OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No B 2 058 504
Corex S.p.A., S.S. 19 n. 3-5, 84091 Battipaglia (Salerno), Italy (opponent),
represented by Società Italiana Brevetti S.P.A., Piazza di Pietra 39, 00186 Roma,
Italy (professional representative)
against
Gaston, spol. s r.o., Hluboká 5254, 760 01 Zlín, Czech Republic (applicant).
On 25/06/2013, the Opposition Division takes the following
DECISION:
1.
Opposition No B 2 058 504 is partially upheld, namely for the following
contested goods:
Class 29: Meat, fish, poultry and game; preserved, frozen, tinned, dried,
cooked meat, fish, fruits and vegetables; olive oil; olives; milk
products.
Class 30: Rice; pasta; ketchup; mustard; vinegar.
Class 31: Fresh fruits and vegetables; seeds; natural plants and flowers;
foodstuffs for animals; malt.
2.
Community trade mark application No 10 972 826 is rejected for all the above
goods. It may proceed for the remaining goods, namely milk in Class 29.
3.
Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of Community trade mark
application No 10 972 826. The opposition is based on Italian trade mark registration
No 1 273 053 and Community trade mark registration No 799 312. The opponent
invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
Decision on Opposition No B 2 058 504
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a) The goods
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 goods on which the opposition is based are the following:
IT No 1 273 053
Class 29: Peeled tomatoes, chopped tomatoes, sieved tomatoes; beans in sauce;
olive oil and extract virgin olive oil; halved and sliced peaches; ready-to-use sauces;
foodstuffs conserved in oil and foodstuffs conserved in vinegar.
Class 30: Tomato concentrate; edible pasta, vinegar; ready-to-use sauces.
Class 31: Peas; chick peas; cannellini beans, borlotti and large white beans; broad
beans.
CTM No 799 312
Class 29: Preserved, dried and cooked fruits and vegetables; fruit sauces.
Class 30: Sauces (condiments), not including spicy and sweet sauces.
Class 31: Agricultural, horticultural and forestry products and grains not included in
other classes.
The contested goods are the following:
Class 29: Meat, fish, poultry and game; preserved, frozen, tinned, dried, cooked meat,
fish, fruits and vegetables; olive oil; olives; milk and milk products.
Class 30: Rice; pasta; ketchup; mustard; vinegar.
Class 31: Fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs
for animals; malt.
Contested goods in Class 29
The contested preserved, dried and cooked fruits and vegetables are identically
designated in the list of the earlier Community trade mark.
The contested frozen, tinned fruits and vegetables are included in the preserved fruits
and vegetables covered by the earlier Community trade mark. It has to be noted that
‘preserved’ means food treated in a particular way so that it can be kept for a long
time without going bad, including in a frozen or tinned state. Therefore, they are
identical.
The contested olive oil is identically designated in the list of the earlier Italian trade
mark.
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The contested olives are the small black or green fruits that grow on olive trees.
Usually, they cannot be eaten fresh and they are cured in order to be preserved.
Therefore, they are included in the preserved fruits of the earlier Community trade
mark and they are identical.
There is an overlap between the contested preserved, tinned and cooked meat, fish
and the earlier foodstuffs conserved in oil and foodstuffs conserved in vinegar
covered by the Italian trade mark to the extent that all the contested goods can be
preserved/conserved in oil and vinegar and the earlier goods include a large variety
of goods, including fish and meat. Therefore, these goods are identical.
The contested milk products are similar to the olive oil covered by the earlier Italian
trade mark to the extent that milk products include butter. Therefore, these goods
have the same purpose, they coincide in their end users and they are in competition.
The contested dried and frozen fish, meat are similar to the foodstuffs conserved in
oil and foodstuffs conserved in vinegar covered by the Italian trade mark to the extent
that the contested fish and meat are preserved in a frozen state and the earlier goods,
which include meat and fish, are conserved in oil and vinegar. Therefore, these
goods have the same nature, although preserved in a different state, and they can be
in competition. They are also directed at the same consumers and have the same
purpose.
