The Italian Job | Decision 2407255 - PARAMOUNT PICTURES CORPORATION v. Costantino Tenuta

Date Published: Sep 24, 2017

OPPOSITION No B 2 407 255

Paramount Pictures Corporation, 5555 Melrose Avenue, Los Angeles, CA 90038-3197, United States of America (opponent), represented by Maucher Jenkins, 26 Caxton Street, London  SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Italian Beer Connection Limited, 7 Torriano Mews, London, NW5 2RZ, United Kingdom (applicant), represented by De Simone & Partners S.P.A., Via Vincenzo Bellini, 20, 00198 Roma, Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 407 255 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 878 121 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 878 121 of the word mark ‘The Italian Job’. The opposition is based on, inter alia, 1) European Union trade mark registration No 12 488 169 for the word mark ‘THE ITALIAN JOB’, 2) European Union trade mark registration No 11 949 682 for the word mark ‘THE ITALIAN JOB’, which, after its partial refusal in opposition proceedings B 2 265 216, was partially converted into 3) national Spanish trade mark registration No 3 635 475. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR in relation to these registered rights and also Article 8(4) EUTMR in relation to ‘THE ITALIAN JOB’ as a non-registered trade mark in all the European Union Member States and as a film title in Germany.

PRELIMINARY REMARKS

With respect to the grounds invoked, it must be noted that in the notice of opposition of 09/09/2014 the opponent did not tick the box of Article 8(1)(a) EUTMR but only those concerning the grounds of Article 8(1)(b), Article 8(5) EUTMR and Article 8(4) EUTMR respectively. However, it is clear from the following excerpt from the accompanying grounds of opposition, filed together with the notice of opposition, that the opponent also based the opposition on Article 8(1)(a) EUTMR: ‘The Opponent contends that Application No 12878121 ought to be refused under the terms of Article 8(1)(a) of the Council Regulation No. 207/2009, since the mark applied for is identical with the earlier mark THE ITALIAN JOB and the class 30 and 43 goods and services applied for are identical with the class 30 and 43 goods and services for which the earlier mark is protected in the Opponent’s earlier CTM registration no. 12488169, CTM application no. 11949682 or CTM application no. 12729448’. Therefore, the opponent duly indicated the ground of Article 8(1)(a) EUTMR within the opposition time period and its request by letter of 28/09/2016 to correct the omission to check the box of Article 8(1)(a) EUTMR in the notice of opposition is superfluous.

As regards the third earlier mark invoked, namely national Spanish trade mark registration No 3 635 475, it must be noted that this right did not yet exist at the time of filing of the opposition. Nevertheless, it can be relied on by the opponent in the present proceedings, since it results from the conversion of European Union trade mark registration No 11 949 682 following its partial refusal in decision B 2 265 216 of 28/04/2015, which was confirmed by the Boards of Appeal in its decision of 25/07/2016 in Case R 1259/2015-5. Indeed, by letter of 26/09/2016 the opponent informed the Office that it ‘wishes to rely on the Spanish trade mark application deriving from the partial conversion of EUTM 11949682 as a further ground of opposition under Article 8(1)(b) EUTMR (cf Guidelines, part C, Opposition Section 1 procedural matters at para 4.2.2.2.).’ Subsequently, on 03/05/2017 the opponent duly substantiated the Spanish trade mark registration No 3 635 475. Therefore, the opposition is not only based on the part of earlier European Union trade mark registration No 11 949 682 (earlier mark 2) that was not affected by opposition proceedings B 2 265 216 but also on the part that was converted into earlier Spanish trade mark registration No 3 635 475 (earlier mark 3).

By letters of 26/05/2017 and 27/06/2017, the applicant requested to be given another opportunity to present observations on some issues in reply to the opponent’s submission of 03/05/2017 which, according to the applicant, consisted of full new arguments of the opponent. However, the earlier converted Spanish trade mark registration for some of the services in Class 43 previously covered by the partially refused EUTM registration No 11 949 682 does not entail any new grounds on which the applicant did not already have an opportunity to comment on in its observations of 24/11/2016. In addition, the other evidence and arguments put forward by the opponent in the submission of 03/05/2017 were in reply to the applicant’s observations of 24/11/2016 and do not raise any new points admitted to the proceedings. In these circumstances, the Opposition Division does not find it necessary to grant the applicant a new time limit to present any further observations in reply to the opposition.    

