OTTO | Decision 2745522

Date Published: Sep 24, 2017

OPPOSITION No B 2 745 522

Artemi Nolla Grup Gestio de Restaurants, Sl., Av. Diagonal, 405 bis, 8ª planta, 08008 Barcelona, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Econol, Frauentalweg 6, 8045 Zurich, Switzerland (applicant), represented by Konstantin Tahtadjiev, Goce Delchev complex, bl.233, ap.35, 1404 Sofia, Bulgaria (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 745 522 is partially upheld, namely for the following contested goods and services:

Class 30:        Coffee, teas and substitutes thereof; ice creams, frozen yogurts and sorbets; goods made thereof [processed grains, starches], foodstuffs made from dough; wholemeal pasta; vermicelli [noodles]; pasta containing stuffings; spaghetti; ravioli; wholemeal noodles; potstickers [dumplings]; fresh pasta; instant udon noodles; flour-based gnocchi; gnocchi; macaroni; pasta containing eggs; snack foods consisting principally of pasta; cannelloni; prepared pasta; tortellini; fresh pastas, noodles and dumplings; filo pastry; prepared pizza meals; prepared meals in the form of pizzas; pasta-based prepared meals; calzones; lasagne; pastries consisting of vegetables and poultry; pizza; pizzas [prepared]; fresh pizza; meals consisting primarily of rice; meals consisting primarily of pasta; pasta dishes; rice based dishes; noodle-based prepared meals; egg rolls; crumble; chow mein [noodle-based dishes]; chow mein; wonton chips; seaweed flavoured corn chips; corn chips; prawn crackers; chips [cereal products]; chimichanga; cheeseburgers [sandwiches]; chalupas; cheese flavored puffed corn snacks; corn kernels being toasted; nachos; puffed corn snacks; maize, roasted; crisps made of cereals; hot dogs (prepared); hot dog sandwiches; hamburgers contained in bread rolls; hamburgers being cooked and contained in a bread roll; french toast; frankfurter sandwiches; filled baguettes; fajitas; tortillas; tortilla chips; millet cakes; pumpkin porridge (hobak-juk); tamales; taco chips; tacos; tabbouleh; sushi; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; crackers filled with cheese; crackers flavoured with cheese; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; sesame snacks; spaghetti and meatballs; pretzels; salted tarts; cereal-based snack food; snack foods consisting principally of extruded cereals; snack foods made from corn and in the form of rings; snack foods made from corn and in the form of puffs; snack foods made from corn; sweet rice with nuts and jujubes (yaksik); shrimp dumplings; sandwiches containing minced beef; sandwiches containing salad; sandwiches containing fish fillet; sandwiches containing meat; sandwiches containing fish; sandwiches containing chicken; sandwiches; samosas; rice salad; macaroni salad; gimbap [korean rice dish]; sausage rolls; risotto; ramen [japanese noodle-based dish]; ravioli [prepared]; fried corn; stir-fried noodles with vegetables (japchae); filled bread rolls; puffed cheese balls [corn snacks]; caramel coated popcorn with candied nuts; caramel coated popcorn; candy coated popcorn; popcorn; spring rolls; snack food products made from potato flour; snack food products made from maize flour; snack food products made from soya flour; snack food products made from rice flour; snack food products made from cereal starch; snack food products made from cereal flour; snack food products made from rusk flour; snack food products consisting of cereal products; fresh sausage rolls; fresh pies; toasted cheese sandwich with ham; toasted cheese sandwich; toasted sandwiches; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; pies [sweet or savoury]; meat pies; pies; pastries consisting of vegetables and fish; pastries consisting of vegetables and meat; mung bean pancakes (bindaetteok); flapjacks; crepes; green onion pancake [pajeon]; pies containing meat; poultry and game meat pies; meat pies [prepared]; mincemeat pies; pies containing fish; pies containing poultry; pies containing game; pies containing vegetables; pork pies; vegetable pies; egg pies; rice crisps; rice crackers [senbei]; rice crackers; pellet-shaped rice crackers (arare); rice dumplings dressed with sweet bean jam (ankoro); rice dumplings; rice biscuits; rice cakes; rice mixed with vegetables and beef [bibimbap]; okonomiyaki [japanese savory pancakes]; savory pastries; meat pies; soft pretzels; macaroni with cheese; pasta salad; hot sausage and ketchup in cut open bread rolls; glutinous pounded rice cake coated with bean powder (injeolmi); snack foods consisting principally of bread; snacks manufactured from muesli; snack foods prepared from maize; snack foods made of whole wheat; snack foods made from wheat; rice-based snack food; tortilla snacks; boxed lunches consisting of rice, with added meat, fish or vegetables; brioches; crackers flavoured with spices; crackers made of prepared cereals; korean traditional rice cake [injeolmi]; korean-style pasta soup [sujebi]; quiches; steamed buns stuffed with minced meat (niku-manjuh); bean jam buns; chinese steamed dumplings (shumai, cooked); chinese stuffed dumplings (gyoza, cooked); kimchi pancakes (kimchijeon); quesadillas; sticky rice cakes (chapsalttock); stir fried rice cake [topokki]; cheese curls [snacks]; canapes; flaky pastry containing ham; grain-based chips; cereal snack foods flavoured with cheese; vegetable flavoured corn chips; wrap [sandwich]; buckwheat jelly (memilmuk); enchiladas; empanadas; extruded wheat snacks; jiaozi [stuffed dumplings]; prepared meals containing [principally] rice; prepared meals containing [principally] pasta; ready-made dishes containing pasta; prepared rice dishes; rice-based prepared meals; prepared savory foodstuffs made from potato flour; ready to eat savory snack foods made from maize meal formed by extrusion; chocolate-based ready-to-eat food bars; wontons; burritos; onion biscuits; wholewheat crisps; baozi [stuffed buns]; banana fritters; flavoured popcorn; pineapple fritters; pancakes.

