OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Trade Marks and Register Department
DECISION
of 19/06/2007
RULING ON OPPOSITION No B 1 013 574
Opponent: Lidl Stiftung & Co. KG
Stiftsbergstr. 1
74167 Neckarsulm
Germany
Representative: Hansmann & Vogeser
Albert-Rouhaupter-Str. 65
81369 Munchen
Germany
Trade Mark: SALCO
a g a i n s t
Applicant/holder: Tilly-Sabco (societe anonyme)
Tro Guic
29650 Guerlesquin
France
Representative: Schmit Chretien Schihin
8, place du Ponceau
95000 Cergy
France
Contested trade mark:
Decision on Opposition No 1 013 574 page : 2 of 8
I. FACTS AND PROCEDURE
On 30/04/2004 the applicant filed application No 3 813 623 to register the figurative mark as reproduced on the cover page in classes 29, 30 and 31.
During the opposition proceedings the applicant has limited its list of goods; however, the opposition is maintained against all goods in class 29 and part of the goods in class 30.
The opposition is based on the following earlier right:
UK trade mark registration No 2 286 326 of the word mark SALCO registered for goods
in class 29. The opponent bases its opposition on all these goods.
The grounds of the opposition are those laid down in Article 8(1)(b) of Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
(“CTMRâ€) (OJ OHIM 1/95, p. 53).
The opponent argues that the signs in dispute are similar because they coincide in four
letters out of five. The only difference is concealed in the middle of the marks and they
also share the same number of syllables. The figurative elements of the contested sign
are of secondary importance. The goods in dispute are partly identical and partly
similar.
The applicant limited its list of goods. Apart from that it filed no observations in reply.
II. DECISION
A. ON THE SUBSTANCE
1. Article 8(1)(b): likelihood of confusion
According to Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade
mark, the trade mark applied for shall not be registered:
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 on Opposition No 1 013 574 page : 3 of 8
a) Comparison of the goods
In assessing the similarity of the goods all relevant factors relating to those goods
themselves should be taken into account. These factors include, inter alia, their nature,
their purpose and method of use, whether they are in competition with each other or
are complementary, and the distribution channels (see Judgment of the Court of
Justice, Case C-39/97 Canon Cabushiki Kaisha v Metro-Goldwyn-Mayer, Inc., formerly
Pathe Communications Corporation (‘Canon’) [1998] ECR I-5507, at paragraph 23).
Further factors include the pertinent distribution channels (in particular the sales
outlets), the relevant public, and the usual origin of the goods.
The opposition is based on the following goods:
• meat, fish, poultry and game; meat extract; preserved fruits and vegetables,
grains, beans and nuts, eggs, milk products; edible oils and fats; all in the form
of salads or for use in salads; prepared salads in class 29.
The opposition is directed against the following goods:
• meat, fish, poultry and game; meat extract; eggs, milk and milk products; edible
oils and fats in class 29 and
• coffee, artificial coffee; tea, cocoa, ices, salt; vinegar; sauces (condiments);
spices in class 30.
As a preliminary remark, it is to be noted that according to Rule 2(4) IR, the Nice
Classification serves purely administrative purposes. Therefore, goods or services may
not be regarded as being dissimilar to each other simply on the ground that they
appear in different classes in the Nice Classification, and they may not be regarded as
being similar on the ground that they are included in the same class either.
Class 29
The contested goods in class 29 are identical with the opponent’s goods in the same
class. The fact that the opponent’s goods are in the form of salads or for use in salads
does not change this because the contested goods in class 29 may also be in the same
form and for the same use.
Class 30
The contested salt; vinegar; sauces (condiments); spices are highly complementary
and thus similar to the opponent’s prepared salads, edible oils and fats since they are
bought for the same purpose of use and are also consumed together, often in the same
dish (prepared salads generally contain salt, vinegar, sauces (condiments) and/or
spices).
As far as the remaining contested goods, coffee, artificial coffee; tea, cocoa, ices, is
concerned, they are different from any of the opponent’s goods in class 29. The
opponent claims that these contested goods are similar to milk products of the
opponent because they are complementary since they are often consumed together.
Decision on Opposition No 1 013 574 page : 4 of 8
However, the fact that the opponent’s milk products are limited by the qualification all in
the form of salads or for use in salads makes these goods dissimilar from the
opponent’s goods. Milk products in the form of salads or for use in salads (for example
cheese) cannot be considered to be complementary to coffee, artificial coffee; tea,
cocoa, ices. These goods all fall under the very general heading of foodstuffs but
beyond that they have little in common. Coffee, including artificial coffee, tea, cocoa are
almost invariably drinks whereas milk products in the form of salads or for use in salads
(for example cheese) are solid food. They are different in nature and satisfy different
consumer needs. Thus they are not in competition. The fact that they are sometimes
consumed together, or at the same time of day, or in the same establishment, does not
make them similar. They would not be likely to be found in the same section of a retail
outlet and consumers would be unlikely to expect a manufacturer of milk products in
the form of salads or for use in salads to also be a coffee or tea producer.
b) Comparison of the signs
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 23).
The signs which are to be compared are the following:
SALCO
Earlier mark Contested CTM application
Since the earlier mark is a UK trade mark registration, the relevant territory to be taken
into account in this case is that of the United Kingdom.
