DECIZIE OPOZITIE LA BELLA TERRA BELLA 29,30,32-29,30

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Trade Marks Department
B280
DECISION
of 29/06/2007
RULING ON OPPOSITION No B 951 733
Opponent: Productos Alimenticios La Bella Easo, S.A.
Polígono Malpica, c/ B – parcelas 62-63
50016 Zaragoza
Spain
Representative: Xavier Ungria López
Avda. Ramón y Cajal, 78
28043 Madrid
Spain
Trade Mark: LA BELLA
a g a i n s t
Applicant: Brasfrigo S.A.
Av. Brasfrigo No. 1000
City of Luziania, State of Goiás 72801-900
Brazil
Representative: Huss, Flosdorff & Partner
Alleestr. 33
82467 Garmisch-Partenkirchen
Germany
Contested TRADE mark:
Decision No B 951 733 page : 2 of 8
I. FACTS AND PROCEDURE
On 10/12/2004 the applicant filed application No 4 187 078 to register the figurative
mark as depicted on the first page of the decision as a Community trade mark for a
range of goods in classes 29 30 and 32.
The opposition is based on the following earlier trade mark:
Spanish trade mark registration No 2 518 361 “LA BELLA”. It was filed on 18/12/2002
and registered on 30/06/2005 for goods in classes 29 and 30.
The opponent bases its opposition on all the goods that are covered by its trade mark.
The opponent directs its opposition against all of the goods covered by the contested
application.
The grounds of the opposition are those laid down in Articles 8(1)(b) of Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
(“CTMR”) (OJ OHIM 1/95, p. 53).
The opponent argues that there is a likelihood of confusion between the earlier mark
and the CTM application because the signs are similar and the goods covered by the
conflicting marks are identical or similar.
The applicant in reply argues that there can be no likelihood of confusion because the
signs are different enough and only a few goods covered by the signs are similar,
whereas the majority of them are dissimilar. In particular, the applicant notes that “LA
BELLA” is a common designation in Spanish for describing beautiful persons or
beautiful things. Therefore, according to the applicant, the earlier mark has a low
distinctive character because it would be perceived as designating “beautiful products”.
II. DECISION
A. ON THE SUBSTANCE
Likelihood of confusion
According to Article 8(1) CTMR, upon opposition by the proprietor of an earlier trade
mark, the trade mark applied for shall not be registered:
b) if because of its identity with or similarity to the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks
there exists a likelihood of confusion on the part of the public in the territory
in which the earlier trade mark is protected; the likelihood of confusion
includes the likelihood of association with the earlier trade mark.
Decision No B 951 733 page : 3 of 8
a) Comparison of the goods
In assessing the similarity of the goods and services, all relevant factors relating to
those goods or services themselves should be taken into account. Those factors
include, inter alia, their nature, their intended purpose and their method of use, and
whether they are in competition with each other or are complementary (Judgment of
the Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer
Inc [1998] OJ OHIM 12/98, p.1419, paragraph 23). Such factors may also include their
usual origins and the relevant distribution channels and retail outlets.
The opponent bases its opposition on all the goods that are covered by its trade mark,
namely:
meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and
vegetables; preserved made from meat and fish, meat and fish dried and boiled;
compotes, jellies, jams; eggs, milk and milk products; edible oils and fat, prepared
dishes made from meat, fish or vegetables in class 29.
coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations
made from cereals, bread, edible ices; honey, treacle; yeast, baking-powder; salt,
mustard; vinegar, sauces (condiments); spices; ice and especially pastr, bakery, cakes
and confectionery products, thickener for foods and drinks are expressly excluded in
class 30.
The opposition is directed against all the goods covered by the contested application,
namely:
Summer squash; meat stuffed summer squash; albumin; alginates; almonds; peanuts;
anchovies; herring; tuna; eatable OIL from soya, maize and sunflower; olives; bacon;
pork lard; dried cured meat (bastrmá); French fries; lacteal beverages; stuffed
eggplant; cod balls; potato. balls; concentrated bouillon; legumes and vegetable
bouillon for cooking; shrimps; Armenian dried meat; meats; casein; caviar; onions;
cereals; cabbage rolls; smoked sausages; sauerkraut; egg whites; dried curd; curd;
coconut; mushroom; compotes; soya (preserved); consommé; creams; silkworm
chrysalises; croquettes; crustaceans; vegetable garden herbs; peas; esfirras; chicken
kebabs; seaweed extracts; meat extracts; fish flour; beans; liver; fish fillet; fruits;
crystallized fruits; frozen fruits; dried fruits, vegetables and legumes; gelatin; jellies; egg
yolks; ginger; comestible fats and oils; chick-pea; soybeans; chickpea paste;
vegetables; isinglass; yogurts; kefir; koumiss; spiny lobsters; locust lobsters; dairies;
American lobsters; milks; preserved lentils; butters; margarines; seafood; marmalades;
mussels; turnips; comestible bird´s nests; walnuts; rape oil; corn oil; bone oil; sesame
oil, oils; oysters; eggs; eggs in powder; eggplant paste; liver paste; chick-pea paste,
liver paté; pectin; fishes; cucumbers; frozen fish; pickles; pollen; pulps; meat based
Arabian dishes; preparations for soups (fruits, vegetables and legumes); hams;
proteins; purée; cheeses; eggplant pulp salad; fruit salad; legume salad; salamis;
salmon; hotdogs; sardines; comestible fat; soups; whey; tahine; tomato juices,
vegetables juices for cooking; dates; tofu; tomatoes; marrow squash; grapes;
vegetables; milk beverages with coffee, cocoa, tea or chocolate in class 29.