Class 39:        Transport by land; transport by two-wheeled motor vehicles; transport services; motor vehicle transport services; transportation and delivery of goods; distribution [transport] of goods by air; distribution [transport] of goods by sea; distribution [transport] of goods by road; transport; express delivery of goods; delivery of goods; distribution [transport] of retail goods; transportation; transportation of goods in refrigerated conditions; distribution services; delivery services; refrigerated transport of frozen goods; refrigerated transport of cold goods; transport of goods by land, air and water; delivery of hampers containing food and drink; pizza delivery; delivery of food by restaurants; delivery of food and drink prepared for consumption; food delivery services; distribution services relating to beverages, such as alcoholic beverages; refrigerated transport of food; delivery of spirits; delivery of wines.

Class 43:        Providing food and drink; temporary accommodation; rental of furniture, linens and table settings; catering for the provision of food and beverages; cafés; bistro services; charitable services, namely providing food and drink catering; delicatessens [restaurants]; snack-bars; club services for the provision of food and drink; food and drink catering for cocktail parties; food and drink catering for banquets; catering in fast-food cafeterias; mobile catering services; mobile restaurant services; bar services; pubs; tea rooms; rental of bar equipment; rental of cooking apparatus; rental of kitchen worktops; rental of cooking equipment for industrial purposes; rental of non-electric cooking heaters; pizza parlors; providing of food and drink via a mobile truck; providing food and drink in bistros; providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; contract food services; preparation and provision of food and drink for immediate consumption; food preparation for others on an outsourcing basis; self-service restaurants; restaurants; restaurant services incorporating licensed bar facilities; serving food and drinks; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; personal chef services; providing drink services; services for the preparation of food and drink; reservation services for booking meals; take-out restaurant services; night club services [provision of food]; takeaway services; food preparation services; hotel restaurant services; serving food and drink in internet cafes; providing food and drink catering services for exhibition facilities; grill restaurants; salad bars; rental of internal furnishings; rental of kitchen worktops for preparing food for immediate consumption; rental of catering equipment.

2.        European Union trade mark application No 15 241 904 is rejected for all the above goods. 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 15 241 904 . The opposition is based on Spanish trade mark registration No 3 104 826 . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

In its observations, the applicant claims that the earlier mark is unsubstantiated for two reasons: a) it is referred to as figurative mark in the opposition notice while “they (the opponent) further provided translation of the extract of the database of the earlier trademark explicitly stating that this trademark is word and device mark.”, and b) the notice of opposition did not contain colour indication whereas “the stylized figurative and word elements of the opponent’s trademark are represented in colors, which comprise grey color (the main background and the word elements) and “dirty” white color”.

With regard to claim a), the Opposition Division finds it sufficient to say that a figurative mark is a complex mark that may contain both word and figurative elements. There is, thus, no contradiction in the fact that the opponent invoked its earlier right as a figurative mark in the notice of opposition while it is defined in the registration certificate as word and device.

