CAMPUS TEA | Decision 2452111 - CAMPUS S.R.L. v. 4-elements R&L GmbH
Date Published: Sep 25, 2017
OPPOSITION No B 2 452 111
Campus S.R.L., Via Sala Baganza, 3, 43044 Collecchio (Parma), Italy (opponent), represented by Botti & Ferrari S.R.L., Via Cappellini, 11, 20124 Milano, Italy (professional representative)
a g a i n s t
4-elements R&L GmbH, Seestr. 37-39, 23911 Salem, Germany (applicant), represented by Wiegert Werner & Partner mbB, Kaistraße 101, 24114 Kiel, Germany (professional representative).
On 13/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 452 111 is partially upheld, namely for the following contested goods and services:
Class 5: Herbal teas for medicinal purposes; medicinal herbs; medicinal infusions; medicinal tea; malted milk beverages for medicinal purposes; sugar for medicinal purposes.
Class 30: Baking powder; Cake dough; Beer vinegar; Ice cream (Binding agents for -); Flowers or leaves for use as tea substitutes; Candy; Buns; Bread; Unleavened bread; Sandwiches; Petit-beurre biscuits; Couscous [semolina]; Custard; Mousses (Dessert -) [confectionery]; Ices and ice creams; Iced tea; Peanut confectionery; Vinegar; Ribbon vermicelli; Ready-made dishes containing pasta; Meat gravies; Fondants; Fruit sauces; Spring rolls; Grits; Tea-based beverages; Chips [cereal products]; Cereals; Cereal bars; Cereal-based snack food; Spices; Condiments; Cloves [spice]; Glucose for culinary purposes; Gluten additives for culinary purposes; Semolina; Groats for human food; Oats (Crushed -); Oats (Crushed -); Oats (Crushed -); Oats (Crushed -); Halvah; Hamburgers (sandwiches); Honey; Ginger [spice]; Yoghurt (Frozen -) [confectionery ices]; Coffee; Artificial coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Coffee based drinks; Cocoa; Cocoa-based beverages; Candy; Caramels; Bubble gum; Cake dough; Ketchup [sauce]; Cooking salt; Salt for preserving foodstuffs; Crackers; Infusions, not medicinal; Cake dough; Garden herbs, preserved [seasonings]; Cake mixtures; Cake dough; Ice; Liquorice [confectionery]; Stick liquorice [confectionery]; Maltose; Malt for human consumption; Cake dough; Malt for human consumption; Almond confectionery; Marinades; Marzipan; Almond paste; Coffee beverages with milk; Cocoa beverages with milk; Chocolate beverages with milk; Pastry dough; Nutmeg; Muesli; Oat-based food; Noodle-based prepared meals; Ribbon vermicelli; Palm sugar; Sauces for use with pasta; Pasties; Pies; Lozenges [confectionery]; Pesto [sauce]; Petits fours [cakes]; Pancakes; Pepper; Gingerbread; Mint for confectionery; Candy mints; Peppers [seasonings]; Pizza; Puddings; Popcorn; Quiches; Ravioli; Rice; Rice cakes; Rice-based snack food; Coffee (Unroasted -); Dressings for salad; Salt; Chocolate, chocolate-based beverages; Mousses (Chocolate -); Baps; Spaghetti; Edible ices; Powders for ice cream; Star aniseed; Sweeteners (Natural -); Candy; Tea; Cake dough; Waffles; Cream of tartar for culinary purposes; Spices; Chicory [coffee substitute]; Cinnamon [spice]; Sugar; Pralines; Confectionery; Rusks; Candy; Farinaceous food pastes; Fruit jellies [confectionery].
Class 43: Provision of food and drink; Consultancy relating to food, drink, catering, restaurant and cafeteria services; Cafeterias; Self-service restaurants; Cafeterias; Café and cafeteria services; Café-restaurants; Cafeterias; Cafeterias; Catering; Catering; Bar services; Cafeterias.