A visual comparison of the two signs shows some identical features. The only and
consequently the dominant element of the earlier sign, the word SALCO, is highly
similar to the dominant element of the contested sign, SABCO. Both words consist of
five letters, four of which are identical and in the same order. The signs begin with the
same letters SA and have the same ending in CO. The difference concerning the third
letter, namely L and B respectively, is not capable of overriding the impression of
similarity, since this letter is not very perceptible visually as it is somewhat “hidden†in
the middle of the sign.
Decision on Opposition No 1 013 574 page : 5 of 8
The figurative elements of the contested sign, including the slightly stylized script,
colours, an image of a cockerel, Arabic letters, are not striking enough to substantially
change the overall visual impression of the sign. These elements will be seen as a
mere decorative feature of marginal relevance. The word SABCO clearly stands out
due to its size and central position.
Moreover, when signs consist 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 analyze signs and will most readily refer to a sign by its verbal component.
Therefore, from a visual point of view the two marks are similar.
The same stands for the phonetic comparison of the marks. The marks share the same
rhythm of the pronunciation in the relevant UK territory; they both consist of two
syllables, SAL-CO and SAB-CO, starting with identical phonemes SA and ending with
identical phonemes CO. The difference in the ending consonant of the first syllable L /
B is not enough to outweigh the overall aural similarity between the two marks.
Consequently, there is also a phonetic similarity between the conflicting marks.
As regards the comparison of the marks from a conceptual point of view, neither of the
words has apparent meaning in the relevant UK territory. Therefore, the visual and
phonetic perception of the marks in dispute will not be affected by any conceptual
similarity or dissimilarity.
The overall impression is that the marks in dispute are similar.
c) Global assessment of the likelihood of confusion
Conflicting trade marks have to be compared by making a global appreciation of the
visual, aural or conceptual similarity between them bearing in mind, in particular, their
distinctive and dominant components. In order to assess the degree of similarity
between the marks concerned, the degree of visual, aural or conceptual similarity
between them must be determined and, where appropriate, the importance to be
attached to those different elements must be evaluated, taking account of the category
of goods or services in question and the circumstances in which they are marketed.
(see Case C-342/97 Lloyd Schuhfabrik Meyer v. Klijsen Handel BV [1999], OJ OHIM
12/99, p. 1585, paragraph 25 and 27).
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 assessment of the distinctiveness of the earlier mark must rest on the
distinctiveness per se of that sign, which must be seen as normal in the present case.
Likelihood of confusion within the meaning of Article 8(1)(b) CTMR must be assessed
globally, taking into account all the circumstances of the case. 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
Decision on Opposition No 1 013 574 page : 6 of 8
degree of similarity between the marks, and vice versa (see Canon, paragraph 17 et
seq.).
For the purposes of that global appreciation, the average consumer of the category of
products concerned is deemed to be reasonably well-informed and reasonably
observant and circumspect. However, 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. 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
(Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co.
GmbH v. Klijsen Handel BV, OJ OHIM No 12/1999, p. 1585, paragraph 26).
The signs have been found to be similar overall. It must be observed in that connection
that consumers do not take in the various figurative aspects of the mark of the
application because they will see them as decorative features and not as the most
important element indicating the origin of the goods.
The contested goods in class 29 and part of the contested goods in class 30, namely
salt; vinegar; sauces (condiments); spices, were found to be identical with or similar to
the opponent’s goods in class 29. The remaining contested goods in class 30, namely
coffee, artificial coffee; tea, cocoa, ices, were found to be dissimilar to the opponent’s
goods.
Consequently, even if the consumer detects certain differences between the two signs,
the risk that he might associate the two marks with each other in relation to identical
and similar goods is very real.
Therefore, there is likelihood of confusion on the part of the public in the relevant UK
territory, including likelihood of association, in respect of identical and similar goods.
The remaining contested goods in class 30 are dissimilar to the opponent’s goods;
therefore, one of the essential conditions for the application of Article 8(1)(b) CTMR
fails. It follows that there is no likelihood of confusion, including likelihood of
association, between the trade mark applied for and the earlier mark as far as these
goods are concerned.
Decision on Opposition No 1 013 574 page : 7 of 8
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 Article 81(2) CTMR, where each party succeeds on some counts and fails
on others, or if reasons of equity so dictate, the Opposition Division shall decide a
different apportionment of costs.
According to Rule 94(1) IR, the apportionment of costs is dealt with in the decision on
the opposition.
Since the opposition is successful only for part of the contested goods, both parties
have succeeded on some counts and failed on others. Consequently, each party has to
bear their own costs.
Decision on Opposition No 1 013 574 page : 8 of 8
THE OFFICE FOR HARMONISATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS):
DECIDES:
1. Upholds opposition number B 710 279 for part of the contested goods, namely:
• meat, fish, poultry and game; meat extract; eggs, milk and milk products; edible
oils and fats in class 29 and
• salt; vinegar; sauces (condiments); spices in class 30.
2. Rejects application number 3 813 623 for all the above goods. It may proceed
for the remaining contested and non-contested goods in classes 30 and 31.
3. Orders each party to bear their own costs.
Alicante, 19/06/2007
The Opposition Division
Daniel GÃJA
Mira RAJH
Radka STUPKOVÃ
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.