With regard to claim b), indeed, the opponent never claimed colours in the opposition notice and, in this regard, the following requirements apply (Guidelines for Examination in the Office, Part C, Opposition, Section 1, Procedural Matters: 2.4.2.2 Representation of earlier marks/signs): “When the trade mark is in colour, at least a representation of the mark in colour must be submitted. An earlier mark will be identified as a trade mark in colour only when a representation of the mark in colour is enclosed, or an indication in this regard is mentioned in the opposition notice or in the documents attached to it”. The opponent perfectly met these requirements by attaching a true representation of its earlier mark which representation corresponds to the way it is shown in the registration certificate.  

Based on all the foregoing, the applicant’s claims are manifestly unfounded.

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 goods and services

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

Class 43: Restaurant services (food); bar services, coffee bar and restaurant; catering services.

The contested goods and services are the following:

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes thereof; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; farinaceous food pastes; foodstuffs made from dough; cereals; yeast and leavening agents; wholemeal pasta; dumpling skins; pasta shells; vermicelli [noodles]; pasta containing stuffings; dried tortellini; dried pasta; dried noodles; pasta-wrappings for gyoza; bean-starch noodles (harusame, uncooked); soba noodles [japanese noodles of buckwheat, uncooked]; somen noodles [very thin wheat noodle, uncooked]; spaghetti; ravioli; wholemeal noodles; potstickers [dumplings]; pasta for incorporating into pizzas; pasta in the form of sheets; fresh pasta; instant udon noodles; flour-based gnocchi; gnocchi; macaroni [uncooked]; macaroni; pasta containing eggs; snack foods consisting principally of pasta; cannelloni; deep frozen pasta; prepared pasta; tortellini; dried and fresh pastas, noodles and dumplings; ready-to-bake dough products; ready-made baking mixtures; frozen pastries; frozen dough; filo pastry; preparations for making pizza bases; preparations for making gateaux; pizza mixes; dough mix; batter mixes; dough; alimentary paste [dough]; pizza dough; doughs, batters, and mixes thereof; salts, seasonings, flavourings and condiments; pizza crust; prepared pizza meals; prepared meals in the form of pizzas; pasta-based prepared meals; frozen pizzas; calzones; preserved pizzas; canned pasta foods; lasagne; chilled pizzas; pizza bases; pastries consisting of vegetables and poultry; pizza; pizzas [prepared]; fresh pizza; uncooked pizzas; meals consisting primarily of rice; meals consisting primarily of pasta; pasta dishes; rice based dishes; noodle-based prepared meals; egg rolls; crumble; chow mein [noodle-based dishes]; chow mein; wonton chips; seaweed flavoured corn chips; corn chips; prawn crackers; chips [cereal products]; chimichanga; cheeseburgers [sandwiches]; chalupas; cheese flavored puffed corn snacks; corn kernels being toasted; nachos; puffed corn snacks; maize, roasted; crisps made of cereals; hot dogs (prepared); hot dog sandwiches; hamburgers contained in bread rolls; hamburgers being cooked and contained in a bread roll; french toast; frankfurter sandwiches; filled baguettes; fajitas; tortillas; tortilla chips; millet cakes; pumpkin porridge (hobak-juk); tamales; taco chips; tacos; tabbouleh; sushi; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; crackers filled with cheese; crackers flavoured with cheese; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; sesame snacks; spaghetti and meatballs; pretzels; salted tarts; cereal-based snack food; snack foods consisting principally of extruded cereals; snack foods made from corn and in the form of rings; snack foods made from corn and in the form of puffs; snack foods made from corn; sweet rice with nuts and jujubes (yaksik); shrimp dumplings; sandwiches containing minced beef; sandwiches containing salad; sandwiches containing fish fillet; sandwiches containing meat; sandwiches containing fish; sandwiches containing chicken; sandwiches; samosas; rice salad; macaroni salad; gimbap [korean rice dish]; sausage rolls; risotto; ramen [japanese noodle-based dish]; ravioli [prepared]; fried corn; stir-fried noodles with vegetables (japchae); filled bread rolls; puffed cheese balls [corn snacks]; caramel coated popcorn with candied nuts; caramel coated popcorn; candy coated popcorn; microwave popcorn; popcorn; spring rolls; snack food products made from potato flour; snack food products made from maize flour; snack food products made from soya flour; snack food products made from rice flour; snack food products made from cereal starch; snack food products made from cereal flour; snack food products made from rusk flour; snack food products consisting of cereal products; fresh sausage rolls; fresh pies; toasted cheese sandwich with ham; toasted cheese sandwich; toasted sandwiches; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; pre-baked pizzas crusts; pies [sweet or savoury]; meat pies; pies; pastries consisting of vegetables and fish; pastries consisting of vegetables and meat; mung bean pancakes (bindaetteok); flapjacks; crepes; green onion pancake [pajeon]; pies containing meat; poultry and game meat pies; meat pies [prepared]; mincemeat pies; pies containing fish; pies containing poultry; pies containing game; pies containing vegetables; pork pies; vegetable pies; egg pies; rice crisps; rice crackers [senbei]; rice crackers; pellet-shaped rice crackers (arare); rice dumplings dressed with sweet bean jam (ankoro); rice dumplings; rice biscuits; rice cakes; rice mixed with vegetables and beef [bibimbap]; okonomiyaki [japanese savory pancakes]; savory pastries; processed unpopped popcorn; meat pies; soft pretzels; macaroni with cheese; pasta salad; hot sausage and ketchup in cut open bread rolls; glutinous pounded rice cake coated with bean powder (injeolmi); snack foods consisting principally of bread; snacks manufactured from muesli; snack foods prepared from maize; snack foods made of whole wheat; snack foods made from wheat; rice-based snack food; tortilla snacks; boxed lunches consisting of rice, with added meat, fish or vegetables; brioches; crackers flavoured with spices; crackers made of prepared cereals; korean traditional rice cake [injeolmi]; korean-style pasta soup [sujebi]; canned spaghetti in tomato sauce; quiches; steamed buns stuffed with minced meat (niku-manjuh); bean jam buns; chinese steamed dumplings (shumai, cooked); chinese stuffed dumplings (gyoza, cooked); kimchi pancakes (kimchijeon); quesadillas; sticky rice cakes (chapsalttock); stir fried rice cake [topokki]; cheese curls [snacks]; canapes; flaky pastry containing ham; grain-based chips; cereal snack foods flavoured with cheese; vegetable flavoured corn chips; frozen pastry stuffed with meat and vegetables; frozen pastry stuffed with meat; frozen pastry stuffed with vegetables; wrap [sandwich]; buckwheat jelly (memilmuk); enchiladas; empanadas; extruded wheat snacks; jiaozi [stuffed dumplings]; prepared meals containing [principally] rice; prepared meals containing [principally] pasta; ready-made dishes containing pasta; prepared rice dishes; rice-based prepared meals; prepared foodstuffs in the form of sauces; prepared savory foodstuffs made from potato flour; ready to eat savory snack foods made from maize meal formed by extrusion; chocolate-based ready-to-eat food bars; wontons; burritos; onion biscuits; wholewheat crisps; baozi [stuffed buns]; banana fritters; flavoured popcorn; pineapple fritters; pancakes.

