OPPOSITION No B 3 104 161

Azienda Agricola Il Giardino di Fabbri Antonio & Giorgio, Via Scavignano, 21, 48010 Marzeno, Brisighella (RA), Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

Joao Marcelo Pereira Dalla Costa, Babelsberger Strasse 3, 10715 Berlin, Germany and Raimundo Lazaro Nunes Gomes, Avenida Visconde de Jequitinhonha, 523 / 502, 51021-190, Recife Pernambuco, Brazil (applicants).

On 01/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 161 is upheld for all the contested goods.

2. European Union trade mark application No 18 123 714 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 18 123 714 . The opposition is based on, inter alia, international trade mark registration No 556 072 designating Denmark and Sweden ‘FRUITSUN’ (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 international trade mark registration No 556 072 designating Denmark and Sweden.

a) The goods

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

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

After a limitation made by the applicants on 13/11/2020, the contested goods are, the following:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicants’ list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Although the goods in conflict belong to different segments, as the applicants argue, the contested processed fruits, fungi and vegetables (including nuts and pulses) are similar to a low degree to the opponent’s fresh fruit and vegetables as they usually coincide in relevant public and distribution channels. Furthermore, they are 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 similar to a low degree are directed at the public at large. The degree of attention is considered average.

c) The signs

FRUITSUN
Earlier trade mark	Contested sign

The relevant territories are Denmark and Sweden.

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 Court has held that, although the average consumers normally perceive a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements that suggest a specific meaning to them or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58)

The earlier mark consists of the word mark ‘FRUITSUN’.

The element ‘FRUIT’ is an English word that refers directly to part of the relevant goods, namely fresh fruit. Therefore, it is non-distinctive for these goods and distinctive for the remaining goods.

The element ‘SUN’ is an English word which refers to ‘the star round which the earth orbits’ (information extracted from Lexico English Dictionary on 19/02/2021 at https://www.lexico.com/definition/sun). Since it has no direct relationship with the opponent’s goods, it is distinctive.

The relevant public is in countries where English is adequately understood, such as Denmark, Cyprus, the Netherlands, Finland and Sweden (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23, and 09/12/2010, T‑307/09, Naturally active, EU:T:2010:509, § 26 and 53). Therefore, they will split the earlier mark’s verbal element ‘FRUITSUN’ into two parts and will perceive the meaning of the English words mentioned above.

The contested sign is a figurative mark which consists of the verbal element ‘Sun’ in title-case letters above the verbal element ‘FRUITS’ in smaller upper-case letters. The sign shows three little yellow strokes to the top left of the first letter ‘S’ and two small green leaves to the bottom right of the last letter ‘S’.

The verbal elements ‘Sun’ and ‘FRUITS’ will be perceived with the same meaning explained above, albeit with the latter in plural form, and, consequently, the element ‘Sun’ will be perceived as distinctive and the element ‘FRUITS’ will be perceived as non-distinctive for processed fruits and distinctive for processed fungi and vegetables.

The figurative element of the three yellow strokes will be associated with the sun’s rays as they are depicted close to the word ‘Sun’. Due to its simplicity, it will merely be perceived as having a purely decorative nature. Therefore, its impact will be limited.

The figurative elements depicting the two green leaves are considered non-distinctive as they allude to the relevant goods and similar devices are commonly used in the market sector. The verbal element’s stylisation in the contested sign will merely be perceived as a graphical means of drawing the public’s attention to the verbal element and, therefore, its impact on the comparison of the signs will also be limited.

The element ‘Sun’ in the contested sign is the dominant element as it is the most eye-catching.

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).

Visually, the signs coincide in the string of letters ‘FRUIT’ and ‘Sun’ although they are positioned in reverse. The signs differ because the earlier mark’s elements are joined while they are separated in the contested sign. The marks also differ in the contested sign’s typeface, figurative elements and the additional final letter ‘S’.

Therefore, and taking into account the above assertions concerning the degree of distinctiveness and dominance of the sign’s elements, these are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in sound of the sequence of letters ‘FRUIT’ and ‘SUN’, although pronounced in reverse. The pronunciation slightly differs in the sound of the letter ‘S’ at the end of the contested sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Taking into account that the earlier mark’s element ‘FRUIT’ and the contested sign’s element ‘FRUITS’ are non-distinctive for part of the goods and that both signs coincide in the element ‘SUN’, the meaning of this element will be understood in both signs. Moreover, the figurative elements reinforce these meanings. Therefore, 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.

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 non‑distinctive element in the mark for a part of the goods, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier marks on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are similar to a low degree and target the public at large whose degree of attention is average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to an average degree and aurally and conceptually similar to a high degree given that the earlier mark’s elements ‘FRUIT’ and ‘SUN’ are completely included in the contested sign, albeit in a different order. The verbal elements differ in the additional letter ‘S’ at the end of the contested sign, which is the part the public usually focuses on less. The remaining differences, namely the typeface and the figurative elements and aspects in the contested sign, are non-distinctive, weak or have less impact, as explained above.

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 an overall assessment, taking into account the similarities between the signs as established above, it is reasonable to assume that when confronted with the contested sign in relation to the goods that are similar to a low degree, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings. The differences between the signs are not enough to counteract the similarities found, namely the presence of almost the same verbal elements in a different order. In addition, 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).

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

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 556 072 designating Denmark and Sweden. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 556 072 designating Denmark and Sweden 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).

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, 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

Andrea VALISA

Victoria DAFAUCE MENÉNDEZ

Benoit VLEMINCQ

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.