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opposition is based on several earlier rights. The Opposition Division finds it appropriate to first examine the opposition in relation to earlier marks 1-3.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

1. European Union trade mark registration No 12 488 169

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; olive oil; tapenades being a paste or dip made from capers, black olives, anchovies, olive oil and lemon juice; canned tomatoes; cheeses; frozen foods included in class 29; meat products, fish products, prepared meals and snacks and constituents thereof; salads, dairy products; cheese products; potato chips and fries; dessert products; beverages consisting principally of milk, beverages having a milk base, beverages made from or containing milk, beverages made from yoghurt, beverages made mainly from milk ferments, creamers for beverages, dairy-based beverages, dairy-based chocolate food beverages, dairy-based food beverages, flavoured milk beverages, fruit flavoured beverages having a milk base, malted milk beverages, (milk predominating), other than for medical purposes, milk-based beverage containing coffee, milk beverages, milk beverages containing fruit, milk shakes being milk beverages, powdered milk creamers for beverages, powdered preparations for making milk beverages, soy-based food beverage used as a milk substitute, soya bean based beverages, vegetable-based food beverages, whiteners (dairy) for beverages.  

Class 30: Honey, treacle; yeast, baking-powder; salt, mustard; vinegar, spices; ice; chocolates; frozen foods included in class 30; aerated beverages (with coffee, cocoa or chocolate base), beverages (chocolate-based-), beverages (cocoa-based-), beverages (flavorings, other than essential oils, for -), beverages (tea-based-), beverages made from cereals, chocolate essences for the preparation of beverages, chocolate extracts for the preparation of beverages, chocolate flavoured beverage making preparations, chocolate flavoured beverages, chocolate food beverages not being dairy-based or vegetable based, chocolate syrups for the preparation of chocolate based beverages, cocoa for use in making beverages, cocoa preparations for use in making beverages, essences for foods, beverages and flavourings, extracts of cocoa for use as flavours in beverages, extracts of coffee for use as flavours in beverages, flavourings for beverages, non-dairy whiteners for beverages, non-milk whiteners for beverages, plant flavourings (other than essential oils) for beverages, powder for making beverages, powdered preparations containing cocoa for use in making beverages, powdered sugar for preparing isotonic beverages, preparations for making beverages (chocolate based), preparations for making beverages (coffee based), preparations for making beverages (tea based), whiteners (non-dairy) for beverages.  

2. European Union trade mark registration No 11 949 682

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; sauces (condiments); pasta, pasta sauce; crackers; condiments; ice cream; gelato being Italian ice cream; prepared meals and snacks and constituents thereof; beverages (coffee-based ), herbal beverages (other than for medicinal use), herbal preparations for making beverages, ice beverages with a chocolate base, ice beverages with a cocoa base, ice beverages with a coffee base; preparations for making beverages (cocoa based); prepared cocoa and cocoa-based beverages; prepared coffee and coffee-based beverages; tea-based beverages, tea-based beverages with fruit flavouring; sandwiches; biscuits, cakes; water ices, confections; pies and puddings; quiches, flans; dessert products; sauces and spices. 

Class 43: Provision of general-purpose facilities for meetings, conferences, conventions and exhibitions; Provision of facilities for meetings, conferences and for exhibitions; Provision of campground and caravan facilities; Information, advice and consultancy relating to all the aforesaid services.

3. Spanish trade mark registration No 3 635 475

Class 43: Services for providing food and drink; temporary accommodation; hotel and motel services; restaurant, catering and bar services provision of banquet and social function facilities for special occasions; provision and management of café, cafeteria, canteen, bar, coffee shop, snack-bar and restaurant services and facilities; reservation services for hotel accommodation and other accommodation; appraisal and grading of tourist accommodation; arranging and letting holiday accommodation; letting of and reservation of tourist accommodation; tourist agency and tourist office services for booking accommodation; electronic information services relating to hotels; arranging, planning and conducting of banquets; information, advice and consultancy relating to all the aforesaid services.

The contested goods and services are the following:

Class 30: Dried and fresh pastas, noodles and dumplings; Yeast and leavening agents; Doughs, batters, and mixes therefor; Cereals; Organic thickening agents for cooking foodstuffs; Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice, ice creams, frozen yogurts and sorbets; Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Prepared foodstuffs in the form of sauces; Filled baguettes; Chocolate-based ready-to-eat food bars; Pizza crusts; Pre-baked pizzas crusts; Calzones; Cheeseburgers [sandwiches]; Pretzels; Rice crackers; Crackers flavoured with cheese; Rice crackers [senbei]; Pellet-shaped rice crackers (arare); Crackers filled with cheese; Crackers made of prepared cereals; Crackers flavoured with herbs; Crackers flavoured with spices. 

