TORRO Grande Meat in Style | Decision 2654088

Date Published: Sep 25, 2017

OPPOSITION No B 2 654 088

Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500, El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009, Barcelona, Spain (professional representative)

a g a i n s t

Torro Entertainment Ltd, 14, ‘Ruse’ str.4002 Plovdiv, Bulgaria (applicant), represented by Atanas Kostov, ‘Tsoko Kableshkov’ str. Nє10 fl.2, 4000, Plovdiv, Bulgaria (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 654 088 is upheld for all the contested services, namely:

Class 35: Business analysis, research and information services; Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services; Collection and systematization of business data; Commercial information agencies [provides business information, e.g., marketing or demographic data]; Analysis of business information; Business management analysis; Cost benefit analysis; Business consultancy and advisory services; Office functions services; Business consultation and management regarding marketing activities; Business consultation and management regarding launching of new products; Negotiation of commercial transactions for performing artists; Negotiation of commercial transactions for third parties; Business succession planning; Provision of business assistance; Provision of assistance [business] in the establishment of franchises; Help in the management of business affairs or commercial functions of an industrial or commercial enterprise; Commercial assistance in business management; Business administration; Business organisation; Restaurant management for others; Management of a retail enterprise for others; Operation of commercial businesses [for others]; Hotel management for others; Administration relating to sales methods; Management advice relating to the recruitment of staff; Supply chain management services; Outsourcing services [business assistance]; Business expertise services; Business networking services; Hotel management service [for others]; Business advisory and information services; Product demonstrations and product display services; Distribution of advertising, marketing and promotional material; Trade show and exhibition services; Advertising, marketing and promotional consultancy, advisory and assistance services; Updating of advertising material; Business assistance relating to corporate identity; Reproduction of advertising material; Direct marketing; Response advertising; Information services relating to advertising; Product marketing; Computerised business promotion; On-line advertising on a computer network; Online advertisements; Arranging of product launches; Arranging and conducting marketing promotional events for others; Rental of sales stands; Market campaigns; Business promotion; Product sampling; Promotion [advertising] of business; Promoting the sale of the services [on behalf of others] by arranging advertisements; Sales promotion; Sales promotions at point of purchase or sale, for others; Advertising services relating to hotels; Collection of information relating to advertising; Advice in the field of business management and marketing; Assistance in product commercialization, within the framework of a franchise contract; Trade marketing [other than selling]; Business marketing services; Business assistance relating to business image; Advertising and marketing; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Product launch services; Promotion services; Retail services relating to food; Retail services in relation to food cooking equipment; Retail services in relation to foodstuffs; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to non-alcoholic beverages; Retail services in relation to disposable paper products; Retail services in relation to meats; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to tobacco; Retail services in relation to preparations for making beverages; Retail services in relation to articles for use with tobacco; Wholesale services in relation to printed matter; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to alcoholic beverages (except beer).

Class 43: Providing temporary accommodation; Services for providing food and drink; Rental of furniture, linens and table settings; Animal boarding; Hotels, hostels and boarding houses, holiday and tourist accommodation; Event facilities and temporary office and meeting facilities; Temporary room hire; Charitable services, namely providing temporary accommodation; Accommodation bureaux [hotels, boarding houses]; Electronic information services relating to hotels; Booking of hotel accommodation; Information relating to hotels; Resort hotel services; Guesthouses; Tourist inns; Motels; Providing accommodation in hotels and motels; Providing campground facilities; Rental of temporary accommodation in holiday homes and flats; Arranging of accommodation for holiday makers; Boarding houses; Providing temporary accommodation as part of hospitality packages; Providing temporary accommodation in holiday flats; Providing temporary lodging for guests; Hotel reservation services provided via the Internet; Providing travel lodging information services and travel lodging booking agency services for travelers; Provision of hotel accommodation; Resort lodging services; Hotels; Travel agency services for reserving hotel accommodation; Hotel accommodation services; Hotels and motels; Hotel services for preferred customers; Making hotel reservations for others; Catering; Arranging of meals in hotels; Banqueting services; Juice bars; Salad bars; Cafés; Bistro services; Charitable services, namely providing food and drink catering; Cocktail lounge buffets; Wine bar services; Grill restaurants; Delicatessens [restaurants]; Snack-bars; Making reservations and bookings for restaurants and meals; Food sculpting; Catering in fast-food cafeterias; Food and drink catering for banquets; Food and drink catering for cocktail parties; Club services for the provision of food and drink; Consultancy services relating to food; Consultancy services relating to food preparation; Consulting services in the field of culinary arts; Pubs; Tea rooms; Mobile catering services; Mobile restaurant services; Bar services; Ice cream parlour services; Arranging of wedding receptions [food and drink]; Corporate hospitality (provision of food and drink); Provision of information relating to restaurants; Providing accommodation for functions; Pizza parlors; Provision of information relating to bars; Provision of information relating to the preparation of food and drink; Providing food and drink catering services for exhibition facilities; Providing reviews of restaurants; Providing of food and drink via a mobile truck; Providing food and drink in Internet cafes; 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; Booking of restaurant seats; Restaurant services provided by hotels; Self-service restaurants; Restaurants; Serving of alcoholic beverages; Serving food and drinks; Serving food and drink in Internet cafes; Serving food and drink in restaurants and bars; Serving food and drink for guests; Serving food and drink for guests in restaurants; Wine tasting services (provision of beverages); Cocktail lounge services; Hotel restaurant services; Restaurant reservation services; Hospitality services [food and drink]; Food preparation services; Night club services [provision of food]; Agency services for reservation of restaurants; Teahouse services; Accommodation reservation services [time share]; Reservation services for booking meals; Services for the preparation of food and drink; Providing drink services.

