On 27/11/2015, the Opposition Division Takes the Following

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)

Opposition Division

OPPOSITION No B 2 450 065

Aldi Einkauf Gmbh & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft Mbb, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Gf Foods (York) Limited, Suite 8, Room 1, Brackenholme Business Park, Brackenholme, Selby North Yorkshire YO8 6EL, United Kingdom (applicant), represented by Branded!, Unit 3a Centurion Office Park Clifton Moor, York YO30, 4WW, United Kingdom (professional representative).

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 450 065 is upheld for all the contested goods and services.

2. Community trade mark application No 13 027 982 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 027 982. The opposition is based on Community trade mark registration No 10 864 941. 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 economicallylinked 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 2 450 065 page: 2 of 8 a) The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

The contested goods and services are the following:

Class 5: Dietetic food for people allergic to gluten-based goods.

Class 29: Frozen prepared meals and snacks including pasta and pasta dishes; Vegetable suet for food; all being gluten free.

Class 30: Gluten free foods namely breakfast cereals; cereal bars; brownies; muffins; cookies; donuts; pastry and pastry products both sweet and savoury including pies, pasties, tarts and quiches; sausage rolls; samosas; spring rolls; flour; bread; bread mixes; mixes for making cakes, brownies, muffins and cookies; mixes for making savoury foodstuffs including vegetable suet, dumplings, stuffing, pastry and gravy; dried pasta; prepared meals; pasta and pasta dishes; Christmas cakes, puddings and mince pies.

Class 35: Retail services, online retail services and mail order retail services connected with the sale of fresh, frozen and dried gluten free foods including: frozen prepared meals and snacks including pasta and pasta dishes, vegetable suet for food, breakfast cereals, cereal bars, brownies, muffins, cookies, donuts, pastry and pastry products both sweet and savoury including pies, pasties, tarts and quiches, sausage rolls, samosas, spring rolls, flour, bread, bread mixes, mixes for making cakes, brownies, muffins and cookies, mixes for making savoury foodstuffs including vegetable suet, dumplings, stuffing, pastry and gravy, dried pasta, prepared meals, pasta and pasta dishes, Christmas cakes, puddings and mince pies.

The earlier Community trade mark No 10 864 941 is registered for the entire class headings of Classes 3, 5, 30 of the Nice Classification. It was filed on 08/05/2012. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the Decision on Opposition No B 2 450 065 page: 3 of 8 alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the tenth edition.

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 Dietetic food for people allergic to gluten-based goods are included in the broad category of the opponent’s Dietetic food and substances adapted for medical use. Therefore, they are considered identical.

The contested Vegetable suet for food; all being gluten free is a specially treated vegetable oil/grease product aimed at persons with a medical condition that does not allow them to ingest products with gluten. Therefore, these goods have similar purpose, methods of use and manufacturers as the opponent’s Dietetic food and substances adapted for medical use. The goods can be in competition, have the same distribution channels and consumers. The goods are similar.

The alphabetical list of goods, in class 30, of the opponent also includes goods such as Noodle-based prepared meals. The contested Frozen prepared meals and snacks including pasta and pasta dishes have the same nature, purpose and methods of use compared to the opponent’s Noodle-based prepared meals. They also coincide in distribution channels and users. The goods are similar.

The contested Gluten free foods namely: breakfast cereals; cereal bars; brownies; muffins; cookies; donuts; bread mixes; mixes for making cakes, brownies, muffins and cookies; mixes for making savoury foodstuffs including vegetable suet, dumplings, pastry; dried pasta; pasta are included in the broad categories of the opponent’s Flour and preparations made from cereals. Therefore, they are considered identical.

The mixes for making savoury foodstuffs including gravy are included in the broad category of the gravies on the alphabetical list of the opponent’s mark. Therefore, they are considered identical.

The mixes for making savoury foodstuffs including Stuffing is essentially bread or may contain bread as its main ingredient. Therefore, it has similar nature, purpose and methods of use as the opponent’s Bread. They can have same distribution channels and consumers. The goods are similar.

The contested pastry and pastry products both sweet and savoury including pies, pasties, tarts and quiches; sausage rolls; samosas; Christmas cakes, puddings and mince pies; are included in the broad category of the opponent’s pastry. Therefore, they are considered identical.

Flour; bread, spring rolls are identically contained in both alphabetical lists of goods and services. Decision on Opposition No B 2 450 065 page: 4 of 8 The alphabetical list of goods, in class 30, of the opponent also includes goods such as Noodle-based prepared meals. The contested prepared meals include, as a broader category, the opponent’s Noodle-based prepared meals. 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 to the opponent’s goods.

