PIRATE CREW | Decision 2256520 - IMPERIAL - PRODUTOS ALIMENTARES, S.A. v. United Biscuits (UK) Limited
Date Published: Sep 24, 2017
OPPOSITION No B 2 256 520
Imperial - Produtos Alimentares, S.A., Rua de Santana, 4480-160 Azurara, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 - 6°. Dt°., 4000-432 Porto, Portugal (professional representative)
a g a i n s t
United Biscuits (UK) Limited, Hayes Park North, Hayes End Road, Hayes, Middlesex UB4 8EE, United Kingdom (applicant), represented by Carlos Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional representative).
On 23/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 256 520 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 11 876 182 ‘PIRATE CREW’ (word mark). The opposition is based on Portuguese trade mark registration No 437 880 ‘PIRATA’ (word mark) and European Union trade mark registration No 11 079 068 ‘PIRATA’ (word mark). The opponent invoked Article 8(1)(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.
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 Portuguese trade mark registration No 437 880.
- The goods
The goods on which the opposition is based are the following:
Class 30: Chewing gum.
The contested goods are the following:
Class 30: Biscuits, Chocolate Biscuits, Cakes.
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 30
The contested goods biscuits, chocolate biscuits, cakes include various kinds of baked goods, such as cakes, tarts, pies and in the case of biscuits, small baked unleavened cakes, which are generally sweet and typically flat on the base. However, chewing gum is a cohesive substance intended for chewing but not swallowing, often flavoured with mint, fruit or liquorice, typically made from chicle. The goods under comparison normally do not originate from the same undertaking, as a bakery might produce many different sweet foods, such as cakes or biscuits, but in general does not engage in the manufacture of chewing gum as this requires different tools and different methods of production. Although there is an overlap in terms of the distribution channels – they can all be purchased in most markets – the later goods are not typically produced by the same undertakings, are intended for different purpose (sustenance versus chewing, or freshening of the breath). Moreover, these contested goods tend to be more substantial in comparison to the other earlier goods – they are often eaten during one of the daily meals, while chewing gum and the other earlier goods deemed similar are more snacks, which can be consumed at any time. Thus, their nature and method of use differ and they are not complementary. These goods are therefore overall dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opponent has also based its opposition on European Union trade mark registration No 11 079 068 for the word mark ‘PIRATA’ registered for chewing gum, chocolates, wafers and confectioneries in Class 30.
The other earlier right invoked by the opponent was invalidated by decision C 9 850 of the Cancellation Division on 16/09/2015 confirmed by Appeal R2294/2015-5 of 06/07/2016. Therefore, this earlier right cannot be taken into account.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Loreto URRACA LUQUE | Arkadiusz GORNY | Judit NÉMETH |
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.