2. European Union trade mark application No 13 181 839 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 181 839. The opposition is based on European Union trade mark registration No 8 388 266. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
In its submissions, the applicant claims that the opponent has not shown that the company ‘CAMPUS S.R.L.’ is the lawful successor to the proprietor of the earlier mark, ‘CAMPUS S.P.A.’ However, in its submissions of 22/09/2015, the opponent submitted excerpts from the Italian company register, accompanied by translations, to prove that the legal form of the company changed from S.R.L. to S.P.A. on 05/03/2015. Therefore, the applicant’s argument must be set aside as unfounded.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark registration No 8 388 266.
In the present case the contested trade mark was published on 02/10/2014.
Earlier trade mark No 8 388 266 was registered on 21/01/2010. Therefore, the request for proof of use is inadmissible.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
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 economically linked 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.
- The goods and services
The goods on which the opposition is based are the following:
Class 1: Chemicals used in industry, science and photography; unprocessed artificial resins, unprocessed plastics, manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances (adhesives) used in industry.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood, colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible fats and oils.
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.
The contested goods and services are the following:
Class 5: Herbal teas for medicinal purposes; Malted milk beverages for medical purposes; Beverages adapted for medicinal purposes; Medicinal herbs; Medicinal infusions; Medicinal hair growth preparations; Medicinal tea; Mineral waters for medical purposes; Nutritional supplements; Nervines; Mint for pharmaceutical purposes; Sugar for medical purposes.
Class 21: Beer mugs; Boxes for sweetmeats; Bread boards; Bread bins; Bread baskets, domestic; Butter dishes; China ornaments; Egg cups; Jars (Glass -) [carboys]; Ice buckets; Cruets; Cruets; Chopsticks; Statues of porcelain, ceramic, earthenware or glass; Bottle openers, electric and non-electric; Ice cube molds [moulds]; Moulds [kitchen utensils]; Containers for household or kitchen use; Vegetable dishes; Spice sets; Boxes of glass; Glasses [receptacles]; Mosaics of glass, not for building; Powdered glass for decoration; Painted glassware; Heat-insulated containers; Insulating flasks; Heat-insulated containers for beverages; Thermally insulated containers for food; Cabarets [trays]; Coffee filters, non-electric; Coffeepots, non-electric; Coffee grinders, hand-operated; Coffee percolators, non-electric; Coffee services [tableware]; Pitchers; Decanters; Coasters, not of paper and other than table linen; Cheese-dish covers; Cookie jars; Ceramics for household purposes; Cookery molds [moulds]; Kitchen utensils; Mess-tins; Cauldrons; Cooking pots; Cooking utensils, non-electric; Baskets for domestic use; Demijohns; Corkscrews, electric and non-electric; Crystal [glassware]; Cake moulds; Kitchen containers; Kitchen utensils; Refrigerating bottles; Isothermic bags; Works of art, of porcelain, terra-cotta or glass; Glue-pots; Candlesticks; Liqueur sets; Majolica; Knife rests for the table; Shakers; Blenders, non-electric, for household purposes; Kitchen grinders, non-electric; Mills for domestic purposes, hand-operated; Noodle machines, hand-operated; Fruit cups; Opaline glass; Opaline glass; Cups of paper or plastic; Paper plates; Pepper mills, hand-operated; Pepper pots; Picnic baskets (Fitted -), including dishes; Cookie [biscuit] cutters; Porcelain ware; Lunch boxes; Graters for kitchen use; Beaters, non-electric; Mixing spoons [kitchen utensils]; Cocktail stirrers; Salad bowls; Salt shakers; Basins [bowls]; Signboards of porcelain or glass; Whisks, non-electric, for household purposes; Cutting boards for the kitchen; Basting spoons, for kitchen use; Covers for dishes; Dishware; Trivets [table utensils]; Lazy susans; Napkin rings; Strainers; Siphon bottles for carbonated water; Vessels of metal for making ices and iced drinks; Menu card holders; Statues of porcelain, ceramic, earthenware or glass; Earthenware; Soup bowls; Trays for domestic purposes; Epergnes; Tableware, other than knives, forks and spoons; Services [dishes]; Drinking bottles for sports; Cups; Tea infusers; Tea caddies; Teapots; Tea cosies; Tea services [tableware]; Tea strainers; Pastry cutters; Rolling pins, domestic; Table plates; Pots; Tart scoops; Portable coolers; Drinking troughs; Drinking bottles for sports; Drinking vessels; Beverage glassware; Straws for drinking; Horns (Drinking -); Saucers; Vases; Waffle irons, non-electric; Disposable table plates; Pipettes [wine-tasters]; Sugar bowls; Garlic cellars.