Saffron; sugar; sweeteners; agents for food thickening during cooking; seawater for
cooking; licorice; common capers; vermicelli; sugarcoated or toasted almonds and
Decision No B 951 733 page : 4 of 8
peanuts; starch; anis; rice; Armenian rice; essence, pulp, concentrates and sauces
from tomato, tomato pasta sauces as far as included in class 30; oatmeal; candies;
cereal bars; vanilla; beverages based on cocoa, coffee, tea or chocolate; belewa
(Syrian candy); biscuits; cookies; cakes; bonbons; muffins; cocoa; coffee; cinnamon;
caramels; curry; cereals; yeast; tea; chocolates; seasonings; pastries; cookies; creams;
comestibles decorations; candies; Syrian candies; spaghetti, spices; food essences;
food extracts; tomato extracts; flours; food flours; oatmeal and corn flakes; cereal
flakes; fondants; comestible ice cream; jellies; ice; ginger; glucose; gluten, chewing
gums; peppermint; non-medicinal infusions; ice cold yogurt; ketchup; yeast; marzipan;
mayonnaises; malt; mamul (Syrian candy); bitter cassava; pastas; materials for
thickening hotdogs; honey; molasses; mint for pastries; corn for popcorn; sauces
(condiments); tomato sauce; mustard; mousses; muesli; nutmeg; pancakes; bread;
Syrian bread; honey bread; mush; pastas; pastries; pastilles; petits fours; pickles;
pepper; popcorns; pizzas; tomato pulps; mixtures for making cakes; aromatic
preparations and substances; preparations with cereal; preparations for food
thickening; tomato-extracted products; tomato-derived products, included in this class;
meat softening products; propolis; puddings; purées; ravioli; spring rolls; sago; kitchen
salt; salt for food conservation; wheat salad; sandwiches; semola; semolina; soy, ice
creams; meat juices; sushi; tabule (Mediterranean salad); tacos, tapioca; seasonings;
pies; toasts; vanillin; vinegars; waffles in class 30.
Mineral and bubbly water and other non-alcoholic beverages; isotonic beverages; fruit
drinks and fruit, vegetable and/or legume juices; non-alcoholic beverages; beers;
cocktails; essences for the manufacture of beverages; fruit nectars; powders and
pastilles for effervescent beverages; powders for refreshments; powdered
refreshments; sarsaparilla; non-alcoholic ciders; sodas; juices; syrups and other
preparations for beverages in class 32.
All the goods covered by tbe CTM application in classes 29 and 30 are included in the
more general list of goods protected by the earlier mark, therefore they are identical.
As far as the goods in class 32 of the CTM application are concerned it is noted that, in
general, goods for eating are not similar to goods for drinking (see decision of the
Fourth Board of Appeal of 10 September 2003, in Case R 938/2001 – 4, paragraph 8).
The goods protected by the earlier mark in classes 29 and 30 are bought for different
purposes, to be eaten or used in the production of food, as opposed to being drunk.
The respective goods will be sold in discrete areas. They are not in competition. The
respective goods are only complementary in the very limited sense that it is quite
common to have a beverage with a meal or snack. Consequently, it is considered that
the respective goods are neither similar nor identical (see decision of the Fourth Board
of Appeal of 22 February 2002 in Case R 579/2000-4, paragraph 15, 16 and 17).
Decision No B 951 733 page : 5 of 8
b) Comparison of the signs
The signs to be compared are the following:
LA BELLA
Earlier mark CTM application
The relevant territory is that of Spain. Therefore, it is the impression that the signs
make on the public in this territory and their meaning and pronunciation in Spanish
which are relevant for their comparison
The earlier mark has a clear meaning in Spanish which is that of “the beautiful” (which
could be referred to a feminine person or thing).
The contested application is an Italian expression with the meaning of “beautiful earth”
but it would be clearly understood by the Spanish consumers because the word
“BELLA” is identical in both languages and the Italian word “TERRA” is almost identical
to the corresponding Spanish translation which is “TIERRA”.
The marks are to be considered as conceptually different because “LA BELLA” clearly
refers to a third person which could be an object or a person. It is more likely that it will
be perceived as a reference to a person since this is the most common use of such
expression (i.g.: “the beautiful girl”). On the contrary, “TERRA BELLA” is referred in
particular to the earth or to a “beutiful land”.
