signs differ in the second letter of the earlier mark, ‘H’, which, at least from an aural point of view, will not even be pronounced by the relevant public.

Account must be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering the above, and in the absence of particular concepts, which would help consumers to distinguish between the signs on a conceptual level, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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 16 939 928. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicants are the losing party, they 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

Begoña URIARTE VALIENTE

Holger Peter KUNZ

Christian STEUDTNER

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.