Class 30: Flavourings, other than essential oils, for beverages; Flavourings, other than essential oils; Flavourings, other than essential oils, for cakes; Baking powder; Cake dough; Beer vinegar; Ice cream (Binding agents for -); Flowers or leaves for use as tea substitutes; Candy; Buns; Bread; Unleavened bread; Sandwiches; Petit-beurre biscuits; Couscous [semolina]; Custard; Mousses (Dessert -) [confectionery]; Ices and ice creams; Iced tea; Peanut confectionery; Essences for foodstuffs, except etheric essences and essential oils; Vinegar; Ribbon vermicelli; Ready-made dishes containing pasta; Meat gravies; Fondants; Fruit sauces; Spring rolls; Grits; Tea-based beverages; Chips [cereal products]; Cereals; Cereal bars; Cereal-based snack food; Spices; Condiments; Cloves [spice]; Glucose for culinary purposes; Gluten additives for culinary purposes; Semolina; Groats for human food; Oats (Crushed -); Oats (Crushed -); Oats (Crushed -); Oats (Crushed -); Halvah; Hamburgers (sandwiches); Honey; Ginger [spice]; Yoghurt (Frozen -) [confectionery ices]; Coffee; Artificial coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Coffee based drinks; Cocoa; Cocoa-based beverages; Candy; Caramels; Bubble gum; Cake dough; Ketchup [sauce]; Cooking salt; Salt for preserving foodstuffs; Crackers; Infusions, not medicinal; Cake dough; Cake frosting; Garden herbs, preserved [seasonings]; Cake mixtures; Cake dough; Ice; Liquorice [confectionery]; Stick liquorice [confectionery]; Maltose; Malt for human consumption; Cake dough; Malt for human consumption; Almond confectionery; Marinades; Marzipan; Almond paste; Sea water for cooking; Coffee beverages with milk; Cocoa beverages with milk; Chocolate beverages with milk; Pastry dough; Nutmeg; Muesli; Oat-based food; Noodle-based prepared meals; Ribbon vermicelli; Palm sugar; Sauces for use with pasta; Pasties; Pies; Lozenges [confectionery]; Pesto [sauce]; Petits fours [cakes]; Pancakes; Pepper; Gingerbread; Mint for confectionery; Candy mints; Peppers [seasonings]; Pizza; Puddings; Popcorn; Quiches; Ravioli; Rice; Rice cakes; Rice-based snack food; Coffee (Unroasted -); Whipped cream (Preparations for stiffening -); Dressings for salad; Salt; Chocolate, chocolate-based beverages; Mousses (Chocolate -); Baps; Spaghetti; Edible ices; Powders for ice cream; Star aniseed; Sweeteners (Natural -); Candy; Tabbouleh; Tea; Cake dough; Vanilla [flavoring] [flavouring]; Vanillin [vanilla substitute]; Waffles; Cream of tartar for culinary purposes; Spices; Aromatic preparations for food; Chicory [coffee substitute]; Cinnamon [spice]; Sugar; Pralines; Confectionery; Rusks; Candy; Farinaceous food pastes; Fruit jellies [confectionery].