2. European Union trade mark application No 14 744 452 is rejected for all the above services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 744 452, namely against all the services in Classes 35 and 43. The opposition is based on, inter alia, European Union trade mark registrations No 10 654 507 and No 1 722 362. 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 European Union trade mark registrations No 10 654 507 and No 1 722 362.

The services

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

EUTM No 10 654 507

Class 43: Services for providing food and drink; Temporary accommodation.

EUTM No 1 722 362

Class 35: Advertising services; management of business affairs; commercial administration; office work; retailing of food and drink, none of which services and/or goods originates from or is related to bulls.

The contested services (after a limitation made by the applicant on 31/05/2016) are the following:

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 services in Class 35

The contested advertising services are identically contained in the list of services of earlier mark 2).

The contested distribution of advertising material; advertising consultancy advisory and assistance services; updating of advertising material; reproduction of advertising material; response advertising; information services relating to advertising; on-line advertising on a computer network; online advertisements; advertising services relating to hotels; collection of information relating to advertising; advertising are included in the broad category of the opponent’s advertising services; therefore, they are identical.

The contested marketing and promotional services; product demonstrations and product display services; distribution of marketing and promotional material; trade show and exhibition services; marketing and promotional consultancy, advisory and assistance services; direct marketing; product marketing; computerised business promotion; arranging of product launches; arranging and conducting marketing promotional events for others; rental of sales stands; market campaigns; business promotion; product sampling; promotion [advertising] of business; promoting the sale of the services [on behalf of others] by arranging advertisements; sales promotion; sales promotions at point of purchase or sale, for others; advice in the field of marketing; assistance in product commercialization, within the framework of a franchise contract; trade marketing [other than selling]; business marketing services; marketing; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; product launch services; promotion services are at least similar to the opponent’s advertising services, as these services are usually rendered by the same service providers and they target the same relevant public.

The contested business analysis, research and information services; business management; analysis of business information; business management analysis; business consultancy and advisory services; business consultation and management regarding marketing activities; business consultation and management regarding launching of new products; business succession planning; business organisation; restaurant management for others; management of a retail enterprise for others; operation of commercial businesses [for others]; hotel management for others; management advice relating to the recruitment of staff; supply chain management services; business expertise services; business networking services; hotel management service [for others]; business advisory and information services; advice in the field of business management overlap with the opponent’s management of business affairs. Therefore, these services are identical.

The contested business assistance, and administrative services; collection and systematization of business data; cost benefit analysis; provision of business assistance; provision of assistance [business] in the establishment of franchises; help in the management of business affairs or commercial functions of an industrial or commercial enterprise; commercial assistance in business management; business administration; business assistance relating to corporate identity; business assistance relating to business image are at least similar to the opponent’s management of business affairs, as they have the same purpose. They can have the same end users and service providers.

The contested commercial trading and consumer information services; commercial information agencies [provides business information, e.g., marketing or demographic data]; negotiation of commercial transactions for performing artists; negotiation of commercial transactions for third parties; administration relating to sales methods; outsourcing services [business assistance] overlap with the opponent’s commercial administration. Therefore, they are identical.

The contested office functions services include as a broader category the opponent’s office work services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services relating to food; retail services in relation to foodstuffs; retail services in relation to alcoholic beverages (except beer); retail services in relation to non-alcoholic beverages; retail services in relation to meats overlap with the opponent’s retailing of food and drink, none of which services and/or goods originates from or is related to bulls. Therefore, they are identical.

The contested retail services in relation to food cooking equipment; retail services in relation to preparations for making alcoholic beverages; retail services in relation to preparations for making beverages; retail services in relation to disposable paper products; retail services in relation to tobacco; retail services in relation to articles for use with tobacco; wholesale services in relation to printed matter; wholesale services in relation to preparations for making beverages; wholesale services in relation to preparations for making alcoholic beverages; wholesale services in relation to alcoholic beverages (except beer) are considered similar to the opponent’s retailing of food and drink, none of which services and/or goods originates from or is related to bulls. The services at issue have the same nature since both are retail or wholesale services, and the same purpose of allowing consumers to conveniently satisfy different shopping needs. Furthermore, they have the same relevant public and distribution channels.

Contested services in Class 43

The contested providing temporary accommodation; services for providing food and drink are also included in the list of services of earlier mark 1).

