Gaston | Decision 2693599

Date Published: Sep 25, 2017

OPPOSITION No B 2 693 599

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Monfis, Avenue Orban 231, 1150 Bruxelles, Belgium (applicant), represented by Sybarius, Chaussée de Waterloo 880, 1000 Brussels, Belgium (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 599 is upheld for all the contested services, namely 

Class 43: Provision of food and drink; restaurants; cafés; mobile restaurant services; take-out restaurant services; catering; juice bars; providing of food and drink via a mobile truck; providing food and drink for guests; serving food and drink for guests; provision of food and drink; ice cream parlour services; catering for the provision of food and beverages.

2.        European Union trade mark application No 15 017 205 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 320. 

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 017 205, namely against all the services in Class 43. The opposition is based on Benelux trade mark registration No 985 048. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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.

1. The services

The services on which the opposition is based are the following:

Class 43: Hotel services; hotel reservation services; rental of temporary accommodation; business catering services; bar services; cafés; restaurants.

The contested services are the following:

Class 43: Provision of food and drink; restaurants; cafés; mobile restaurant services; take-out restaurant services; catering; juice bars; providing of food and drink via a mobile truck; providing food and drink for guests; serving food and drink for guests; provision of food and drink; ice cream parlour services; catering for the provision of food and beverages.

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.

The contested provision of food and drink; providing of food and drink via a mobile truck; providing food and drink for guests; serving food and drink for guests; provision of food and drink include, as broader categories, or overlap with, the opponent’s bar services; restaurants. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

Restaurants and cafés are identically contained in both lists of services.

The contested mobile restaurant services; take-out restaurant services are included in the broad category of the opponent’s restaurants. Therefore, they are identical.

The contested catering and catering for the provision of food and beverages include, as broader categories, or overlap with, the opponent’s business catering services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested juice bars are included in the broad category of the opponent’s bar services. Therefore, they are identical.

Finally, as concerns the contested ice cream parlour services, they are considered highly similar to the opponent’s restaurants as they share the same purpose of providing food and drink and thus can be in direct competition with each other. Moreover, they can coincide in end users and providers, as ice cream is very often served in restaurants.

2. The signs

Gaston	Gaston
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The contested services are partly identical and partly highly similar to the opponent´s services. The signs are identical.

As far as the applicant’s argument about purpose of the opponent’s company is concerned, namely the fact that the provision of the opponent’s services in Class 43 falls out of the purpose of its company as registered with the relevant authorities, and are therefore illegal, the Opposition Division considers this argument to be irrelevant as it is not entitled to decide on whether the opponent’s trade mark was used legally or not.  

Therefore, given the identity of the signs, the opposition must be upheld according to Article 8(1)(a) EUTMR for the services found to be identical, namely provision of food and drink; restaurants; cafés; mobile restaurant services; take-out restaurant services; catering; juice bars; providing of food and drink via a mobile truck; providing food and drink for guests; serving food and drink for guests; provision of food and drink; catering for the provision of food and beverages. Moreover, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against the goods found to be highly similar to the opponent´s goods, namely ice cream parlour services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Anna BAKALARZ

Begoña URIARTE VALIENTE

Catherine MEDINA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.