Class 43: Provision of food and drink; Temporary accommodation; Consultancy relating to food, drink, catering, restaurant and cafeteria services; Cafeterias; Self-service restaurants; Cafeterias; Café and cafeteria services; Café-restaurants; Cafeterias; Cafeterias; Catering; Catering; Rental of chairs, tables, table linen, glassware; Rental of meeting rooms; Rental of portable buildings; Rental of tents; Tourist homes; Rental of temporary accommodation; Room hire services; Bar services; Cafeterias; Hotel services; Reservation of tourist accommodation; Arranging of accommodation for holiday makers.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 herbal teas for medicinal purposes; medicinal herbs; medicinal infusions; medicinal tea are similar to the opponent’s tea in Class 30. Herbal teas, for example, come in a variety of different flavours and with different ingredients, and can include herbal teas produced for medicinal purposes. In addition, herbal teas are often available in the form of dried loose herbs, as opposed to herbs in a teabag. Medicinal herbs can be served in the form of a drink, as can herbal tea made from loose dried herbs. The nature and method of use of these goods are therefore the same. They may also have the same distribution channels and relevant public.
The contested sugar for medical purposes is similar to the opponent’s sugar. Low-calorie sugars, for example, are commonly found alongside regular sugar in shops and are often produced by the same undertakings. Furthermore, they have the same nature, method of use and end users.
The contested malted milk beverages for medical purposes; beverages adapted for medicinal purposes are products consisting, inter alia, of milk (e.g. for babies). Therefore, they are similar to a low degree to the opponent’s milk in Class 29. They have the same nature, purpose and method of use.
The contested mineral waters for medicinal purposes are dissimilar to all the opponent’s goods in Classes 1, 2 and 29 and also to its beverages in Class 30. These goods do not have the same origin, are not complementary or in competition and do not have the same distribution channels.
The contested medicinal hair growth preparations; nutritional supplements; nervines; mint for pharmaceutical purposes are all dissimilar to the opponent’s goods in Classes 1, 2, 29 and 30. The contested goods are pharmaceuticals and medicinal products and therefore not directly related to any of the opponent’s goods. This is because they have clearly different natures, purposes, producers, relevant publics and distribution channels, and they are not interchangeable or in competition with each other.
Contested goods in Class 21
The contested beer mugs; boxes for sweetmeats; bread boards; bread bins; bread baskets, domestic; butter dishes; china ornaments; egg cups; jars (glass -) [carboys]; ice buckets; cruets; cruets; chopsticks; statues of porcelain, ceramic, earthenware or glass; bottle openers, electric and non-electric; ice cube molds [moulds]; moulds [kitchen utensils]; containers for household or kitchen use; vegetable dishes; spice sets; boxes of glass; glasses [receptacles]; mosaics of glass, not for building; powdered glass for decoration; painted glassware; heat-insulated containers; insulating flasks; heat-insulated containers for beverages; thermally insulated containers for food; cabarets [trays]; coffee filters, non-electric; coffeepots, non-electric; coffee grinders, hand-operated; coffee percolators, non-electric; coffee services [tableware]; pitchers; decanters; coasters, not of paper and other than table linen; cheese-dish covers; cookie jars; ceramics for household purposes; cookery molds [moulds]; kitchen utensils; mess-tins; cauldrons; cooking pots; cooking utensils, non-electric; baskets for domestic use; demijohns; corkscrews, electric and non-electric; crystal [glassware]; cake moulds; kitchen containers; kitchen utensils; refrigerating bottles; isothermic bags; works of art, of porcelain, terra-cotta or glass; glue-pots; candlesticks; liqueur sets; majolica; knife rests for the table; shakers; blenders, non-electric, for household purposes; kitchen grinders, non-electric; mills for domestic purposes, hand-operated; noodle