DECISION
of 29/06/2007
RULING ON OPPOSITION No B 978 363
Opponent: Aldi Einkauf GmbH & Co. OHG
Eckenbergstr. 16
D-45307 Essen
Germany
Representative: Schmidt, von der Osten & Huber
Haumannplatz 28/30
D-45130 Essen
Germany
TRADE Mark: TAMARA
a g a i n s t
Applicant: Roberto Emilio Beltrán Moreno
Alcala, 99-1ºD
E-28009 Madrid
Spain
Representative: Henson & Co.
Calle Fortuny, 7
E-28010 Madrid
Spain
Contested trade
mark:
AMARA
Decision on opposition No B 978 363 page: 2 of 8
I. FACTS AND PROCEDURE
On 06/07/2005 the applicant filed application No 4 482 071 to register the word
‘’AMARA’’ as a trade mark for goods in classes 29, 30 and 33.
The opponent directs its opposition against all of the goods designated in the above
application, namely:
Class 29 meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and
milk products; edible OILS and fats; cheese; meat, sausages, salted foods
and cheese, preserves and semi-preserves; charcuterie, pickles; ham;
sausages; salted foods;
Class 30 coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces
(condiments); spices; ice;
Class 33 alcoholic beverages (except beers), wine, vermouth, liqueurs and spirits.
The opposition is based on the Danish trade mark registration No VR 2005 02115 of
the word mark ’’TAMARA’’. The mark is registered for goods in classes 29, 30 and 32,
namely:
Class 29 meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams compotes; eggs, milk and
milk products; edible oils and fats;
Class 30 coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-powder; mustard; vinegar; ice;
Class 32 beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making
beverages.
The opponent bases its opposition on all of the goods covered by the above
registration.
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
(hereinafter “CTMRâ€) (OJ OHIM 1/95, p. 53).
The opponent puts forward that the marks in dispute are highly similar visually and
phonetically as the only difference between them is the additional letter ‘’T’’ in the
earlier mark. The opponent also submits that the second syllable is intonated in both
words and that the letter ‘’T’’ is rather weak in sound, especially due to its position
before the dominant vowel ‘’A’’. The opponent further indicates that none of the marks
has a special meaning in Danish which might help to differentiate between them. The
Decision on opposition No B 978 363 page: 3 of 8
opponent also alleges that the contested goods are in part identical and in part highly
similar to the goods protected by the earlier mark. As regards the contested goods in
class 33, the opponent submits that they are highly similar to the goods in class 32
protected by the earlier mark because various kinds of drinks are offered together in
bars and restaurants and are distributed together in supermarkets or in special shops
selling solely beverages. In addition, alcoholic and non-alcoholic beverages are often
mixed and therefore serve the same purpose and are complementary (reference is
made to the Boards of Appeal decision of 04/07/2004 in case R 83/2003-4
Cannaabis/Cannabia). In view of the above factors, the opponent claims that there is a
high risk of confusion between the marks in dispute.
The applicant did not submit any observations in reply to those of the opponent.
II. DECISION
1. Likelihood of confusion (Article 8(1)(b) CTMR)
a) Comparison of goods
When making an assessment of similarity of the goods concerned, all relevant factors
relating to these goods should be taken into account. These factors include, inter alia,
their nature, their purpose and method of use and whether they are in competition with
each other or are complementary (see Case C-39/97 Canon Kabushiki Kaisha v Metro-
Goldwyn-Mayer Inc. [1998] ECR I-5507, 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 goods to be compared are the following:
Earlier trade mark:
Class 29
meat, fish, poultry and game; meat
extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams
compotes; eggs, milk and milk products;
edible oils and fats;
Class 30
coffee, tea, cocoa, sugar, rice, tapioca,
sago, artificial coffee; flour and
preparations made from cereals, bread,
pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; mustard;
vinegar; ice;
Class 32
Contested application:
Class 29
meat, fish, poultry and game; meat
extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams, fruit
sauces; eggs, milk and milk products;
edible oils and fats; cheese; meat,
sausages, salted foods and cheese,
preserves and semi-preserves;
charcuterie, pickles; ham; sausages;
salted foods;
Class 30
coffee, tea, cocoa, sugar, rice, tapioca,
sago, artificial coffee; flour and
preparations made from cereals, bread,
pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt,
Decision on opposition No B 978 363 page: 4 of 8
beers; mineral and aerated waters and
other non-alcoholic drinks; fruit drinks and
fruit juices; syrups and other preparations
for making beverages.
mustard; vinegar, sauces (condiments);
spices; ice;
Class 33
alcoholic beverages (except beers), wine,
vermouth, liqueurs and spirits.