Class 39: Packaging and storage of goods; parking and vehicle storage, mooring; chartering of vehicles for transportation; arranging the hire of all means of transport; arrangement of transportation; hire of road transport; road transport services; transport by land; transport by two-wheeled motor vehicles; transport services; motor vehicle transport services; rental of means of transportation; chartering of transport; hired car transport; rental of car transporters; truck and trailer rental; rental of vehicles, in particular automobiles and lorries; contract rental of vehicles; rental of road vehicles; truck and vehicle rental; motor land vehicle hire services; rental of goods vehicles; rental of motor road vehicles; rental of commercial vehicles; motor land vehicle hire services; automobile rental reservation services; rental of lorries; rescue, recovery, towing and salvage; navigation (positioning, and route and course plotting); transportation and delivery of goods; distribution [transport] of goods by air; distribution [transport] of goods by sea; distribution [transport] of goods by road; delivery of hampers containing food and drink; pizza delivery; delivery of food by restaurants; delivery of food and drink prepared for consumption; delivery of groceries; transport; express delivery of goods; truck transport; carting; delivery of goods; carting of goods; distribution [transport] of retail goods; transportation and storage; transportation of goods in refrigerated conditions; distribution services; food delivery services; road haulage services; distribution services relating to beverages, such as alcoholic beverages; delivery services; refrigerated transport of frozen goods; refrigerated transport of cold goods; refrigerated transport of food; freight [shipping of goods]; freight and cargo transportation and removal services; mail delivery and courier services; delivery of spirits; delivery of wines; motor car transport services; transport of persons and goods by land, air and water; travel and passenger transportation.

