OPPOSITION No B 2 693 763

Chantré & Cie. GmbH, Matheus-Müller-Platz 1, 65343 Eltville, Germany (opponent), represented by Lucia Schwab, Rotkäppchen-Mumm Sektkellereien GmbH, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Pabloso, 7 bis, boulevard de Courtais, 03100 Montluçon, France (applicant), represented by Jean-Baptiste Gouache, 4, rue Dufrénoy, 75116 Paris, France (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 763 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 goods and services of European Union trade mark application No 15 188 725 , namely against all the goods and services in Classes 30, 32, 33 and 43. The opposition is based on German trade mark registrations No 30 2015 057 135 and No 30 2013 059 583 and European Union trade mark registration No 123 786. 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 goods and services

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

German trade mark registration No 30 2015 057 135 (earlier mark (1))

Class 32:        Beers; mineral waters; aerated waters; non-alcoholic beverages; de-alcoholised beverages; fruit drinks; fruit juices; syrups for making beverages; preparations for making beverages.

Class 33:        Alcoholic beverages (except beers).

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

German trade mark registration No 30 2013 059 583 (earlier mark (2))

Class 30:        Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; Flours; preparations made from cereals; bread; pastry; confectionery; filled and unfilled chocolates; chocolate products (not included in other classes); candies; fruit gum; chewing gum (except for medical purposes); sweets; ices; honey; treacle; yeast; baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice for refreshment.

Class 32:        Beers; mineral waters; aerated waters; non-alcoholic beverages; de-alcoholised beverages; fruit drinks; fruit juices; syrups for making beverages; preparations for making beverages.

Class 33:        Alcoholic beverages (except beers).

European Union trade mark registration No 123 786 (earlier mark (3))

Class 33:         Spirits.

The contested goods and services are the following:

Class 30:        Cookies; coffee-based beverages; cocoa-based beverages; drinking chocolate; tea-based beverages; sweetmeats [candy]; buns; cocoa; cocoa beverages with milk; coffee; coffee beverages with milk; caramels; chocolate; milk chocolates; confectionery; confectionery; almond confectionery; peanut confectionery; ice cream; pancakes; mousses (dessert -) [confectionery]; cakes; rice cakes; waffles; waffles; royal jelly; edible ices; infusions, not medicinal; macaroons [pastry]; marzipan; honey; gingerbread; almond paste; pastries; petits fours [cakes]; petit-beurre biscuits; pralines; liquorice [confectionery]; sherbets [ices]; sugar; cake decorations made of candy; tarts; tea; iced tea; vanilla [flavoring] [flavouring]; vanillin [vanilla substitute]; yoghurt (frozen -) [confectionery ices]; meringues; nougat; almond pastries; madeleines; marshmallows.

Class 32:        Fruit juice beverages (non-alcoholic -); preparations for making beverages; non-alcoholic beverages; smoothies; smoothies; waters [beverages]; mineral water [beverages]; aerated water; essences for making beverages; juices; lemonades; fruit nectars, non-alcoholic; syrups for beverages; soda water.

Class 33:        Alcoholic beverages (except beer); fruit (alcoholic beverages containing -); cider; wine; spirits [beverages]; digesters [liqueurs and spirits].

Class 43:        Services for providing food and drink; catering; tea rooms; bar services; coffee bar services; self-service restaurants; cafeterias; food preparation services; takeaway services; services for the preparation of food and drink.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks.

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 found to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

MARIA CRON Earlier mark (1) Earlier mark (2) Mariacron Earlier mark (3)
Earlier trade marks	Contested sign

The relevant territories are Germany for earlier marks (1) and (2) and the European Union for earlier mark (3).

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).

Earlier marks (1) and (3) are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are depicted in lower or upper case or in a combination thereof.

The word ‘MARIA’, present in earlier mark (1), will be understood in Germany as a female given name. Although ‘CRON’ is not a common surname, it will be perceived as such because it is preceded by ‘MARIA’. Therefore, the word combination will be perceived as the given name and surname of a person, which is distinctive to an average degree for the relevant goods and services.

Earlier mark (2) is a figurative mark composed of the verbal element ‘Mariacron’ in standard red letters on a very light grey background, which is almost imperceptible. Although the sign is composed of a single verbal element that has no meaning as a whole, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will most probably identify and understand the name ‘MARIA’ as explained above and will therefore perceive the element ‘Mariacron’ as formed of the given name and surname of a person, and thus as distinctive to an average degree for the relevant goods. In addition, it cannot be completely excluded that a part of the relevant public might associate the element ‘Mariacron’ with the name of an abbey in Germany, as pointed out by the applicant, and, in this case, it would be distinctive. The same reasoning applies to the perception of earlier mark (3).

The contested sign is a figurative mark consisting of the verbal elements ‘LE MONDE DU MACARON’ in a slightly stylised pink typeface with the conjunction ‘DU’ in lower case letters and a figurative element depicting a pink and grey badge containing a pink letter ‘M’ at the beginning of the sign. There is no element that could be considered clearly more dominant (visually eye-catching) than others.

The figurative element of the contested sign, namely the depiction of a pink badge containing the letter ‘M’, has a secondary impact within the sign. 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 French words ‘LE MONDE DU’ will be perceived by part of the relevant public (e.g. the German-, Italian-, Portuguese- and Spanish-speaking parts of the public) as ‘the world of’. This expression will be understood as ‘something that relates to a particular sphere of activity’ and it can be used in trade to refer to commercial establishments and firms. Therefore, the distinctiveness of this element is weak in relation to the relevant goods and services.