The contested pasta dishes; Frozen prepared meals and snacks including pasta and pasta dishes have the same nature, purpose and methods of use compared to the opponent’s Noodle-based prepared meals. They also coincide in distribution channels and users. The goods are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested Retail services, online retail services and mail order retail services connected with the sale of fresh, frozen and dried gluten free foods including: frozen prepared meals and snacks including pasta and pasta dishes, vegetable suet for food, breakfast cereals, cereal bars, brownies, muffins, cookies, donuts, pastry and pastry products both sweet and savoury including pies, pasties, tarts and quiches, sausage rolls, samosas, spring rolls, flour, bread, bread mixes, mixes for making cakes, brownies, muffins and cookies, mixes for making savoury foodstuffs including vegetable suet, dumplings, stuffing, pastry and gravy, dried pasta, prepared meals, pasta and pasta dishes, Christmas cakes, puddings and mince pies, all the food items being products aimed at persons with a medical condition that does not allow them to ingest products with gluten, are similar to a low degree to the opponent’s Dietetic food and substances adapted for medical or veterinary use.

b) The signs

FEEL-FREE

Earlier trade mark Contested sign

The relevant territory is the European Union.

The earlier mark is a word mark, the contested mark is a figurative mark.

For reasons of procedural economy, the Opposition Division will focus the comparison of the signs on the English-speaking part of the relevant public. Decision on Opposition No B 2 450 065 page: 5 of 8 Visually, the signs are similar to the extent that they coincide in the words FEEL FREE. However, they differ in the hyphen placed between these words in the earlier mark and in the remaining words FOR GLUTEN FREE FOOD, colors and device elements of the contested mark.

Aurally, the pronunciation of the signs coincides in the syllables FEEL FREE present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the elements FOR GLUTEN FREE FOOD of the contested mark which have no counterparts in the earlier sign.

Conceptually, the public in the relevant territory will perceive the whole earlier sign and the same words in the contested mark as an invitation, to regard oneself as having permission to perform a specified action. The element FOR is a preposition. The words GLUTEN FREE FOOD, denotes food items which do not contain gluten, a protein consisting of a mixture of glutelin and gliadin, present in cereal grains, esp. wheat. A gluten-free diet is necessary in cases of coeliac disease (Collins English Dictionary online).

The signs bear a conceptual similarity to the extent that they share the meaning of the words FEEL FREE.

Taking into account the abovementioned 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 earlier mark has no element that could be clearly considered more distinctive than other elements.

The element GLUTEN FREE FOOD, of the contested sign, denotes food items which do not contain gluten, a protein consisting of a mixture of glutelin and gliadin, present in cereal grains, esp. wheat. A gluten-free diet is necessary in cases of coeliac disease (Collins English Dictionary online). Bearing in mind that the relevant goods and services are either gluten free foods or retail services of such food items, it is considered that these elements together are weak for all of these goods and services. The public understands the meaning of these elements and will not pay as much attention to these elements as to the other more distinctive elements of the mark. Consequently, the impact of these elements is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no elements which could be considered clearly more dominant (visually eyecatching) than other elements.

The element ‘FEEL FREE in the contested sign is the dominant element as it is the most eyecatching by virtue of its size. Decision on Opposition No B 2 450 065 page: 6 of 8 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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark 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 and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific knowledge. The level of attention is average. f) Global assessment, other arguments and conclusion

The goods have been found to be identical and similar to various degrees. The similarities and dissimilarities between the signs have been established.

It is considered that, when a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the elements of stylisation.

The signs have been found to be similar to the extent that they have in common the element FEEL FREE which forms the earlier mark and the beginning, dominant and distinctive part of the contested mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The differentiating hyphen in the earlier mark and the elements FOR GLUTEN FREE FOOD, are placed in a non-prominent, secondary position in the end of the contested sign and do not catch the consumer’s initial attention, the same way as the colours and vertical lines are mostly ignored. The public will focus on the similar, distinctive elements and aspects of the marks. The element GLUTEN FREE FOOD has been found weak, since it denotes the characteristics of all the goods and services in the contested mark. Consumers will perceive these words as purely descriptive vis a vis the specific goods and they will therefore focus on the distinctive part of the contested mark. The coincidence of FEEL FREE in both marks will thus result in confusion between them. Decision on Opposition No B 2 450 065 page: 7 of 8 It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C342/97, ‘Lloyd Schuhfabrik Meyer’).

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical, similar goods and services found similar to a low degree, come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that 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 Community trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 equal effect 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 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.

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Richard THEWLIS Erkki MÜNTER Liina PUU Decision on Opposition No B 2 450 065 page: 8 of 8 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.