Class 43: Providing food and drink; temporary accommodation; rental of furniture, linens and table settings; catering for the provision of food and beverages; cafés; bistro services; charitable services, namely providing food and drink catering; delicatessens [restaurants]; snack-bars; club services for the provision of food and drink; food and drink catering for cocktail parties; food and drink catering for banquets; catering in fast-food cafeterias; mobile catering services; mobile restaurant services; bar services; pubs; tea rooms; rental of bar equipment; rental of cooking apparatus; rental of kitchen worktops; rental of cooking equipment for industrial purposes; rental of non-electric cooking heaters; pizza parlors; providing of food and drink via a mobile truck; providing food and drink in bistros; providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; contract food services; preparation and provision of food and drink for immediate consumption; food preparation for others on an outsourcing basis; self-service restaurants; restaurants; restaurant services incorporating licensed bar facilities; serving food and drinks; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; personal chef services; providing drink services; services for the preparation of food and drink; reservation services for booking meals; take-out restaurant services; night club services [provision of food]; takeaway services; food preparation services; hotel restaurant services; serving food and drink in internet cafes; providing food and drink catering services for exhibition facilities; grill restaurants; salad bars; rental of internal furnishings; rental of kitchen worktops for preparing food for immediate consumption; rental of catering equipment.

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.

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.

Contested goods in Class 30

As a preliminary note, it must be pointed out that the mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, 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), in particular, when one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. The fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking. On the other hand, 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. In such cases, there is a low degree of similarity.

Accordingly, the contested goods in Class 30 must be divided into two categories; one which includes basic or essential ingredients that restaurants usually purchase themselves to prepare ready food or beverage and that are not usually sold there as such to customers, and another one which includes ready food and beverages that the actual undertaking itself prepares and then either serves to customers on the spot or sells it as a takeaway service.

