MAURI 1929 BARCELONA | Decision 2534264 - MAURO DEMETRIO S.p.A. v. PASTELERIAS MAURI, S.A.

Date Published: Oct 10, 2017

OPPOSITION No B 2 534 264

Mauro Demetrio S.p.A., Zona Industriale, 89018 Villa S. Giovanni (Reggio Calabria), Italy (opponent), represented by Maria Francesca Quattrone, Michele Mercati, 17 A, 00197 Roma, Italy (professional representative)

a g a i n s t

Pastelerías Mauri, S.A., Rambla de Catalunya 102, 08008 Barcelona, Spain (applicant), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 534 264 is partially upheld, namely for the following contested goods and services:

Class 29: Meat extracts; preserved, dried and cooked fruits and vegetables; jams, compotes; milk products.

Class 30: Baked goods, confectionery, chocolate and desserts.

Class 43: Catering of food and drinks, pastries, and preparation of food, takeaway services, catering for the provision of food and beverages; restaurant services; cafeterias; fast food restaurant services.

2.        European Union trade mark application No 13 638 325 is rejected for all the above goods and services. It may proceed for the remaining goods, namely the following:

        Class 29: Meat, fish, poultry and game; milk.

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 13 638 325. The opposition is based on, inter alia, European Union trade mark registration No 1 479 120. The opponent invoked Article 8(1)(b) and 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 1 479 120.

1. The goods and services

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

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

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.

After a limitation made by the applicant, the contested goods and services are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jams, compotes; milk and milk products.

Class 30: Baked goods, confectionery, chocolate and desserts.

Class 43: Catering of food and drinks, pastries, and preparation of food, takeaway services, catering for the provision of food and beverages; restaurant services; cafeterias; fast food restaurant services.

As a preliminary remark, an interpretation of the wording of the applicant’s list of services in Class 43 is required to determine the scope of protection of these services. This is because the Opposition Division has found some discrepancies between the translation into English of the wording of services and the original wording as filed in the first language of the EUTM application (Spanish). In this regard, it should be noted that, as the first language of the EUTM application is one of the five languages of the Office, the definitive version of the list of services is the text in the first language. Therefore, the contested catering of food and drinks, pastries […] should read services for providing food and drink, services of a cake shop […] (restauración (alimentación), servicios propios de una pastelería in the Spanish version).

Furthermore, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 29

The contested preserved and cooked fruits and vegetables may have the same purpose as the opponent’s sauces (condiments) in Class 30, since the former can be in the form of sauces. They can also coincide in producer, end user and distribution channels. Furthermore, they are in competition. Therefore, they are similar to a high degree. 

The contested milk products are similar to a high degree to the opponent’s ices in Class 30, since they may coincide in nature and purpose. These goods are commonly produced by the same companies, target the same users and are sold through the same distribution channels. Furthermore, they may be in competition.

The contested meat extracts are similar to the opponent’s spices in Class 30, as they may have the same purpose (flavouring in cooking) and they can coincide in producer, end user and distribution channels. Furthermore, they are goods in competition.

The contested dried vegetables are similar to the opponent’s spices in Class 30, since they have the same purpose (seasoning in cooking). They can also coincide in end user, be produced by the same undertakings and be distributed through the same channels.

The contested jams are similar to the opponent’s honey in Class 30, as they have the same purpose (sweet foods used in cooking, baking or desserts/used as an addition, e.g. as a spread on bread). They can coincide in end user, distribution channels and method of use. Furthermore, they are in competition.

Compotes consist of fruit stewed or cooked in syrup, usually served as a dessert. Ices are a frozen dessert made of sweetened water and fruit juice. Therefore, the contested compotes are similar to the opponent’s ices in Class 30. Although these goods have a different nature, it must be held that there is a close link between them as their purpose is the same and they may be in competition with each other as all these goods are used as desserts. Furthermore, they target the same end users and are distributed through the same commercial channels.

The contested dried fruits and the opponent’s confectionery in Class 30 can coincide in producer, end user and distribution channels and, therefore, they are similar to a low degree.

The contested meat, fish, poultry and game; milk have no relevant points in common with the opponent’s goods in Class 30. The mere fact that all the goods under comparison are foodstuffs is not sufficient to find them similar. Under the criteria of the comparison, the goods are not similar because they clearly have different natures and methods of use. Moreover, usually these goods have different commercial origins and end users. Furthermore, they are neither complementary nor in competition. Therefore, these goods are dissimilar. Additionally, they are clearly dissimilar to the remaining goods of the earlier mark in Class 11 that consist in various kinds of household apparatus. There are no relevant points of contact and reference is made to the previous assertions on dissimilarity that are relevant here.

Contested goods in Class 30

The contested baked goods include, as a broader category, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Confectionery is identically contained in both lists of goods.

The contested chocolate is included in the broad category of the opponent’s confectionery. Therefore, they are identical.

Ices are a frozen dessert made of sweetened water and fruit juice. Therefore, the contested desserts are similar to the opponent’s ices in Class 30. Although these goods have a different nature, it must be held that there is a close link between them as their purpose is the same and they may be in competition with each other as all these goods are used as desserts. Furthermore, they target the same end users and are distributed through the same commercial channels.

Contested services in Class 43

The contested services are intended to serve food and drinks directly for consumption. In certain situations these goods and services can be complementary (17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours or beer in pubs).