The contested meat, fish, poultry and game are similar to a low degree to the
foodstuffs conserved in oil and foodstuffs conserved in vinegar covered by the Italian
trade mark to the extent that the earlier goods include meat, fish, poultry and game
conserved in oil and vinegar. Even though the contested goods are fresh products,
whereas the earlier goods are preserved, they have the same purpose, they can be
in competition and they are directed at the same consumers.
The contested milk is not similar to any of the goods covered by the earlier marks,
which mainly cover preserved fruits and vegetables (tomatoes, beans, peaches),
sauces, olive oil, foodstuffs conserved in oil and vinegar, pasta, vinegar, agricultural,
horticultural and forestry products and grains. These goods have a different nature,
purpose and method of use. They originate from different manufacturers, are
distributed through different channels and they are neither in competition, nor are
they complementary.
Contested goods in Class 30
The contested pasta is identical to the edible pasta covered by the earlier Italian trade
mark.
The contested vinegar is identically included in the list of the earlier Italian trade
mark.
The contested ketchup is included in the ready-to-use sauces of the earlier Italian
trade mark. Therefore, they are identical.
The contested mustard is similar to a high degree to the ready-to-use sauces of the
earlier Italian trade mark. They have the same purpose (as condiments to a meal),
they are in competition and they can coincide in producers, end users and distribution
channels.
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The contested rice is similar to a low degree to the edible pasta covered by the Italian
trade mark. These goods may be in competition and they can coincide in end users,
distribution channels and method of use.
Contested goods in Class 31
The contested fresh fruits and vegetables are included in the broad category of
agricultural products of the earlier Community trade mark. Therefore, they are
identical.
The contested seeds are identical to the grains covered by the earlier Community
trade mark because, using a different wording, they designate the same goods.
The contested natural plants and flowers are included in the broad category of
horticultural products of the earlier Community trade mark. Therefore, they are
identical.
The contested foodstuffs for animals include, as a broader category, the opponent’s
grains not included in other classes covered by the earlier Community trade mark. It
is impossible for the Opposition Division to filter these goods from the
abovementioned category. Since the Opposition Division cannot dissect ex officio the
broad category of the applicant’s goods, they are considered identical.
The contested malt is included in the grains not included in other classes covered by
the earlier Community trade mark. Therefore, they are identical.
b) The signs
1) IT No 1 273 053
2) CTM No 799 312
Earlier trade marks
Contested sign
The relevant territory is Italy for earlier mark No 1 and the European Union for earlier
mark No 2.
For reasons of procedural economy, the Opposition Division will focus the
comparison of the signs on the Italian-speaking part of the relevant public.
Visually, the signs are similar to the extent that they coincide in the letters ‘m-a-r-i-na’. On the other hand, they differ in the additional letter ‘n’ of the contested sign and
in the figurative elements of the signs. In the earlier mark No 1, the word ‘marina’ is
Decision on Opposition No B 2 058 504
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depicted in green italic characters within a white rectangular label with red contours,
placed over a red background. Earlier mark No 2 is written in black bold, italic
characters, whereas the contested sign consists of the word ‘marinna’ written in white
letters within a red label with green contours; a stylised green crown is depicted on
the upper part of the label.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‛m-a-r-i-na’, present identically in both signs, and to that extent the marks are aurally similar. The
pronunciation differs in the sound of the additional letter ‛n’ of the contested mark which
is audible in Italian.
Conceptually, the Italian word ‘marina’ of the earlier marks means 1. ‘marina’, that is an
area of water beside the land, that is designed for keeping small private boats in; 2. ‘the
navy’. Used as an adjective, it means ‘marine’, that is of, found in, or relating to the sea;
of or relating to shipping, navigation; of or relating to a government department
concerned with maritime affairs. It is also an Italian female name. The contested sign
‘marinna’ has no meaning, although it reproduces a stylised crown. The signs are not
conceptually similar.