machines, hand-operated; fruit cups; opaline glass; opaline glass; cups of paper or plastic; paper plates; pepper mills, hand-operated; pepper pots; picnic baskets (fitted -), including dishes; cookie [biscuit] cutters; porcelain ware; lunch boxes; graters for kitchen use; beaters, non-electric; mixing spoons [kitchen utensils]; cocktail stirrers; salad bowls; salt shakers; basins [bowls]; signboards of porcelain or glass; whisks, non-electric, for household purposes; cutting boards for the kitchen; basting spoons, for kitchen use; covers for dishes; dishware; trivets [table utensils]; lazy susans; napkin rings; strainers; siphon bottles for carbonated water; vessels of metal for making ices and iced drinks; menu card holders; statues of porcelain, ceramic, earthenware or glass; earthenware; soup bowls; trays for domestic purposes; epergnes; tableware, other than knives, forks and spoons; services [dishes]; drinking bottles for sports; cups; tea infusers; tea caddies; teapots; tea cosies; tea services [tableware]; tea strainers; pastry cutters; rolling pins, domestic; table plates; pots; tart scoops; portable coolers; drinking troughs; drinking bottles for sports; drinking vessels; beverage glassware; straws for drinking; horns (drinking -); saucers; vases; waffle irons, non-electric; disposable table plates; pipettes [wine-tasters]; sugar bowls; garlic cellars are all dissimilar to all the opponent’s goods. Even though, for example, coffeepots were considered complementary to the opponent’s coffee, this would not be enough to find similarity between them. They have different natures, methods of use, producers and distribution channels, and they are not in competition.
Contested goods in Class 30
Baking powder; coffee; tea; cocoa; sugar; bread; rice; confectionery; ices; honey; vinegar; spices (listed twice); salt; ice are identically included in both lists of goods (including synonyms).
The contested coffee (unroasted-) is included in the broad category of the opponent’s coffee. Therefore, they are identical.
The contested tea-based beverages overlap with the opponent’s tea. Therefore, they are identical.
The contested cocoa-based beverages; chocolate-based beverages are beverages also known as cocoa or ‘hot chocolate’. The contested cocoa beverages with milk; chocolate beverages with milk consist of the same goods with the addition of milk. All these goods are included in, or overlap with, the broad category of the opponent’s cocoa, since that word refers to cocoa in its unprocessed and processed forms, as well as to beverages with a cocoa and/or chocolate base (predominating), with or without milk added. Therefore, they are identical.
The contested coffee based drinks; coffee beverages with milk are beverages with coffee as their main ingredient (predominating). They are included in, or overlap with, the opponent’s coffee. Therefore, they are identical.
The contested iced tea; infusions, not medicinal are included in the broader category of the opponent’s tea. Therefore, they are identical.
The contested beer vinegar is included in the broad category of the opponent’s vinegar. Therefore, they are identical.
The contested ice creams; edible ices overlap with the broad category of the opponent’s ices; therefore, they are identical.
Confectionery includes sweets, candy, chocolates and also bakers’ confectionery such as sweet pastries, cakes and similar baked goods. Therefore, the contested candy (listed four times); mousses (dessert-) (confectionery); peanut confectionery; fondants; halvah; caramels; liquorice (confectionery); stick liquorice (confectionery); marzipan; almond paste; candy mints; chocolate; mousses (chocolate-); pralines; fruit jellies (confectionery); mint for confectionery; almond confectionery; lozenges (confectionery); bubble gum; yoghurt (frozen-) (confectionery ices); petit fours (cakes); gingerbread are included in, or overlap with, the broader category of the opponent’s confectionery. Therefore, they are identical.
The contested unleavened bread is included in, or overlaps with, the broad category of the opponent’s bread. Therefore, they are identical.
The contested baps; buns; pasties; pies; quiches are included in the broad category of pastry. Therefore, they are identical.