The word ‘MACARON’ will be perceived by part of the public as the traditional French pastry, namely a ‘small round pastry in which almonds and sugar are the main ingredients’. Therefore, for some of the relevant goods in Class 30 (such as macaroons [pastry]; marzipan; honey; gingerbread; almond paste; pastries), it is descriptive, while for others, such as alcoholic beverages in Class 33, it is of normal distinctiveness.

It cannot be excluded that at least part of the public will understand the expression ‘LE MONDE DU’ as explained above but will not associate any meaning with the word ‘MACARON’. Therefore, for this part of the public, the element ‘MACARON’ will be the most distinctive element in the sign.

Another part of the public will not perceive any meaning in the verbal elements in the contested sign (e.g. the Bulgarian-, Czech- and Lithuanian-speaking parts of the public); therefore, the distinctiveness of these elements will be average for this part of the public.

Considering the possible perceptions of the contested mark as indicated above, the Opposition Division finds it appropriate to first examine the opposition in relation to the German-, Italian-, Portuguese- and Spanish-speaking parts of the public, which will understand the verbal elements ‘LE MONDE DU’ and for which the element ‘MACARON’ is meaningless. This part of the relevant public would be more likely to confuse the signs due to the weak character of the verbal element ‘LE MONDE DU’, not present in the earlier marks, and the normal degree of distinctiveness of the element ‘MACARON’.

Visually, the earlier marks and the contested sign are similar to the extent that they coincide in the sequence of letters ‘MA**A*RON’. However, they differ in all other elements, namely the figurative element of the contested sign and the three verbal elements in stylised pink letters at the beginning of that sign, ‘LE MONDE DU’. Furthermore, earlier mark (1) has a blank space between the elements ‘MARIA’ and ‘CRON’ and earlier mark (2) also differs in the very light grey background, if it is perceived, and the red typeface. Therefore, the signs have very different structures and lengths, that is, the contested sign is formed of an expression containing four word elements (sixteen letters in total) preceded by a figurative element, whereas the earlier marks contain one or two elements (nine letters in total).

Therefore, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier marks and the contested sign coincides in the sound of the letters ‘MA**A*RON’. However, whereas the earlier marks will be pronounced in four syllables, /MA-RI-A-CRON/, the word ‘MACARON’ of the contested sign will be pronounced in three syllables, /MA-CA-RON/. The second syllable of the that element, namely /CA/, will create a clearly perceptible aural difference compared with /RI-A/. In the same vein, the syllable /CRON/, at the end of the earlier marks, will also create a perceptible aural difference compared with /RON/.

Furthermore, the pronunciation differs in the sound of the words ‘LE MONDE DU’, present at the beginning of the contested sign. Even considering the weight attributed to these elements, as explained above, they will still be pronounced by the relevant consumers. Therefore, the earlier marks will be pronounced in four syllables and the contested sign in seven syllables.

Consequently, the signs have completely different structures, rhythms and intonations.

Considering all the above, the signs are aurally similar to a very low degree.

Conceptually, reference is made to previous assertions concerning the semantic content conveyed by the marks to the relevant public. As explained above, the earlier marks will be perceived as the given name and surname of a woman and the contested sign as a commercial establishment or firm specified by the meaningless word ‘MACARON’. Even considering the weak character of ‘LE MONDE DU’, this element plays a role in the conceptual interpretation of the relevant public.

Consequently, the conflicting signs are not conceptually similar.

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 marks

The distinctiveness of the earlier marks 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 ‘Mariacron’ 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’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and/or services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are assumed to be identical to the opponent’s goods and services and they target the public at a large with an average degree of attention. The earlier marks have an enhanced degree of distinctiveness. The signs are visually and aurally similar to a very low degree and not conceptually similar. The earlier marks will most likely be perceived as formed of a given name, ‘MARIA’, and a surname, ‘CRON’, whereas the element ‘MACARON’ of the contested sign is meaningless. Furthermore, the differing word and figurative elements in the signs are clearly perceptible and are sufficient to exclude any likelihood of confusion between the marks. In particular, the different structures of the conflicting marks and the additional elements at the beginning of the contested sign (even though ‘LE MONDE DU’ will be perceived as weak by a part of the public) would contribute to the ability of the relevant public to safely distinguish between the signs.

For the sake of completeness, this absence of likelihood of confusion applies equally to the part of the public for which the verbal element ‘LE MONDE DU’ is meaningless and therefore distinctive. This is because, as a result of the distinctiveness of that element, that part of the public will perceive the signs as being even less similar.

The opponent refers to previous case-law to support its arguments regarding the comparison of the signs. The previous cases referred to by the opponent are not relevant to the present proceedings. In all the cases, the signs under comparison are either the same length or similar lengths and they consist of, or contain, similar meaningful words. Therefore, the cases cited by the opponent are not considered comparable to the present case, where the meaningful weak element of the contested sign, ‘LE MONDE DU’, is not present in the earlier marks, and the signs are conceptually not similar. Therefore, the opponent’s argument must be set aside.

Considering all the above, even assuming that the goods and services are identical and the earlier marks enjoy enhanced distinctiveness, there is no likelihood of confusion on the part of the public. Therefore, the opposition 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

Marta GARCÍA COLLADO

Jorge ZARAGOZA GOMEZ

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.