OPPOSITION Nо B 3 101 528

 

Verde Natur España, S.L., C/ Isla de Tenerife, 4, 28660 Madrid, Spain (opponent), represented by Intermark Patentes y Marcas, S.L.P. (also trading as Lidermark Patentes y Marcas), C/Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative) 

 

a g a i n s t

 

Hortival Diffusion, Les Fontaines de l'Aunay BP 79, 49250 Beaufort-en-Vallée, France (applicant).

On 21/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 101 528 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 096 513 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 18 096 513  (figurative mark). The opposition is based on, inter alia, Spanish trade mark registration No M0 361 126, (figurative 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 Spanish trade mark registration No M0 361 126.

 

a) The goods

 

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

 

Class 31: Oranges, mandarins, lemons and, in general, all kind of fresh fruits, onions, vegetables and horticultural products.  

After a limitation of the list of goods submitted by the applicant in the course of the proceedings, the contested goods are the following:

 

Class 31: Unprocessed horticultural products; shrubs; trees, excluding those linked to fresh vegetables, fruits and fresh fruit.

The first language of the application for the contested mark is French and the wording is produits horticoles non transformés; arbustes; arbres, à l'exclusion de ceux liés aux légumes frais, aux fruits et aux fruits frais which when translated is Unprocessed horticultural products; shrubs; trees, excluding those linked to fresh vegetables, fruits and fresh fruit.

However, the wording in the English version of the list is unprocessed horticultural products; shrubs; trees except for vegetables fresh, fruits and fruit fresh which is rather non-sensical.

Where an incorrect translation of the list of goods and services is detected in an EUTM application that prevents the Office from carrying out a comparison of the goods and services, the list will either be sent for translation again or, in clear-cut cases, changed directly in the Register. The Office will take its decisions on the basis of the correct translation. Indeed, the Office will explain which language version of the goods and services is the definitive version for the purposes of the comparison. Consequently, given that the first language of the application is French it is this version which is used as a basis for the comparison of goods and services, as listed above.

As a semicolon is used to separate the terms, the restriction ‘excluding those linked to fresh vegetables, fruits and fresh fruit’ in the contested marks list, only applies to the term trees and not to other terms included in the list, that is, unprocessed horticultural products; shrubs.

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 unprocessed horticultural products are included in the broader horticultural products of the earlier mark. Therefore, they are identical.

The contested shrubs; trees, excluding those linked to fresh vegetables, fruits and fresh fruit are considered to be similar to a high degree to the earlier horticultural products, as horticultural products concern the products grown in a garden, ranging from fruits and vegetables to plants, bushes, shrubs and grass, for example. Therefore, the goods coincide in nature, purpose, distribution channels and intended consumers. Furthermore, these goods may be in competition.

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 a high degree are directed at the public at large. The degree of attention is considered to be average.

 

 

c) The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is Spain.

 

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 consists of the word ‘TRICOLOR’, written in black lower-case letters inside a square, along with images of fruit/vegetables. The word element ‘TRICOLOR’ has a meaning in the relevant territory, as something containing three colors. The contested mark consists of the word combination ‘TRICOLOR CHARM’, written in calligraphy and in mixed colors of green, yellow, orange and purple. As mentioned, the word ‘TRICOLOR’ has a meaning in the relevant territory, but the word ‘CHARM‘ has no meaning within that territory. Consequently the signs share the concept of three colours and whilst it is true that the images of fruit/vegetables in the earlier mark denotes a different concept, this loses weight due to their low distinctive character, if any at all.

Visually, the signs coincide in the letters ‘TRICOLOR’, therefore, the whole verbal part of the earlier mark is included in the contested mark. The marks differ in the second word of the contested mark ‘CHARM’ with no correspondence in the earlier mark. The earlier mark contains eight letters and the contested mark contains thirteen letters, thereof, the marks share the first eight letters. Indeed, the identical beginning of the marks gives a similar overall impression of the marks. In this respect, generally, consumers tend to focus on the beginning of a mark as the public reads from left to right, which makes the initial part of a trade mark the one that first catches the attention of the public.

Further, 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).

The marks differ in their figurative element, as the earlier mark is written in black lower-case letters inside a square, along with images of fruit/vegetables and the contested sign is written in calligraphy and in mixed colors of green, yellow, orange and purple. As the public is more likely to focus on the verbal components of marks rather than the figurative, and since the marks coincide in the distinctive word element ‘TRICOLOR’, the marks are considered to be visually similar to an average degree.

Aurally, the marks coincide in the sound of their first word ‘TRICOLOR’, that is, the whole verbal part of the earlier trade mark is included in the contested mark. As mentioned above, consumers tend to focus on the beginning of the mark, which in this case is identical. Aurally, the marks differ in the last word of the contested sign, ‘CHARM’.

As the marks coincide in their first word, they are considered to be aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘something containing three colors’, the signs are conceptually similar to a high degree.

 

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

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are identical and highly similar and they target the public at large, whose level of attention is average. The earlier mark has a normal degree of inherent distinctiveness. The marks are visually and aurally similar to an average degree and conceptually similar to a high degree.

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, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion, as they differ only in the last word of the contested mark and the figurative elements. It can be reasonably concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical and highly similar, and will perceive them as having the same origin.

 

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 Spanish trade mark registration No M0 361 126. It follows that the contested trade mark must be rejected for all the contested goods.

  

As the earlier right, Spanish trade mark registration No M0 361 126, (figurative mark), 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

 

 

Vanessa PAGE HOLLAND

Dagný Fjóla JÓHANNSDÓTTIR

Inés GARCÍA LLEDÓ

 

 

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.