The contested grits; cereals; cereal bars; cereal-based snack food; oat-based food; muesli; groats for human food; oats (crushed-) (listed four times); chips (cereal products); rusks; crackers; petit-beurre biscuits are included in, or overlap with, the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.
The contested condiments overlap with the broad category of the opponent’s sauces (condiments). Therefore, they are identical.
The contested ravioli; ribbon vermicelli (listed twice); spaghetti are different kinds of pasta and therefore included in the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.
The contested rice cakes; rice-based snack food are included in the opponent’s preparations made from cereals. Therefore, they are identical.
The contested cloves (spice); ginger (spice); cinnamon (spice); star aniseed; nutmeg; pepper; peppers (seasonings) are included in the broad category of the opponent’s spices. Therefore, they are identical.
The contested ketchup (sauce); sauces for use with pasta; pesto (sauce); dressings for salad are different kinds of sauces to eat with food. Therefore, they are included in, or overlap with, the broad category of the opponent’s sauces (condiments). They are therefore considered identical.
The contested malt for human consumption (listed twice) is germinated cereal grains that have been dried in a process known as ‘malting’; therefore, it is included in, or overlaps with, the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.
The contested glucose for culinary purposes is included in, or overlaps with, the broad category of the opponent’s sugar. Therefore, they are identical.
The contested palm sugar is a type of sugar from certain palm trees. In Thai cuisine, it is used in sweets and desserts, curries and sauces. It is therefore considered identical to the opponent’s sugar, as it is included in, or overlaps, this broad category.
Gluten is a composite of storage proteins termed prolamins and gluteins and stored together with starch in the endosperm of various grass-related grains. It is found in, for example, wheat, barley, rye and oats. It gives elasticity to dough, helping it to rise and keep its shape, and often gives the final product a chewy texture. Therefore, the contested gluten additives for culinary purposes are included, or overlap with, the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.
Semolina consists of hard small grains of wheat that are used for making sweet puddings with milk and for making pasta. The contested couscous (semolina); semolina are therefore included in the broad category of the opponent’s preparations made from cereals. They are therefore considered identical.
Gravy is a sauce often made of the meat juices that run naturally during cooking and thickened with wheat flour or corn starch. Meat extract is highly concentrated meat stock, usually made from beef, used to, for example, add meat flavour to cooking. Therefore, the contested meat gravies are included in, or overlap with, the opponent’s meat extracts, and they are therefore considered identical.
The contested cooking salt; salt for preserving foodstuffs are included in the broad category of the opponent’s salt. Therefore, they are identical.
The contested cake mixtures are baking mixes for cakes. They are included in the broad category of the opponent’s pastry. Therefore, they are considered identical.
The contested farinaceous food pastes include, as a broader category, the opponent’s preparations made from cereals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
The contested garden herbs, preserved (seasonings) are included in the broad category of the opponent’s spices. Therefore, they are identical.
The contested fruit sauces are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.
Maltose is a component of malt, also known as malt sugar, and formed of glucose. It has a sweet taste and is used as a sweetener in many processed products, for example beverages, beer, cereals and pasta. It is included in the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.
The contested popcorn is included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.
Marinating is the process of soaking food in a seasoned liquid before cooking. The contested marinades are therefore a kind of sauce and as such included in the opponent’s sauces (condiments). Therefore, they are considered identical.
The contested artificial coffee; vegetal preparations for use as coffee substitutes; chicory (coffee substitute) are similar to a high degree to the opponent’s coffee. They have the same method of use, producers, distribution channels and relevant public, and they are in competition.
The contested flowers or leaves for use as tea substitutes are similar to a high degree to the opponent’s tea, as they can have the same producers, end users, distribution channels and method of use. Furthermore, they are in competition.
The contested cake dough (listed six times); pastry dough are similar to the opponent’s preparations made from cereals, since dough is an uncooked mass based on flour, which, when baked, becomes a cake or another baked product such as pastry or bread. They have the same producers, distribution channels and end consumers, and they are also in competition.