Class 33: Preparations for making alcoholic beverages; Alcoholic beverages (except beer); Grappa (brandies); Sparkling wines.

Class 43: Animal boarding; Provision of food and drink; Temporary accommodation; Rental of furniture, linens and table settings; Restaurant services.

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 dried and fresh pastas, noodles and dumplings are included in the broad category of the opponent’s pasta covered by earlier mark 2. Therefore, they are identical.

Yeast; ice; salts; chocolate are identically contained in the lists of goods covered by earlier mark 1.

Coffee, teas and cocoa and substitutes for coffee; condiments; ice creams; confectionery; dessert; sugars; prepared foodstuffs in the form of sauces are identically contained in the lists of goods (including synonyms) covered by earlier mark 2.

The contested leavening agents includes, as a broader category the opponent’s yeast covered by earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested doughs, batters, and mixes therefor; processed grains, starches, and goods made thereof, baking preparations; baked goods; filled baguettes; pretzels; rice crackers; crackers flavoured with cheese; rice crackers [senbei]; pellet-shaped rice crackers (arare); crackers filled with cheese; crackers made of prepared cereals; crackers flavoured with herbs; crackers flavoured with spices are included in the broad category of, or overlap with, the opponent’s flour and preparations made from cereals covered by earlier mark 2. Therefore, they are identical.

The contested cereals includes, as a broader category the opponent’s rice covered by earlier mark 2. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested frozen yogurts and sorbets are included in the broad category of the opponent’s ices covered by earlier mark 2 which must be understood as ‘edible ices’. Therefore, they are identical.

The contested seasonings includes, as broader category the opponent’s salt, mustard; vinegar, spices covered by earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested flavourings includes, as a broader category the opponent’s flavourings for beverages covered by earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bee products and natural sweeteners include, as broader categories, the opponent’s honey covered by earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sweet coatings and fillings are included in the broad categories of, or overlap with, the opponent’s sugar covered by earlier mark 2 and honey and treacle covered by earlier mark 1. Therefore, they are identical.

The contested chocolate-based ready-to-eat food bars are included in the broad category of the opponent’s confectionery covered by earlier mark 2. Therefore, they are identical.

The contested pizza crusts; pre-baked pizzas crusts; calzones; cheeseburgers [sandwiches] are included in the broad category of the opponent’s prepared meals and snacks and constituents thereof covered by earlier mark 2. Therefore, they are identical.

The contested substitutes for teas and cocoa are highly similar to the teas and cocoa respectively covered by earlier mark 2, as they can have the same producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested organic thickening agents for cooking foodstuffs are similar to the opponent’s flour covered by earlier mark 2, since these goods are in competition, target the same consumers and consequently are commonly sold side by side in shops and produced by the same undertakings.

Contested goods in Class 33

The contested preparations for making alcoholic beverages; alcoholic beverages (except beer); grappa (brandies); sparkling wines are complementary to the earlier services for providing food and drink in Class 43 covered by earlier mark 3, since the contested goods may be offered for sale in places in which food and drink are served. For example, it is quite common for restaurants, bars, public houses and in some Member States, even cafés, to offer alcoholic beverages on their drinks menu. When wishing to consume such beverages, for this purpose the average consumer may either choose to visit such venues or to purchase them in a store. Moreover, even though restaurants and public houses themselves in principle do not manufacture the drinks they offer, fruit brandies in particular are often produced in house and there are in fact pubs which serve home-made spirits. Also it is common practice, particularly in France, that wineries operate both wine taverns as well as wine shops on their vineyards under the same name as the range of wine offered both for consumption immediately at the vineyard as well as at home. Under such circumstances, consumers may assume that there is an economic or business relationship between those who manufacture the goods and those who offer the services for providing food and drink. Therefore, these goods and services are deemed to be similar to a low degree.

Contested services in Class 43

Provision of food and drink; temporary accommodation; restaurant services are identically contained in the lists of services covered by earlier mark 3.

The contested animal boarding is included in the broad category of the opponent’s temporary accommodation covered by earlier mark 3. Therefore, they are identical.

The contested rental of furniture, linens and table settings overlaps with the opponent’s provision of banquet and social function facilities for special occasions covered by earlier mark 3 to the extent that the applicant’s rental services include such services for banquets or social gatherings. Therefore, they are identical. 