Along the line of the above arguments, there is a low degree of similarity between the opponent’s services essentially aimed at providing food and drink and part of the contested goods that fall into the first category, namely: coffee, teas and substitutes thereof; ice creams, frozen yogurts and sorbets; goods made thereof [processed grains, starches], foodstuffs made from dough; wholemeal pasta; vermicelli [noodles]; pasta containing stuffings; spaghetti; ravioli; wholemeal noodles; potstickers [dumplings]; fresh pasta; instant udon noodles; flour-based gnocchi; gnocchi; macaroni; pasta containing eggs; snack foods consisting principally of pasta; cannelloni; prepared pasta; tortellini; fresh pastas, noodles and dumplings; filo pastry; prepared pizza meals; prepared meals in the form of pizzas; pasta-based prepared meals; calzones; lasagne; pastries consisting of vegetables and poultry; pizza; pizzas [prepared]; fresh pizza; meals consisting primarily of rice; meals consisting primarily of pasta; pasta dishes; rice based dishes; noodle-based prepared meals; egg rolls; crumble; chow mein [noodle-based dishes]; chow mein; wonton chips; seaweed flavoured corn chips; corn chips; prawn crackers; chips [cereal products]; chimichanga; cheeseburgers [sandwiches]; chalupas; cheese flavored puffed corn snacks; corn kernels being toasted; nachos; puffed corn snacks; maize, roasted; crisps made of cereals; hot dogs (prepared); hot dog sandwiches; hamburgers contained in bread rolls; hamburgers being cooked and contained in a bread roll; french toast; frankfurter sandwiches; filled baguettes; fajitas; tortillas; tortilla chips; millet cakes; pumpkin porridge (hobak-juk); tamales; taco chips; tacos; tabbouleh; sushi; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; crackers filled with cheese; crackers flavoured with cheese; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with herbs; sesame snacks; spaghetti and meatballs; pretzels; salted tarts; cereal-based snack food; snack foods consisting principally of extruded cereals; snack foods made from corn and in the form of rings; snack foods made from corn and in the form of puffs; snack foods made from corn; sweet rice with nuts and jujubes (yaksik); shrimp dumplings; sandwiches containing minced beef; sandwiches containing salad; sandwiches containing fish fillet; sandwiches containing meat; sandwiches containing fish; sandwiches containing chicken; sandwiches; samosas; rice salad; macaroni salad; gimbap [korean rice dish]; sausage rolls; risotto; ramen [japanese noodle-based dish]; ravioli [prepared]; fried corn; stir-fried noodles with vegetables (japchae); filled bread rolls; puffed cheese balls [corn snacks]; caramel coated popcorn with candied nuts; caramel coated popcorn; candy coated popcorn; popcorn; spring rolls; snack food products made from potato flour; snack food products made from maize flour; snack food products made from soya flour; snack food products made from rice flour; snack food products made from cereal starch; snack food products made from cereal flour; snack food products made from rusk flour; snack food products consisting of cereal products; fresh sausage rolls; fresh pies; toasted cheese sandwich with ham; toasted cheese sandwich; toasted sandwiches; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; pies [sweet or savoury]; meat pies; pies; pastries consisting of vegetables and fish; pastries consisting of vegetables and meat; mung bean pancakes (bindaetteok); flapjacks; crepes; green onion pancake [pajeon]; pies containing meat; poultry and game meat pies; meat pies [prepared]; mincemeat pies; pies containing fish; pies containing poultry; pies containing game; pies containing vegetables; pork pies; vegetable pies; egg pies; rice crisps; rice crackers [senbei]; rice crackers; pellet-shaped rice crackers (arare); rice dumplings dressed with sweet bean jam (ankoro); rice dumplings; rice biscuits; rice cakes; rice mixed with vegetables and beef [bibimbap]; okonomiyaki [japanese savory pancakes]; savory pastries; meat pies; soft pretzels; macaroni with cheese; pasta salad; hot sausage and ketchup in cut open bread rolls; glutinous pounded rice cake coated with bean powder (injeolmi); snack foods consisting principally of bread; snacks manufactured from muesli; snack foods prepared from maize; snack foods made of whole wheat; snack foods made from wheat; rice-based snack food; tortilla snacks; boxed lunches consisting of rice, with added meat, fish or vegetables; brioches; crackers flavoured with spices; crackers made of prepared cereals; korean traditional rice cake [injeolmi]; korean-style pasta soup [sujebi]; quiches; steamed buns stuffed with minced meat (niku-manjuh); bean jam buns; chinese steamed dumplings (shumai, cooked); chinese stuffed dumplings (gyoza, cooked); kimchi pancakes (kimchijeon); quesadillas; sticky rice cakes (chapsalttock); stir fried rice cake [topokki]; cheese curls [snacks]; canapes; flaky pastry containing ham; grain-based chips; cereal snack foods flavoured with cheese; vegetable flavoured corn chips; wrap [sandwich]; buckwheat jelly (memilmuk); enchiladas; empanadas; extruded wheat snacks; jiaozi [stuffed dumplings]; prepared meals containing [principally] rice; prepared meals containing [principally] pasta; ready-made dishes containing pasta; prepared rice dishes; rice-based prepared meals; prepared savory foodstuffs made from potato flour; ready to eat savory snack foods made from maize meal formed by extrusion; chocolate-based ready-to-eat food bars; wontons; burritos; onion biscuits; wholewheat crisps; baozi [stuffed buns]; banana fritters; flavoured popcorn; pineapple fritters; pancakes.

On the other hand, the remaining contested goods are either basic ingredients or products typically sold in package and available at a wide range of outlets, consequently, consumers would not think these goods originate from the undertaking providing restaurant services and/or they would not typically visit a restaurant to buy and consume them. Accordingly, the opponent’s services are dissimilar to the following contested goods: sugars, natural sweeteners, sweet coatings and fillings, bee products; cocoa and substitutes thereof; ice; Processed grains, starches; baking preparations and yeasts; Farinaceous food pastes; Cereals; Yeast and leavening agents; Dumpling skins; Pasta shells; Dried tortellini; Dried pasta; Dried noodles; Pasta-wrappings for gyoza; Bean-starch noodles (harusame, uncooked); Soba noodles [japanese noodles of buckwheat, uncooked]; Somen noodles [very thin wheat noodle, uncooked]; Pasta for incorporating into pizzas; Pasta in the form of sheets; Macaroni [uncooked]; Deep frozen pasta; Dried pastas, noodles and dumplings; Ready-to-bake dough products; Ready-made baking mixtures; Frozen pastries; Frozen dough; Preparations for making pizza bases; Preparations for making gateaux; Pizza mixes; Dough mix; Batter mixes; Dough; Alimentary paste [dough]; Pizza dough; Doughs, batters, and mixes thereof; Salts, seasonings, flavourings and condiments; Pizza crust; Frozen pizzas; Preserved pizzas; Canned pasta foods; Chilled pizzas; Pizza bases; Uncooked pizzas; Pre-baked pizzas crusts; Microwave popcorn; Processed unpopped popcorn; Prepared foodstuffs in the form of sauces; Canned spaghetti in tomato sauce; Frozen pastry stuffed with meat and vegetables; Frozen pastry stuffed with meat; Frozen pastry stuffed with vegetables.