Taking into account the abovementioned visual and aural coincidences, it is
considered that the signs under comparison are similar.
c) Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the
conflicting signs must be based on the overall impression given by the marks, bearing
in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly
more dominant (visually eye-catching) than other elements.
It should be noted that the marks are composed of a distinctive element (the word
‘marina’ or ‘marinna’) and less distinctive figurative elements of a purely decorative
nature (the labels and stylised characters). In addition, the device of a stylised crown
in the contested sign is a rather weak element, since it is laudatory and commonly
used in trade to promote the high quality of the goods in question. Therefore, the
verbal element of the signs is considered more distinctive than the figurative elements.
Consequently, the additional figurative elements have only a limited impact when
assessing the likelihood of confusion between the marks.
d) Distinctiveness of the earlier marks
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 marks are particularly distinctive by
virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
their distinctiveness per se. In the present case, the earlier trade marks as a whole
have no meaning in relation to any of the goods at hand from the perspective of the
Decision on Opposition No B 2 058 504
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public in the relevant territory. Therefore, the distinctiveness of the earlier marks must
be seen as normal.
e) Relevant public – level 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 level 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 and similar to different degrees
are directed at the public at large. Some of them are not expensive and purchased
on a daily basis (for instance, milk products, meat, fish, poultry and game, preserved,
frozen, tinned, dried, cooked meat, fish, fruits and vegetables, olive oil) and,
therefore, the level of attention of the public varies from low to average.
f) Global assessment, other arguments and conclusion
The goods are partly identical, partly similar to different degrees and partly dissimilar.
The earlier marks have a normal distinctive character.
The signs are phonetically similar to a high degree, since they only differ in the
additional letter ‘n’ of the contested sign. They are visually similar to the extent that
they share the six letters ‘m-a-r-i-n-a’ placed in the same order. The verbal element of
the earlier marks is fully included in the contested sign. The signs only differ in the
additional letter ‘n’ of the contested sign and in the figurative elements of the signs.
However, as explained before, these elements are merely decorative and less
distinctive than the word elements ‘marina’ and ‘marinna’ and they do not change the
overall impression of similarity between the signs. Indeed, when a sign consists of
both word and figurative components, the principle has been established that the
word 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 most readily refer to a sign by its verbal component.
Considering all the above, it is considered that the differences between the signs are
not sufficient to rule out a risk of confusion or association between the marks.
Account should be taken of the fact that the average consumer only rarely has the
chance to make a direct comparison between the different marks but must place his
trust in the imperfect picture of them that he has kept in his mind. Furthermore, for
most of the goods at stake, the level of attention of the public is rather low.
Therefore, the Opposition Division finds that there is a likelihood of confusion on the
part of the public and the opposition is partially well founded on the basis of the
opponent’s Italian and Community trade mark registrations.
It is a result of the unitary character of the Community trade mark, laid down in
Article 1(2) CTMR, that an earlier Community trade mark has identical protection in
all Member States. Earlier Community trade marks may therefore be relied upon to
challenge any subsequent application for a trade mark which would prejudice their
protection, even if this is only in relation to the perception of consumers in part of the
European Community. It follows that the principle laid down in Article 7(2) CTMR,
which provides that it is sufficient that an absolute ground for refusal exists in only
Decision on Opposition No B 2 058 504
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part of the Community for a trade mark application to be refused, applies, by analogy,
to a relative ground for refusal under Article 8(1)(b) CTMR.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade marks. For the
goods found to be similar to a low degree, this low similarity is compensated by the
high similarity of the signs. The opposition is not successful insofar as the remaining
dissimilar goods are concerned, namely milk in Class 29.
COSTS
According to Article 85(1) CTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 85(2) CTMR,
where each party succeeds on some heads and fails on others, or if reasons of equity
so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Juan Antonio MORALES
PAREDES
Frédérique SULPICE
Martin EBERL
According to Article 59 CTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 60 CTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. Furthermore, a written statement of the grounds of appeal must be filed
within four months of the same date. The notice of appeal will be deemed to be filed
only when the appeal fee of EUR 800 has been paid.