Class 29
The earlier mark is registered for the broad categories of goods which constitute the
heading of class 29 of the International Classification of Goods and Services for the
purposes of the Registration of Marks (Nice Classification). It is therefore clear that the
applicant’s goods ‘’meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products;
edible oils and fats; cheese; meat, sausages, salted foods and cheese, preserves and
semi-preserves; charcuterie, pickles; ham; sausages; salted foods’’ in class 29 are
covered by the opponent’s specification of goods. Thus, these goods are identical
within the meaning of Article 8(1) CTMR.
Class 30
The goods ‘’coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle;
yeast, baking-powder; mustard; vinegar; ice’’ designated in the CTM application in the
same wording appear in the specification of the opponent’s goods. Thus, these goods
are identical.
As regards the remaining goods in the contested application, i.e. ‘’salt, sauces
(condiments); spices’’, the Office finds them highly similar to the opponent’s goods
‘’mustard; vinegar’’. The Office notes that these goods share the same purpose
because they are condiments used to give a special taste to food. In addition, these
goods are distributed through the same trade channels and sold in the same retail
outlets in a close proximity to each other, e.g. in the sections for seasoning products
and condiments. It is also reasonable for the consumer, when being confronted with
these goods, to assume that they have the same commercial origin.
In view of the above, it is held that the contested goods in class 30 are in part identical
and in part highly similar to the opponent’s goods in class 30.
Class 33
The Office concurs with the opponent that there is a degree of similarity between the
applicant’s goods in class 33, i.e. ‘’alcoholic beverages (except beers), wine, vermouth,
liqueurs and spirits’’ and the opponent’s goods in class 32, in particular ‘’beers’’. First, it
is common knowledge that beer is an alcoholic drink brewed from malt, sugar, hops,
and water and fermented with yeast (see e.g. Collins English Dictionary, 1995). Thus,
the applicant’s alcoholic beverages and the opponent’s beers are very similar in nature
and have the same intended purpose, as they all are alcoholic beverages which are to
be used in the same way and consumed in the same conditions, e.g. on special
occasions, for enjoyment and relaxation. Second, these goods are distributed through
Decision on opposition No B 978 363 page: 5 of 8
the same trade channels and sold in the same retail outlets (e.g. grocery stores and
alcohol shops) in a close proximity to each other. Furthermore, they can be offered at
the same establishments, e.g. restaurants, canteens and bars. Also, for consumers,
beer may replace other alcoholic beverages e.g. wine and its consumption may take
place in the same social situation as wine, depending on the preferences of the various
consumers present before, after or even during meals. Therefore, alcoholic beverages,
such as beer and wine, are to a degree interchangeable and in competition (see, to
that effect, the Boards of Appeal decision of 18/03/2004 in Case R 2/2002-1,
paragraphs 29-31, decision of 04/07/2004 in Case R 83/2003-4, paragraph 21, and
decision of 25/04/2007 in Case R 637/2006-4, paragraphs 19-21). Thus, despite the
fact that beer and opponent’s alcoholic beverages such as wine, vermouth, liqueurs
and spirits are PRODUCED from different ingredients and are subject to production
processes involving different technology, there are relevant points of contact between
them to accept a similarity within the meaning of Article 8(1)(b) CTMR.
b) Comparison of the marks
In determining the existence of likelihood of confusion, trade marks have to be
compared by making an overall assessment of the visual, aural 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 Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler
Sport [1997] ECR I-6191, paragraph 22 et seq.).
In the present case, the trade marks to be compared are the following:
TAMARA
AMARA
Earlier trade mark CTM application
The earlier mark is protected in Denmark. Therefore, it is the impression that the marks
make on the public, and their pronunciation and semantic meaning in that territory
which is relevant for their comparison.
Both marks are word marks represented in an ordinary typeface.
Visually, the only difference between the marks lies in the presence of the letter ‘’T’’ in
the beginning of the earlier mark. Although it is true that the beginning of a mark will, in
general, have a greater impact in the process of recognising and remembering the
mark, in the present case a single difference in the initial letter is not sufficient to make
the marks visually different. The Office notes that the marks produces a similar overall
visual impression due to the common part ‘’AMARA’’. It has to be noted in this regard
that the words are not short in the present case, thus the omission of the letter ‘’T’’ in
the contested mark can pass unnoticed by the relevant public. Thus, it is concluded
that from the visual perspective the conflicting marks are similar.