The contested sweeteners (natural -) include, as a broader category, or overlap with the opponent’s honey. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested ice cream (binding agents for -); powders for ice cream are similar to the opponent’s ices. They have the same purpose, distribution channels and relevant public, and they are in competition.
The contested sandwiches; hamburgers (sandwiches) are similar to the opponent’s bread. They can have the same nature, producers, distribution channels and relevant public.
The contested cream of tartar for culinary purposes is a white powder, obtained from the winemaking process, used in cooking as a leavening agent and in baking. It is, inter alia, the acidic ingredient in some brands of baking powder. It is therefore similar to the opponent’s baking-powder. They can have the same nature, purpose, method of use, distribution channels and relevant public, and they can be complementary.
The contested noodle-based prepared meals; ready-made dishes containing pasta are similar to a low degree to the opponent’s preparations made from cereals, as they can have the same end users and distribution channels. Furthermore, they are in competition.
The contested spring rolls are a deep-fried dish, consisting of filling in rice paper or flour-based wrappers that come in a number of varieties. They are similar to a low degree to the opponent’s preparations made from cereals, as they can have the same producers, target the same consumers and be distributed through the same channels of trade.
The contested coffee flavourings (flavourings) are substances (powders, liquids, etc.) used to give a coffee flavour to other foodstuffs or beverages. Although these goods and the opponent’s coffee differ in nature, they have the same purpose and method of use. Therefore, they are similar to a low degree.
The contested custard is a pudding-like, usually sweetened, mixture made with eggs and milk. It is similar to a low degree to the opponent’s ices. They are in competition and can have the same distribution channels and end users.
The contested puddings; pizza; pancakes; waffles are different kinds of dishes that consist, inter alia, of dough of different kinds. They are similar to a low degree to the opponent’s preparations made from cereals, since the opponent’s goods include ready-to-eat food products made primarily of starchy foods or ingredients. They have the same distribution channels and relevant public; furthermore, they are in competition.
The contested sea water for cooking is a liquid substance containing salt, used as a seasoning. However, it has nothing relevant in common with the opponent’s goods. Even though some of the opponent’s goods are for human consumption, this is not sufficient for a finding of similarity with this contested product, which is an auxiliary product intended to improve the flavour of food and which tends to have a different origin. Furthermore, these goods are not complementary or in competition with each other. Therefore, this contested product is dissimilar to all the opponent’s goods.
The contested flavourings, other than essential oils, for beverages; flavourings, other than essential oils; flavourings, other than essential oils, for cakes; essences for foodstuffs, except etheric essences and essential oils; vanilla (flavoring) (flavouring); vanillin (vanilla substitute); whipped cream (preparations for stiffening-); aromatic preparations for food consist of natural or artificial substances to be added to food, with various purposes, for instance giving a preparation a certain taste (i.e. flavourings). They are dissimilar to all the opponent’s goods in Classes 1, 2, 29 and 30, since they do not have the same nature, purpose, method of use, relevant public or producers, and they are not complementary or in competition.
The contested cake frosting is a sweet cream used as a topping for cakes. The contested tabbouleh is a prepared dish made using herbs, wheat, tomatoes and other vegetables. These goods in Class 30 and the opponent’s goods in Classes 1, 2, 29 and 30 have different natures, purposes and methods of use. They are not complementary to or in competition with each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections or departments of supermarkets or groceries. Therefore, these contested goods are dissimilar to all the opponent’s goods.
Contested services in Class 43
The contested provision of food and drink; consultancy relating to food, drink, catering, restaurant and cafeteria services [these are usually provided as part of the service of provision of food and drink]; cafeterias (listed five times); self-service restaurants; café and cafeteria services; café-restaurants; bar services, catering (listed twice) are similar to a low degree to the opponent’s food products, for example the opponent’s bread. They can have the same producers/providers and distribution channels, and can be complementary.