Furthermore, the concept of beauty, even if it is not directly descriptive of some
features of the goods at issue (food and beverages), is evocative of the idea of beauty
which is a common concept also in this market. For example, it may convey the idea of
light food or natural food which has the purpose (or one purpose) of making people
beautiful. In the case of the CTM application “TERRA BELLA”, it evokes the image of a
beautiful land which gives goods and genuine products.
Therefore, taking into account that the common word “BELLA” has a certain laudatory
meaning, it cannot be considered as enjoying a strong distinctive character and the
above mentioned conceptual distinction appears rather significant.
Visually, the wording “LA BELLA” is totally different from the word “TERRA” which is
the first word of the CTM application. The strong difference between the above initial
words makes the marks visually and phonetically, clearly distinguishable. Considering
that the first part of a mark is generally the part which catches the consumer´s prime
Decision No B 951 733 page : 6 of 8
attention and has a significant influence on the general impression given by the mark,
the overall visual and phonetic impression of the marks is different.
c) Global assessment on the likelihood of confusion
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, phonetic and conceptual similarities between the marks. The
comparison “must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components” (see Judgment of the
Court of Justice, Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ
OHIM 1/98, p.91, paragraph 22 et seq. ).
The more distinctive the earlier mark the greater the likelihood of confusion. It follows
therefore that a mark with a less distinctive character, such as one which includes
elements descriptive of the goods or services for which it has been registered or one
which is not characterised by unusual or original features, enjoys a lesser degree of
protection than a mark which is highly distinctive either per se or because of the
recognition it possesses on the market (see, to that effect, the Judgment of the Court of
Justice, Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel B
[1999] OJ OHIM 12/99, p.1585, paragraph 20, 21; Sabel, paragraph 24; Canon,
paragraphs 18/19).
As to the distinctive character of the earlier mark, the opponent did not explicitly claim
that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore,
the distinctiveness of the earlier mark must be seen as normal in the present case.
The necessary global assessment of the likelihood of confusion implies some
interdependence between the relevant factors, and in particular a similarity between
the trade marks and between the goods or services. Accordingly, a lesser degree of
similarity between the goods or services may be offset by a greater degree of similarity
between the marks, and viceversa. (see Canon paragraph 28 and Lloyd, paragraph
19).
The perception of trade marks in the mind of the average consumer of the goods in
question plays a decisive role in the global appreciation of the likelihood of confusion.
The goods at issue, food and beverages, are ordinary consumer goods. It follows that
the public for which an appreciation of the likelihood of confusion is to be made
consists of average consumers in Spain. For the purpose of this analysis, it is held that
the average consumer is normally reasonably well-informed and reasonably observant
and circumspect.
The comparison of the signs showed that, from an overall point of view, the marks are
visually, phonetically and conceptually different to an average degree. Some of the
goods at issue are identical and some are dissimilar.
Taking into account the degree of dissimilarity between the signs, even identity
between the goods would not be sufficient to establish a likelihood of confusion on the
part of the relevant public between the CTM application and the earlier mark in the
Decision No B 951 733 page : 7 of 8
territory in which the latter is protected, namely Spain. Consequently, the opposition is
to be rejected and the contested CTM application may proceed to registration.
B. COSTS
According to Article 81(1) CTMR, the losing party in opposition proceedings must bear
the fees incurred by the other party, as well as all costs.
According to Rule 94(1) of the Implementing Regulation (Commission Regulation EC No.
2868/95), the apportionment of costs is dealt with in the decision on the opposition.
Since the opponent is the losing party in the opposition proceedings, it must bear all
costs incurred by the other party in the course of these proceedings.
Decision No B 951 733 page : 8 of 8
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
DECIDES TO:
1. Reject opposition No B 951 733 in its entirety.
2. Order the opponent to bear the costs.
FIXES THE COSTS AS FOLLOWS:
The amount of the costs to be paid by the opponent to the applicant pursuant to Article
81 (6) CTMR in conjunction with Rule 94 (3) IR shall be:
Representation costs 300 EURO
Total amount: 300 euro
Alicante, 29/06/2007
The Opposition Division
Juan Antonio Morales
Paredes
Luca Rampini
Anna Gobbetto
Notice on the availability of an appeal:
Under Article 58 of the Community Trade Mark Regulation any party adversely affected
by this decision has a right to appeal against this decision. Under Article 59 of the
Regulation notice of appeal must be filed in writing at the Office within two months from
the date of notification of this decision and within four months from the same date a
written statement of the grounds of appeal must be filed. The notice of appeal will be
deemed to be filed only when the appeal fee of 800 euro has been paid.
Notice on the review of the fixation of costs:
The amount determined in the fixation of the costs may only be reviewed by a decision
of the Opposition Division on request. Under Rule 94 (4) of the Implementing
Regulation 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 100
euro (Article 2 point 30 of the Fees Regulation) has been paid.