2. The signs

THE ITALIAN JOB	The Italian Job
Earlier trade marks 1-3	Contested sign

All the earlier marks and the contested sign are word marks. In the case of word marks, the words as such are protected, and not their written form. Therefore, it is immaterial whether they are represented in lower or upper case letters or a combination of both. Hence, all the signs are identical.

3. Conclusion

Part of the goods of Class 30 have been found identical to goods of either earlier mark 1 or 2 and all services of Class 43 have been found identical to services of earlier mark 3, namely:

 

Class 30: Dried and fresh pastas, noodles and dumplings; Yeast and leavening agents; Doughs, batters, and mixes therefor; Cereals; substitutes for coffee; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice, ice creams, frozen yogurts and sorbets; Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Sugars, natural sweeteners, sweet coatings and fillings, bee products; Prepared foodstuffs in the form of sauces; Filled baguettes; Chocolate-based ready-to-eat food bars; Pizza crusts; Pre-baked pizzas crusts; Calzones; Cheeseburgers [sandwiches]; Pretzels; Rice crackers; Crackers flavoured with cheese; Rice crackers [senbei]; Pellet-shaped rice crackers (arare); Crackers filled with cheese; Crackers made of prepared cereals; Crackers flavoured with herbs; Crackers flavoured with spices. 

Class 43: Animal boarding; Provision of food and drink; Temporary accommodation; Rental of furniture, linens and table settings; Restaurant services.

The contested sign is identical to all earlier marks 1-3. Therefore, the opposition must be upheld in accordance with Article 8(1)(a) EUTMR for all these identical goods and services.

Consequently, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 488 169, European Union trade mark registration No 11 949 682 and national Spanish trade mark registration No 3 635 475. It follows that the contested trade mark must be rejected for the contested goods and services of Classes 30 and 43 found to be identical.

Since the opposition is not fully successful under Article 8(1)(a) EUTMR, the Opposition Division will proceed with the assessment of the likelihood of confusion under Article 8(1)(b) EUTMR for the remaining contested goods of Classes 30 and 33 in relation to earlier marks 2 and 3. 

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 several earlier rights. The Opposition Division finds it appropriate to first examine the opposition in relation to earlier marks 2-3.

1. The remaining goods in Classes 30 and 33

The goods have already been compared above in section a) under Identity (Article 8(1)(a) EUTMR). Reference is made to those findings. The remaining substitutes for teas and cocoa; organic thickening agents for cooking foodstuffs in Class 30 are (highly) similar to the opponent’s goods in Class 30 of earlier mark 2 and the contested preparations for making alcoholic beverages; alcoholic beverages (except beer); grappa (brandies); sparkling wines in Class 33 are similar to a low degree to the opponent’s services in Class 43 of earlier mark 3.

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 in question are directed at the public at large. Taking into account the nature of the goods and services, the level of attention of the relevant consumer will be normal.

3. The signs

THE ITALIAN JOB	The Italian Job
Earlier trade marks 2 and 3	Contested sign

The marks have already been compared in section b) above under Identity (Article 8(1)(a) EUTMR). Reference is made to those findings. The signs are identical.

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 opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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 or services in question from the perspective of the public under analysis in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 (eighth recital 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 (see, to that effect, 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).

As has been concluded above, the signs are identical. The goods are similar to varying degrees to the opponent’s goods and services and must be assessed from the point of view of the public whose degree of attention is average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

In light of all the foregoing considerations, in particular the identity of the signs, it must be held that there is a likelihood of confusion on the part of the public even for the lowly similar goods.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 949 682 and Spanish trade mark registration No 3 635 475. It follows that the contested trade mark must be rejected for all the remaining contested goods.

The applicant’s argument that there are some other identical marks for many different goods and services in the EU-register and in use the market, cannot change this finding.

As regards the trade mark registrations, it must be pointed out that the existence of several trade mark registrations is not per se particularly conclusive, as it cannot be assumed that all such trade marks have been effectively used, while the evidence relating to use in the market place concerns either a different field of use, e.g. music or clothing, or only in a very small part of the EU territory, not including Spain. Indeed, the fact that there are two restaurants in the whole EU named ‘The Italian job’, namely one in Italy and one in Malta, cannot exclude a likelihood of confusion in the rest of the territory of the EU. All other examples show restaurants outside of the EU.

It follows that the evidence filed by the applicant does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks consisting or comprising the expression ‘The Italian job’.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 12 488 169, European Union trade mark registration No 11 949 682 and national Spanish trade mark registration No 3 635 475 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the grounds of Article 8(1)(a) and (b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) and Article 8(4) 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.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Adriana VAN ROODEN

Boyana NAYDENOVA

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.