However, the contested temporary accommodation; rental of chairs, tables, table linen, glassware; rental of meeting rooms; rental of portable buildings; rental of tents; tourist homes; rental of temporary accommodation; room hire services; hotel services; reservation of tourist accommodation; arranging of accommodation for holiday makers are all dissimilar to all the opponent’s goods. Even if they may be complementary to some extent, this is not sufficient for a finding of similarity. They are of different natures and have different purposes, methods of use, distribution channels and producers/providers. Furthermore, they are not in competition.
- Relevant public — degree 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 degree 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. The degree of attention is average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘CAMPUS’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a figurative mark, consisting of the verbal element ‘CAMPUS’ in slightly stylised white letters on a black background. Above this element is a depiction of a tree with many leaves, in black and grey.
The contested mark is a figurative mark, consisting of the verbal elements ‘CAMPUS’ and ‘TEA’ in slightly stylised reddish-brown letters. Above these letters is a figurative element depicting three leaves on a twig, in green.
The element ‘CAMPUS’, included in both marks, will be understood as ‘an area of land that contains the main buildings of a university or college’ (information extracted form Collins English Dictionary on 28/06/2017 at www.collinsdictionary.com /dictionary/english/campus). As it is not descriptive, allusive or otherwise weak for the relevant goods or services, it is distinctive.
The figurative element of the tree in the earlier mark will be understood as a leafy tree. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
The verbal element ‘TEA’ in the contested mark will be associated with the beverage tea. Bearing in mind that some of the relevant goods and services are tea beverages and places where these can be served, this element is non-distinctive for some of the goods and services, namely herbal teas for medicinal purposes; medicinal herbs; medicinal infusions; medicinal tea; tea; tea-based beverages; iced tea; infusions, not medicinal, and weak for some of the services, namely provision of food and drink; consultancy relating to food, drink, catering, restaurant and cafeteria services; cafeterias (listed five times); self-service restaurants; café and cafeteria services; café-restaurants; bar services, catering.
As a whole, the contested mark can be understood as meaning ‘tea from a campus’.
The figurative element of the green twig with leaves in the contested sign will be perceived as such. Bearing in mind that some of the relevant goods are herbs and leaves, this element is weak for these goods, namely for garden herbs, preserved (seasonings); flowers and leaves for use as tea substitutes.
Neither the earlier mark nor the contested sign has any elements that could be considered clearly more dominant than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal 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 analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs coincide in the verbal element ‘CAMPUS’, which is distinctive for the relevant goods. They also coincide in the figurative element of leaves, either on a tree or on a twig, above the verbal elements. This figurative element in the contested mark is weak for some of the goods and services, as explained above. However, they differ in the verbal element ‘TEA’ (which is non-distinctive or weak for some of the goods and services, as explained above) of the contested sign and in the stylisation of the marks, including their colours and figurative elements (the figurative element of the contested sign being weak for some of the goods, as explained above).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CAMPUS’, present identically in both signs. This element is distinctive. The pronunciation differs in the sound of the additional letters ‛TEA’ of the contested mark, which have no counterpart in the earlier sign. This element is non-distinctive or weak for some of the goods and services, as explained above.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, owing to the coinciding distinctive word ‘CAMPUS’ and the presence in both of the general concept of a plant (as they both contain a figurative element depicting a plant), the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 marks are 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 for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The signs are visually similar to an average degree, and aurally and conceptually highly similar. The goods and services target the public at large and the degree of attention is average.
The earlier mark is of normal distinctiveness for the relevant part of the public.
The visual and aural similarities between the signs derive from the verbal element ‘CAMPUS’, which is the most distinctive element in the contested sign.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark. The high degree of aural and conceptual similarity between the signs outweighs the low degree of similarity between the goods and services.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Irina SOTIROVA | Lena FRANKENBERG GLANTZ | Plamen IVANOV |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.