The contested hotels, hostels and boarding houses, holiday and tourist accommodation; temporary room hire; charitable services, namely providing temporary accommodation; accommodation bureaux [hotels, boarding houses]; resort hotel services; guesthouses; tourist inns; motels; providing accommodation in hotels and motels; rental of temporary accommodation in holiday homes and flats; arranging of accommodation for holiday makers; boarding houses; providing temporary accommodation as part of hospitality packages; providing temporary accommodation in holiday flats; providing temporary lodging for guests; provision of hotel accommodation; resort lodging services; hotels; hotel accommodation services; hotels and motels; hotel services for preferred customers are included in the broad category of the opponent’s temporary accommodation; therefore, these services are identical.

The contested rental of furniture, linens and table settings; animal boarding; event facilities and temporary office and meeting facilities; electronic information services relating to hotels; booking of hotel accommodation; information relating to hotels; providing campground facilities; hotel reservation services provided via the internet; providing travel lodging information services and travel lodging booking agency services for travelers; travel agency services for reserving hotel accommodation; making hotel reservations for others; providing accommodation for functions; accommodation reservation services [time share] are similar to the opponent’s providing temporary accommodation, as these services may have the same producers and end users. Furthermore, they are complementary.

The contested catering; arranging of meals in hotels; banqueting services; juice bars; salad bars; cafés; bistro services; charitable services, namely providing food and drink catering; cocktail lounge buffets; wine bar services; grill restaurants; delicatessens [restaurants]; snack-bars; catering in fast-food cafeterias; food and drink catering for banquets; food and drink catering for cocktail parties; club services for the provision of food and drink; pubs; tea rooms; mobile catering services; mobile restaurant services; bar services; ice cream parlour services; arranging of wedding receptions [food and drink]; corporate hospitality (provision of food and drink); pizza parlors; providing food and drink catering services for exhibition facilities; providing of food and drink via a mobile truck; providing food and drink in internet cafes; 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; restaurant services provided by hotels; self-service restaurants; restaurants; serving of alcoholic beverages; serving food and drinks; serving food and drink in internet cafes; serving food and drink in restaurants and bars; serving food and drink for guests; serving food and drink for guests in restaurants; wine tasting services (provision of beverages); cocktail lounge services; hotel restaurant services; hospitality services [food and drink]; food preparation services; night club services [provision of food]; teahouse services; services for the preparation of food and drink; providing drink service are included in the broad category of the opponent’s providing food and drink; therefore, these services are identical.

The contested making reservations and bookings for restaurants and meals; food sculpting; consultancy services relating to food; consultancy services relating to food preparation; consulting services in the field of culinary arts; provision of information relating to restaurants; provision of information relating to bars; provision of information relating to the preparation of food and drink; providing reviews of restaurants; booking of restaurant seats; restaurant reservation services; agency services for reservation of restaurants; reservation services for booking meals are similar to the opponent’s providing food and drink, as the services at issue have the same nature, relevant public and providers, and, moreover, they are complementary.

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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, specialised nature and conditions of the services that are provided.

The signs

TORO

Earlier trade marks

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since the element ‘meat in style’ in the contested sign has a meaning for the English-speaking part of the public.

The earlier signs are word marks composed of the word ‘TORO’, which has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative trade mark composed of the word ‘Torro’ in slightly stylised white upper case letters. Given its size and position, this element is the most eye-catching in the mark; it has no meaning for the relevant public and is therefore distinctive. Consequently, this element will have a more significant impact than the other elements of the mark, which, as explained below, are of limited distinctiveness, at least for some of the relevant services. The sign also includes the word ‘grande’, which will be understood by the relevant public as ‘magnificent and imposing in appearance, size or style’, because the English equivalent of the word ‘grande’ is ‘grand’. Given that this word may describe the quality of the services, this element is weak. The black square on which these word elements are depicted is a commonplace shape that is a mere background, will be perceived as purely decorative and therefore is weak. Below the figurative element is, in black upper case letters, the expression ‘meat in style’, which will be associated with ‘meat that is good quality’ by the relevant public. Bearing in mind that the relevant services are, inter alia, services for providing food and the retail of foodstuffs, this element is weak for these services.

Visually, the signs coincide in the letters ‘TOR*O’ of the only element of the earlier sign and the dominant element of the contested sign. In particular, the first three letters are in identical positions in both signs. Given that the earlier sign and the dominant element of the contested mark have four out of five letters in common (three of which are present identically at the beginning of the relevant words) and that the differences lie in less distinctive elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TORO’, present identically in both signs. The pronunciation differs in the sound of the other words of the contested mark, which have no counterparts in the earlier sign. Taking into account the lesser importance that will be attributed to the differing elements, as explained above, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning(s) of the verbal elements of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. This conceptual difference, however, has a limited impact on the overall assessment of similarity of the signs, as it lies mainly in less distinctive elements.

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

Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the signs are visually and aurally similar to an average degree. The services are partly identical and partly similar, and they are directed at the public at large as well as business customers with specific professional knowledge or expertise. Although the relevant public may perceive certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is high. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 10 654 507 and No 1 722 362. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier rights No 10 654 507 and No 1 722 362 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Michaela

SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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.

TORRO Grande Meat in Style | Decision 2654088

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