---

Contested services in Class 39

The contested delivery of hampers containing food and drink; pizza delivery; delivery of food by restaurants; delivery of food and drink prepared for consumption; food delivery services; distribution services relating to beverages, such as alcoholic beverages; refrigerated transport of food; delivery of spirits; delivery of wines are specifically aimed to provide/deliver pre-ordered food and drink. Larger catering companies, restaurants not only prepare food and beverages but they can also provide delivery services to home addresses or to the venue of an event such as wedding or banquet. Accordingly, these contested services are similar to the opponent’s services in Class 43.

The contested transport by land; transport by two-wheeled motor vehicles; transport services; motor vehicle transport services; transportation and delivery of goods; distribution [transport] of goods by air; distribution [transport] of goods by sea; distribution [transport] of goods by road; transport; express delivery of goods; delivery of goods; distribution [transport] of retail goods; transportation; transportation of goods in refrigerated conditions; distribution services; delivery services; refrigerated transport of frozen goods; refrigerated transport of cold goods; transport of goods by land, air and water are general services aimed to transport or deliver goods by various means. As broad categories, they include the contested services previously found similar to the opponent’s services in Class 43. Since the Opposition Division cannot dissect ex officio more specific transport and delivery services from these broad categories, these services must be also considered to be similar to the opponent’s services in Class 43, based on the same reasoning as that in the preceding paragraph.

The remaining contested services in this class essentially include packaging, storing services as well as rental of vehicles and other specific transport services. These services are provided by specialist companies with their own vehicles, expert staff, logistics and administrative background. On the other hand, restaurants or catering companies do not normally provide such services.  as restaurants cannot be asked to satisfy one's own private transportation, packaging or storing needs. The nature, purpose, providers and distribution channels of these services are different. They are neither complementary nor in competition. As a result, these services, namely Packaging and storage of goods; parking and vehicle storage, mooring; chartering of vehicles for transportation; arranging the hire of all means of transport; arrangement of transportation; hire of road transport; road transport services; rental of means of transportation; chartering of transport; hired car transport; rental of car transporters; truck and trailer rental; rental of vehicles, in particular automobiles and lorries; contract rental of vehicles; rental of road vehicles; truck and vehicle rental; motor land vehicle hire services; rental of goods vehicles; rental of motor road vehicles; rental of commercial vehicles; motor land vehicle hire services; automobile rental reservation services; rental of lorries; rescue, recovery, towing and salvage; navigation (positioning, and route and course plotting); truck transport; carting; carting of goods; storage; road haulage services; freight [shipping of goods]; freight and cargo transportation and removal services; mail delivery and courier services; motor car transport services; transport of persons by land, air and water; travel and passenger transportation are dissimilar to any of the opponent’s services.

Contested goods in Class 43

The contested providing food and drink; bistro services; cafés; charitable services, namely providing food and drink catering; delicatessens [restaurants]; snack-bars; club services for the provision of food and drink; mobile restaurant services; bar services; pubs; tea rooms; pizza parlors; providing of food and drink via a mobile truck; providing food and drink in bistros; providing food and drink in restaurants and bars; providing food and drink for guests; providing food and drink for guests in restaurants; contract food services; preparation and provision of food and drink for immediate consumption; food preparation for others on an outsourcing basis; self-service restaurants; restaurants; restaurant services incorporating licensed bar facilities; serving food and drinks; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; personal chef services; providing drink services; services for the preparation of food and drink; reservation services for booking meals; take-out restaurant services; night club services [provision of food]; takeaway services; food preparation services; hotel restaurant services; serving food and drink in internet cafes; providing food and drink catering services for exhibition facilities; grill restaurants; salad bars are all services aimed at providing food or drink. They are, therefore, identical to the opponent’s broad categories of restaurant services (food); bar services, coffee bar and restaurant.

