OPPOSITION No B 2 218 215
Cherie FM, 22, rue Boileau, 75016 Paris, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)
a g a i n s t
Sea Goddess N.V., Rhine Road 45, Maho Beach, Saint Martin (the Netherlands part) (applicant), represented by Joep Mens Trademark Company B.V., Slotlaan 379, 3701 GZ Zeist, the Netherlands (professional representative).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 218 215 is upheld for all the contested services, namely:
Class 41: Night club services; dance club services; music-hall services; entertainment services, namely conducting parties; entertainment services, namely dance and music performances.
2. European Union trade mark application No 11 577 962 is rejected for all the contested services. It may proceed for the remaining non-contested services in Class 43.
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 11 577 962, namely against all the services in Class 41. The opposition is based on, inter alia, French trade mark registration No 1 622 753. The opponent invoked Article 8(1)(b) and 8(5) 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 French trade mark registration No 1 622 753.
- The services
The services on which the opposition is based are the following:
Class 41: Entertainment, shows, radio entertainment.
The contested services are the following:
Class 41: Night club services; dance club services; music-hall services; entertainment services, namely conducting parties; entertainment services, namely dance and music performances.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
Contested services in Class 41
The contested entertainment services, namely conducting parties; entertainment services, namely dance and music performances are included in the broad category of the opponent’s entertainment. Therefore, they are identical.
Likewise, the contested night club services; dance club services; music-hall services being services for entertaining and amusement, are included in the broad category of the opponent’s entertainment. Therefore, they are identical.
- 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 the public at large. The degree of attention is considered to be average.
- The signs
| CHERI’S CAFE
|
|
|
Earlier trade mark |
Contested sign |
The relevant territory is France.
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 figurative and consists of a black square containing the white verbal elements ‘Chérie FM’ written one above the other, in italicised stylised font, with a white curvy underlining between them. The contested sign is a word mark and consists of the verbal elements ‘CHERI’S CAFE’. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the contested mark is represented in upper case or lower case letters.
The element ‘Chérie’ and, respectively, ‘Cheri’ included in the signs will be perceived by the relevant public as the female and the male form of the word chéri, ie (see Dictionnaires Le Robert – Le Grand Robert de la langue française) meaning darling, dear; boyfriend, girlfriend. As these elements have no specific descriptive, allusive or otherwise weak meaning in relation to the relevant services, their inherent distinctive character is normal.
As regards the ‘S that appears behind the element ‘Cheri’ in the contested sign, it may be perceived, by a part of the public, in particular the public with some knowledge of English, as the English possessive form for the noun/adjective it succeeds. In view of its grammatical role, it will be seen as conceptually subordinate to the word ‘Cheri’. For the remaining part of the public with no knowledge of English, the element ‘S has no particular meaning but is likely to be recognised as a grammatical addition because of the apostrophe, which is often used a grammatical marker, including in the French language. Furthermore, as the element ‘S is often used nowadays in the names of food and drink establishments (for example, McDonald’s, Tiffany’s, Murphy’s pub, Angela’s bakery, etc.), it is very likely to be seen as a not particularly strong element in terms of identifying a particular trade origin even by non-English speakers.
The element ‘FM’ included in the earlier mark stands for a method of radio broadcasting using frequency modulation (FM) technology. Bearing in mind the nature of the relevant services (‘entertainment’), this element is non-distinctive, as it indicates that the services are (related to) radio entertainment. Similarly, the element ‘cafe’ included in the contested sign will be associated with an establishment where coffee is consumed. Bearing in mind the nature of the relevant services, this element is non-distinctive, as it indicates their type or the place where these may be rendered. Therefore, the relevant public will not pay as much attention to these non-distinctive elements in the signs as to the other more distinctive element(s) of the marks.
Furthermore, as regards the distinctive elements of the signs, it should be borne in mind that the figurative elements in the earlier mark, such as the black square and the white underlining, are purely decorative features, as they are very commonplace and banal and their impact in the earlier mark is very limited. In addition, as regards the other figurative elements of the earlier mark (such as, colours and font of the letters), account must be taken that when signs consist of both verbal and figurative components, 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).
The contested mark, being a word mark, has no elements that could be considered more dominant (visually eye-catching) than other elements. As regards the earlier mark, it has no element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘Cheri-’ that represents nearly the entirety of the distinctive verbal element ‘Chérie’ of the earlier mark and the entirety of the initial and distinctive verbal element of the contested sign. The signs differ in the last letter ‘e’ and in the accent on the letter ‘é’ of the word ‘Chérie’ of the earlier mark, the element FM’ as well as in the additional figurative elements in the earlier mark, and, in the sequence ‘’S CAFÉ’ in the contested sign. However, as mentioned, the figurative elements in the earlier mark are less distinctive and/or less important in terms of their ability to catch consumer’s attention. Also, the differences in the verbal elements ‘FM’ and ‘CAFE’ are of reduced impact, as they are non-distinctive.
In addition, account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the signs.
Therefore, taking into account that the most important and distinctive verbal element of the earlier mark is nearly fully included in the beginning of the contested sign, but also the mentioned differences between the signs and their respective weight, it is considered that they are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of their initial and most distinctive verbal elements ‘Chérie’ and ‘Cheri’, as the final letter ‘e’ in the earlier sign is not pronounced in French. The pronunciation differs in the sound of the non-distinctive elements ‘FM’ and ‘CAFE’ in the signs as well as in the sound of the ‘S’ appearing after the apostrophe of the contested sign. As the pronunciation of the signs coincides in full in their initial and distinctive elements and differs only in the sound of the letter ‘S’ in the contested sign and in the sound of non-distinctive words with reduced impact, the signs are aurally similar to a higher than average degree.
Conceptually, as indicated above, the distinctive elements ‘Chérie’ and ‘Cheri’ refer to the same concept albeit in female vs. male gender. The concepts of ‘FM’ and ‘CAFE’ differ but their conceptual impact is limited as these elements are non-distinctive. As regards the ‘S, it designates grammatical subordination or does not bring about a particular concept other than a letter. Therefore, it is considered that there is at least an average degree of conceptual similarity between the signs.
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 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested services are identical to the opponent’s services and they are directed at the public at large with an average degree of attention.
The earlier trade mark and the contested sign are visually similar to an average degree and aurally similar to a higher than average degree. Conceptually, the signs are similar to at least an average degree.
The similarities between the signs are found in their inherently distinctive initial element. The differences between them are mostly due to non-distinctive, subordinate elements or elements of lesser weight in terms of catching the consumer’s attention.
In the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier marks configured in a different way according to the type of services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of services designated by the trade mark applied for.
In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical services.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 622 753. It follows that the contested trade mark must be rejected for all the contested services.
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 extensive use/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 right FR No 1 622 753 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right 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 ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) 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
| Plamen IVANOV | Liliya YORDANOVA | Gueorgui IVANOV |
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.