In the present case, the contested services for providing food and drink, services of a cake shop, and preparation of food, takeaway services, catering for the provision of food and beverages; restaurant services; cafeterias; fast food restaurant services are closely related to the opponent’s preparations made from cereals in Class 30, as they can coincide in producer and distribution channels. Furthermore, they are complementary. Therefore, these goods and services are similar to a low degree.

2. 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 varying degrees are directed at the public at large.

The degree of attention may vary from lower than average to average, taking into account that the goods at hand may be associated with habitual buying behaviour and they may be, in general, inexpensive goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 43). The same can be said as regards some of the relevant contested services as, at least, for example, fast food restaurant services.

3. 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the conflicting signs, ‘MAURO’ and ‘MAURI’, or at least one of them, are not meaningful in certain territories, for example, in those countries where Spanish, Italian or Portuguese is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for example, the Polish-speaking part of the public.

The elements ‘MAURO’ of the earlier mark and ‘MAURI’ of the contested sign, have no meaning for the relevant public and are, therefore, distinctive.

The element ‘Caffé’ of the earlier sign will be associated with a small restaurant selling light meals and drinks because it is similar to the widespread English term ‘café’ and to the Polish term ‘kafeteria’. Bearing in mind that the relevant goods in Class 30 are foodstuffs typically served or provided as take-away food in these places, this element is weak for all these goods.

In the contested mark, the number ‘1929’ will be understood as the year of establishment of the producer of the goods or the provider of the services. Furthermore, it is reasonable to assume that the term ‘BARCELONA’ may, in view of the relevant public, designate the geographical origin of the category of goods and services concerned (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 38). As a consequence, the elements ‘1929’ and ‘BARCELONA’ of the contested sign must be deemed to have a lower level of distinctiveness than the verbal element ‘MAURI’ in respect of all the goods and services at hand.

Furthermore, both signs are composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature composed of commonplace labels in the foodstuffs sector (rectangular label with a white background and two brown horizontal lines with rounded corners at its upper and bottom parts, in the case of the earlier mark, and a circular brown label with an inner white frame, in the case of the contested sign). Therefore, the respective verbal elements are more distinctive than their figurative elements.

The verbal elements of the conflicting signs, ‘MAURO’ of the earlier mark and ‘MAURI’ of the contested sign, with their respective figurative elements, as described above, are co-dominant as they are the most eye-catching because of their size and/or striking colour/position within the signs.

Visually, the signs coincide in the sequence of letters ‘MAUR*’ of the respective distinctive and co-dominant elements ‘MAURO’ and ‘MAURI’. However, they differ in the last letter of these elements, namely ‘O’ of the earlier mark and ‘I’ of the contested sign, as well as in their less distinctive but co-dominant figurative elements, as previously described, and their less distinctive and less visually eye-catching verbal elements, ‘Caffé’ and ‘1929 BARCELONA’, respectively.  

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MAUR*’, present identically at the beginning of the distinctive elements of both signs. The pronunciation differs in the sound of the last letters of these elements, namely ‘O’ of the earlier mark and ‘I’ of the contested sign, and in the respective less distinctive and less dominant verbal elements ‘Caffé’ and ‘1929 BARCELONA’. Furthermore, the distinctive elements of the signs (‘MAURO’/’MAURI’) have the same number of letters and syllables and, therefore, their rhythm and intonation is highly similar.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings as regards their less distinctive verbal elements, the semantic content has no impact.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opposition notice, the earlier mark is reputed. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element in the mark regarding most part of the relevant goods as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods, and the distinctiveness of the earlier mark is normal.

As regards the signs, they are visually and aurally similar to an average degree. The most distinctive and co-dominant verbal elements of the signs have four letters and sounds in common, placed in the same order, they coincide in their beginnings and have a highly similar rhythm and intonation. Although the marks have some visual differences, these have been found less distinctive than the above-mentioned distinctive elements of the signs.

Additionally, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Moreover, the degree of attention of the relevant public will only be average or lower than average.

It must also be pointed out that likelihood of confusion includes the likelihood of association in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones. In the present case, even if the signs show differences, it is likely that the contested sign will be associated by the consumer with the earlier mark, creating an impression that the identical and similar goods and services, and even these similar to a low degree, originate from the same undertaking or economically-linked undertakings. Indeed, consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarity between them. Therefore, the relevant public with an average or even lower than average degree of attention may believe that the identical or similar (to varying degrees) goods and services come from the same undertaking or at least economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-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 No 1 479 120. 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 to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• International trade mark registration No 1 020 593 designating the European Union, for the figurative mark , in Class 30;

• Italian trade mark registration No 1 241 355 for the figurative mark  , in Class 30; and

• Italian trade mark registration No 236 550 for the word mark ‘MAURO’, in Class 30.  

Since these marks cover a narrower scope of goods in Class 30, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will continue with the examination of the remaining ground of the opposition, namely Article 8(5) EUTMR, in connection with these goods.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation in the notice of opposition by ticking the Article 8(5) EUTMR (as regards all the goods on which the opposition is based) and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence whatsoever that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark during the substantiation period.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent, in its second observations, merely and briefly claims that use of the contested trade mark in Class 43 would be detrimental for the opponent. Nonetheless the remark was only fleeting and no further reasons were given as to why. Additionally, this remark was only submitted after the substantiation period and, furthermore, there seems to be no good reason to assume that use of the contested trade mark for the remaining dissimilar goods, namely meat, fish, poultry and game; milk, would result in any such event occurring. Although potential detriment cannot be completely excluded, it is up to the opponent to submit at least standard argumentation.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

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 shall 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.