The contested catering for the provision of food and beverages; food and drink catering for cocktail parties; food and drink catering for banquets; catering in fast-food cafeterias; mobile catering services are all contained in the opponent’s broader category of catering services. Therefore, these services are identical. 

The contested temporary accommodation includes services such as accommodation in hotels, motels or inns. These facilities routinely provide food or drink to their guests either as breakfast which is sometimes even included in the room reservation or in their own restaurant or bar. To that extent, these contested services share the same customers and are provided by the same undertakings as the opponent’s services. In addition, these services can be complementary to one another, too. In summary, the said contested service is similar to the opponent’s restaurant services (food); bar services, coffee bar and restaurant.

The contested rental of furniture, linens and table settings; rental of bar equipment; rental of cooking apparatus; rental of kitchen worktops; rental of cooking equipment for industrial purposes; rental of non-electric cooking heaters; rental of internal furnishings; rental of kitchen worktops for preparing food for immediate consumption; rental of catering equipment are similar to the opponent’s restaurant; catering services. This is because it is rather common for caterers to also rent out chairs, tables, table cloths, glassware or cooking apparatus when needed. Furthermore, these services can be complementary and target the same user.

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 are directed at the public at large with the exception of the contested rental services that are also purchased by professional undertakings.  

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is composed of the words ‘OTTO SYLT’ in grey, inside a white banner, and these elements are placed in a black rectangular background. The mark is dominated by the word elements while the figurative and colour elements are of mere decorative nature. The earlier mark lacks any meaning in the relevant territory since ‘OTTO’ as such does not exist as a name while ‘SYLT’ being a region in Northern Germany is neither visited by nor known to the average Spanish customer. As a result, the word elements composing the earlier mark have a normal degree of distinctiveness in relation to the services in question.

The contested sign contains the word element ‘OTTO’ half-covered by a silhouette. The shape of the sign is claimed by the applicant to represent that of a car. The Opposition Division is of the opinion that it may be viewed in this way by some of the public while it would not evoke any concept to the other part of the public. In either way, the word element is fully incorporated into the sign and the public will first and foremost see it as a word. As the word element has no meaning in Spanish, it has normal distinctiveness in relation to the goods and services in question. With regard to the sign’s figurative part, to the public that perceives it as the silhouette of a car, it may remotely allude to some of the services in Class 39 while it is entirely distinctive to the remaining part.

Visually, the signs coincide in the word ‘OTTO’ and differ in the earlier mark’s additional figurative and word elements as well as in the figurative element of the contested sign. The contested sign’s sole verbal element is identical to earlier mark’s first word element. This is particularly important since consumers generally tend to focus on the first element of a sign when being confronted with a trade mark as the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is, thus, likely that consumers would recollect the earlier mark’s first word element and refer to it by that word. The impact of this coincidence is not fully counteracted by the signs’ additional word and figurative elements. It is, furthermore, noted that even if the applicant’s assertion that its sign alludes to the shape of a car were to be accepted, this would not change the fact that the earlier mark’s initial and distinctive word element is fully incorporated into the contested sign. Overall, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OTTO’, present identically in both signs. The pronunciation differs in the earlier mark’s additional word element placed in its second position. As explained above, consumers tend to focus and remember the first part of signs. In addition, in the present case the earlier mark’s first word is identical to the contested sign’s only word. Based on all this, the signs are highly similar.

Conceptually, neither of the signs has a meaning for part of the public who perceives the contested sign as a combination of the word ‘Otto’ and a curvy line. For them, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. For the remaining public, the contested sign evokes the image of a car which concept is missing in the earlier sign. For this part of the public, the signs are conceptually dissimilar.

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.

The opponent did not explicitly claim that its mark is 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment and conclusion

Some of the contested goods and services are identical or similar to the opponent’s services. The signs are visually and aurally similar while the conceptual aspect plays no role to the part of the public that perceives no meaning in either sign. The remaining public will find the signs to be dissimilar conceptually. Furthermore, the figurative elements will have a much lesser impact on perception while consumers relying on their imperfect recollection will recall the earlier mark’s first word coinciding with the only word element in the contested sign. This is all the more likely since the coinciding word element plays an independent distinctive and visually important role in the earlier sign, and also because, 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; 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

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 if to a low degree – to those of the earlier trade mark.

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

Cynthia DENDEKKER

Ferenc GAZDA

Birgit FILTENBORG

 

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.