stop.cafe | Decision 2708108 - SERVICIOS DE DEPILACION BLOC, S.L. v. Polski Koncern Naftowy ORLEN S.A.

Date Published: Sep 28, 2017

OPPOSITION No B 2 708 108

Servicios de Depilacion Bloc, S.L., Provença, 288 3r 1ª, 08008 Barcelona, Spain (opponent), represented by Sanz Bermell International, Calle Jativa, 4, 46002 Valencia, Spain (professional representative)

a g a i n s t

Polski Koncern Naftowy Orlen S.A., Chemików 7 street, 09-411 Płock, Poland (applicant), represented by Polski Koncern Naftowy Orlen S.A., Agnieszka Radzymińska, Chemików 7, 09-411 Płock, Poland (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 108 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 897 706, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 11 238 227. 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.

1. The services

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

Class 35: Advertising; commercial management assistance in relation to franchises; franchising relating to business management assistance; business administration; office functions.

The contested services are the following:

Class 35: Advertising in the field of press, radio, television and Internet advertising, and advertising via posters and flyers and electronic, magnetic and optical data carriers, extensive advertising campaigns, dissemination of promotional and advertising matter, including catalogues, market research and opinion polling, organisation and conducting of exhibitions and trade fairs, competitions and lotteries and entertainment events for commercial or advertising purposes based on advertising via press, radio, television and Internet advertising and via electronic, magnetic and optical data carriers; Administration in the field of issuing and providing purchase cards; issuing of customer loyalty cards; Publication of promotional and advertising matter, including catalogues.

Contested services in Class 35

The contested advertising in the field of press, radio, television and Internet advertising, and advertising via posters and flyers and electronic, magnetic and optical data carriers, extensive advertising campaigns, dissemination of promotional and advertising matter, including catalogues, market research and opinion polling, organisation and conducting of exhibitions and trade fairs, competitions and lotteries and entertainment events for commercial or advertising purposes based on advertising via press, radio, television and Internet advertising and via electronic, magnetic and optical data carriers; publication of promotional and advertising matter, including catalogues are included in the opponent’s broader category of advertising. Therefore they are identical.

The contested administration in the field of issuing and providing purchase cards; issuing of customer loyalty cards; are included in the opponent’s broader category office functions. Therefore, they are identical.

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 services found to be identical are directed at business customers with specific professional knowledge or expertise. As they may have important financial consequences for their users, the relevant consumers are likely to display a relatively high degree of attention.

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 earlier mark is a pink circle containing the words ‘Pelo’ and ‘stop’, written one above the other. The word ‘Pelo’ exists in some of the relevant languages, for example Spanish and Portuguese, and means ‘hair’. However, in most of the relevant territories, the word is meaningless or fanciful. Be that as it may, in the context of the relevant services, this word is distinctive for the whole public whether it is understood or not. The word ‘stop’ will be understood by the whole public as meaning to finish doing something, to pause, and will be understood because it will be associated with the international traffic sign that indicates to drivers their obligation to come to a halt. This word also enjoys an average degree of distinctiveness taking into account the conflicting services.

The contested sign is a dark-red circle containing the words ‘stop’ and ‘cafe’, written one above the other. There is also a red full stop character between the words, which reinforces the meaning of the word ‘stop’, thus creating a single semantic unit. The word ‘cafe’ means ‘coffee’ in some European languages (i.e. French, Spanish, Italian but is internationally known as a place where one buys drinks and simple meals. These words enjoy an average degree of distinctiveness taking into account the contested services.

The circle, which serves as a background to the verbal elements of both signs, is a simple geometric shape that will be considered as a decorative element and is, therefore, non-distinctive for all the services at issue. The Opposition Division does not agree with the opponent’s argument, submitted on 24/05/2016, regarding the identity of the signs based on the logo shape and the same style of lettering, as all these elements are of secondary importance in the overall assessment of the similarity of the signs.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs are similar, as they both contain a circle including the word ‘stop’, yet occupying an inverted position. However, they differ in the verbal elements ‘Pelo’ and ‘cafe’, contained in the earlier and contested sign respectively. The signs differ further in the red full stop character, included only in the contested sign, and in the colours of their backgrounds (pink versus dark red).

Therefore, the signs are similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of ‘/s-t-o-p/’, present identically in both signs. However, it differs in the verbal element ‘Pelo’, present in the earlier mark and with no counterpart in the contested sign, and the word ‘cafe’ of the contested sign, which has no counterpart in the earlier mark. It is reasonable to think that the full stop character will not be pronounced by the relevant public, as it is not usual to do so when reading aloud except in certain very specific instances.

Therefore, the signs are similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Because of the presence of the same meaningful word ‘stop’, the marks can be conceptually linked. However, as a whole, the signs are different for the vast majority of the relevant public that understands the words ‘stop cafe’ as a place to take a quick meal or snack and for this part of the public they convey a different concept from ‘Pelo Stop’, as the term ‘Pelo’ will not be understood.

For the Spanish- and Portuguese-Speaking parts of the public that, moreover, understand the meaning of the word ‘Pelo’, both signs are conceptually dissimilar too.

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 average

5. Global assessment, other arguments and conclusion

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU: T:2008:33, § 58).

As stated by the opponent, in the present case, it cannot be denied that the word ‘stop’ is present in both marks in a similar typeface and it is included in a circle in both cases. However, the signs show also significant differences in their overall appearance and in some details, as explained in the present decision. In fact, the signs are aurally and visually similar to only a low degree and no conceptual similarity has been found between them.

It remains necessary to consider the opponent’s argument referring to its ‘family of marks’ giving rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent. In the present case, no proof has been submitted by the opponent that it uses a family of ‘Stop’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark.

On balance, the differences are sufficient to exclude likelihood of confusion, including the risk that consumers might believe that the services in question come from the same undertaking or economically linked undertakings, especially if we take into account the high degree of attention that is going to be displayed by the relevant public.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition on the ground of Article 8(1)(b) EUTMR must be rejected.

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

Ric WASLEY

Alexandra APOSTOLAKIS

Richard BIANCHI

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.