Aurally, the marks will be pronounced by the relevant public in Denmark as /ta-ma-ra/
and /a-ma-ra/. The only difference between the marks lies in the letter (sound) ‘’T’’ in
Decision on opposition No B 978 363 page: 6 of 8
the earlier mark. The Office notes that this letter will not be particularly audible because
it is a voiceless consonant. Thus, taking into account that the words share the same
vowel sequence, have the same rhythm and are stressed in the same way (the stress
lies on the second syllable), their overall sonority is very close. It is therefore concluded
that the conflicting marks are phonetically similar to a high degree.
Neither of the marks has any particular meaning in the Danish language. It is plausible
that for the majority of the Danish consumers these words would not evoke any
semantic associations when viewed in relation to the respective goods covered by the
marks. Consequently, the perception of the marks would rest on the visual and
phonetic impressions produced by them. On the other hand, it is likely that some part of
the consumers would perceive the word ‘’TAMARA’’ as a woman’s first name.
However, it is clearly insufficient to consider the conflicting marks being different, as
the word ‘’AMARA’’ for the same consumers may evoke the same associations.
c) Conclusion
It constitutes a likelihood of confusion within the meaning of Article 8(1)(b) CTMR if
there is a risk that the public might believe that the goods or services in question, under
that assumption that they bear the marks in question, come from the same undertaking
or, as the case may be, from economically-linked undertakings (see Canon, cited
above, paragraph 29).
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
degree of similarity between the marks, and vice versa. Furthermore, the more
distinctive the earlier mark, the greater the risk of confusion. Marks with a highly
distinctive character, either per se or because of the reputation they possess on the
market, enjoy broader protection than marks with a less distinctive character (see
Canon, cited above, 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
(see Case C-342/97, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999]
ECR I-3819, paragraph 26).
As to the distinctive character of the earlier mark, the opponent did not explicitly claim
that its mark is distinctive by virtue of intensive use or reputation. Therefore, the
assessment of the distinctive character of the earlier mark must rest on its
distinctiveness per se. As the word ‘’TAMARA’’ does not have any particular relation
with the goods concerned, the distinctiveness of this mark must be seen as normal.
Decision on opposition No B 978 363 page: 7 of 8
As follows from the analysis above, the conflicting trade marks, when considering their
overall impression, are very similar visually and aurally as they differ only in one letter
(sound). This sole difference is clearly insufficient to make these marks distinguishable
one from another. Furthermore, the marks do not evoke any particular conceptual
associations in the relevant territory which might counteract their visual and aural
similarity.
Further, as held under section 1 a) of the present decision, the contested goods are in
part identical and in part similar, to a higher or lower degree, to the goods protected by
the earlier mark. The Office also notes that the respective goods are foodstuffs and
beverages that are targeted at the public at large. Therefore, the level of attentiveness
of the relevant public is to be regarded as average.
Thus, under the principle of the interdependence set about above, the degree of
similarity between the marks, in conjunction with the average degree of distinctiveness,
is sufficient to establish that the relevant consumer would think that the above goods
are manufactured by the same undertaking or, as a case may be, by economicallylinked
undertakings. Taking into account that the marks are highly similar and they
refer to the same and similar goods, it is very likely that the consumer in the relevant
territory will consider the conflicting marks as having the same commercial origin.
Furthermore, it has to be noted that the consumer has only occasionally the opportunity
to carry out a direct comparison of the various trade marks but must rely on his
imperfect mental image of them (see, Lloyd, cited above, paragraph 26).
It is therefore concluded that there is a likelihood of confusion on the part of the
relevant public in the territory where the earlier mark is protected, i.e. in Denmark.
As a consequence, the CTM application is to be rejected on the grounds of Article
8(1)(b) CTMR for all the contested goods, i.e. in its entirety.
2. 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 Commission Regulation (EC) No 2868/95 of
13 December 1995 implementing the CTMR (hereinafter ‘’CTMIRâ€) (OJ OHIM 2-3/95,
p. 258), as amended, the apportionment of costs must be dealt with in the decision on
the opposition.
Since the applicant is the losing party in the opposition proceedings, it must bear all
costs incurred by the other party in the course of these proceedings.
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
DECIDES TO:
1. Uphold opposition No B 978 363 for all the contested goods.
2. Reject CTM application No 4 482 071 in its entirety.
Decision on opposition No B 978 363 page: 8 of 8
3. Order the applicant to bear the costs.
FIX THE COSTS AS FOLLOWS:
The amount of the costs to be paid by the applicant to the opponent pursuant to Article
81(6) CTMR in conjunction with Rule 94(3) CTMIR shall be:
Representation fee EUR 300
Opposition fee EUR 350
_______
Total amount EUR 650
The Opposition Division
Agnes SZANYI FELKL
Normunds LAMSTERS
Monica IBAÑEZ LAJO
