Flowering fruit? GC compares fruit and flowers

Rosen Tantau KG (the applicant) filed an EUTM application for PALOMA covering "roses and rose plants; propagation material of roses" in class 31 for. The application was opposed by Hernández Zamora SA (the opponent) based on its earlier figurative EUTM registration containing the identical word 'Paloma'. The opponent's mark covered "fruits, garden herbs, fresh".

The Opposition Division rejected the opposition in its entirety on the basis of no similarity between the goods. The opponent appealed the decision to the Board of Appeal, who rejected the appeal in its entirety.

The Board of Appeal held no likelihood of confusion existed on the basis that the flower goods provided by the applicant were

non-edible, living organisms which intended to have aesthetic purposes,

whereas the fresh fruits and garden herbs provided by the opponent were

clearly intended for human consumption and usually had culinary purposes.

The Board of Appeal found the nature and intended use of the goods were clearly different and whilst they may be sold in the same shops they would be sold in different sections and so were not in direct competition with each other.

The Board of Appeal found it was unlikely the average consumer would think the same undertaking was responsible for producing both sets of goods and highlighted the fact that the Opponent had not furnished evidence to contradict such a finding.

The opponent appealed the decision to the General Court alleging the Board of Appeal had erred by not finding similarity between the goods. The opponent argued collectively the goods were 'of plant origin' and contained in class 31 and were therefore produced in the same manner and sold alongside each other. The opponent also stated that the Board of Appeal should have taken into account the similarity of the marks when comparing the similarity of the goods. Further, it argued that account should be taken that the exact wording of the specification at the time of filing the earlier EUTM in Spanish was "fresh fruits and vegetables".

The General Court dismissed the appeal in its entirety and stated that the Board of Appeal was correct to find the nature and intended purpose of the goods was different. It confirmed the goods were not interchangeable and therefore not in competition with each other, nor complementary in a sense that one is indispensable to the other.

The court pointed out that if goods and services fall in the same class it did not automatically point to a finding of similarity, or vice versa. With regard to the exact wording of the specification covered by the earlier EUTM registration, it simply stated that the inclusion of 'vegetables' did not serve to change the position.

On this basis the General Court found the Board of Appeal had not erred in its assessment that no similarity existed between the goods at issue and dismissed the appeal.

In short

Goods and services appearing in the same class does not mean an automatic finding of similarity.

Despite having the same end users, distribution channels and items being sold in the same shops, consideration must be given to if the goods are complementary and interchangeable to secure a finding of similarity.