OPPOSITION No B 2 671 330

Dunelm (Soft Furnishings) Limited, Watermead Business Park, Syston, Leicester LE7 1AD, United Kingdom (opponent), represented by HGF Limited, 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)

a g a i n s t

Caffe' Bonini S.R.L., Via Ippolito Rosellini, 10, 50127 Firenze, Italy (holder), represented by Ing. C. Corradini & C. S.R.L., Via Dante Alighieri, 4, 42121 Reggio Emilia, Italy (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 671 330 is partially upheld, namely for the following contested goods and services:

Class 29:         Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk derivative products; edible oils; salted meats; meat, preserved; corned beef; bacon; hams; sausages; prepared dishes consisting principally of meat, fish, vegetables or pulses; foods made from fish; corned fish; mousse (fish); preserved fish; salted fish; milk beverages, milk predominating; butter; buttercream; cheeses; milk shakes; milk; soya milk [milk substitute]; whipped cream; cream (dairy product); dairy products; yoghurts; preserved vegetables; jam; preserved pulses; fruit chips; frozen fruit; preserved fruit; cooked fruit; mushrooms preserved; fruit jellies; fruit pulp; preserved pulses; cooked pulses; dried pulses; fruit salad; salad vegetable; fruit-based snack foods; preserved mushrooms; mushrooms, prepared.

Class 30: Coffee, tea, cocoa and coffee substitutes; rice; flours and preparations made of cereals, bread, pastries and sweetmeats; chocolate pastry; chocolate cakes; chocolate confectionary; chocolate; chocolate powder; chocolate-based products; foodstuffs containing chocolate (as the main constituent); ice creams; sugar, honey; yeast, raising powder; vinegar, sauces (condiments); spices; sweet snacks and savory snacks; baked goods, confectionery, chocolate and desserts; bread; pastries, tarts, pies and biscuits; sweets (candy, candy bars and chewing gum; cereal bars and energy bars; sugar, natural sweeteners, sweet coatings and fillings, bee products; ice creams, frozen yogurts and sorbets; coffee, tea, chocolate and substitutes thereof; cereal seeds processed, baking preparations; dried and fresh pastas, tagliatelle and gnocchi; cereals; rice-based snack foods; cereal-based snack foods; sandwiches; filled bread rolls; coffee-based beverages; cocoa-based beverages; chocolate-based beverages; chocolate beverages with milk; cocoa beverages with milk; tea-based beverages; coffee-substitute based beverages; chocolate drinks; drinks flavoured with chocolate; chocolate-flavored beverages; drinks containing chocolate; chocolate-flavored beverages making preparations; chocolate drinks preparations; preparations for making beverages (chocolate-based).

Class 32:         Beers; mineral waters and carbonated water and other non-alcoholic beverages; fruit-based beverages and fruit juices; syrups and other preparations for making beverages; flavoured carbonated beverages; cocktails non-alcoholic.

Class 33: Alcoholic beverages (except beers); spirits; aperitifs; cocktails; liquors; wines.

Class 35:         Services for retail points of sale in the field of food; retail or wholesale services, provided- by retail stores through mail order catalogues, by means of electronic means, through web-sites, of food products in general.

Class 43:         Restaurant services (food); restaurants; bars; cafeterias; self-service restaurants; catering services; take-away food and drink services.

2.        International registration No 1 250 984 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 250 984. The opposition is based on European Union trade mark registration No 11 761 319 and United Kingdom trade mark registration No 3 007 906. 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:

1. EUTM No 11 761 319 for the word mark PAUSA

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; Bed and table covers.

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.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, ices; Honey, treacle; Yeast, baking-powder; ice.

2. UK trade mark No 3 007 906 for the word mark PAUSA

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

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk derivative products; edible oils; salted meats; meat, preserved; corned beef; bacon; hams; sausages; prepared dishes consisting principally of meat, fish, vegetables or pulses; foods made from fish; corned fish; mousse (fish); preserved fish; salted fish; milk beverages, milk predominating; butter; buttercream; cheeses; milk shakes; milk; soya milk [milk substitute]; whipped cream; cream (dairy product); dairy products; yoghurts; preserved vegetables; jam; preserved pulses; fruit chips; frozen fruit; preserved fruit; cooked fruit; mushrooms preserved; fruit jellies; fruit pulp; preserved pulses; cooked pulses; dried pulses; fruit salad; salad vegetable; fruit-based snack foods; preserved mushrooms; mushrooms, prepared.

Class 30: Coffee, tea, cocoa and coffee substitutes; rice; flours and preparations made of cereals, bread, pastries and sweetmeats; chocolate pastry; chocolate cakes; chocolate confectionary; chocolate; chocolate powder; chocolate-based products; foodstuffs containing chocolate (as the main constituent); ice creams; sugar, honey; yeast, raising powder; vinegar, sauces (condiments); spices; sweet snacks and savory snacks; baked goods, confectionery, chocolate and desserts; bread; pastries, tarts, pies and biscuits; sweets (candy, candy bars and chewing gum; cereal bars and energy bars; sugar, natural sweeteners, sweet coatings and fillings, bee products; ice creams, frozen yogurts and sorbets; coffee, tea, chocolate and substitutes thereof; cereal seeds processed, baking preparations; dried and fresh pastas, tagliatelle and gnocchi; cereals; rice-based snack foods; cereal-based snack foods; sandwiches; filled bread rolls; coffee-based beverages; cocoa-based beverages; chocolate-based beverages; chocolate beverages with milk; cocoa beverages with milk; tea-based beverages; coffee-substitute based beverages; chocolate drinks; drinks flavoured with chocolate; chocolate-flavored beverages; drinks containing chocolate; chocolate-flavored beverages making preparations; chocolate drinks preparations; preparations for making beverages (chocolate-based).

Class 32: Beers; mineral waters and carbonated water and other non-alcoholic beverages; fruit-based beverages and fruit juices; syrups and other preparations for making beverages; flavoured carbonated beverages; cocktails non-alcoholic. 

Class 33: Alcoholic beverages (except beers); spirits; aperitifs; cocktails; liquors; wines. 

Class 35: Advertising; business management; business administration; office functions; franchising namely providing consultancy and technical assistance for opening and/or managing restaurants, bars, cafeterias, snack bars; services for retail points of sale in the field of food and drink; retail or wholesale services, provided by retail stores through mail order catalogues, by means of electronic means, through web-sites, of food products in general, alcoholic beverages and non-alcoholic beverages.

Class 43:Restaurant services (food); restaurants; bars; cafeterias; self-service restaurants; catering services; take-away food and drink services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and 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 29

The contested fruit jellies are included in the broad category of the opponent’s jellies and are therefore identical.

The contested goods preserved pulses; fruit pulp; preserved pulses; cooked pulses; dried pulses; fruit chips; frozen fruit; mushrooms preserved; preserved mushrooms; mushrooms, prepared; fruit salad; salad vegetable are all included in or overlap with the broad category of the opponent’s Preserved, frozen, dried and cooked fruits and vegetables and are therefore identical.

The contested goods fruit-based snack foods are similar to the opponent’s Preserved, frozen, dried and cooked fruits and vegetables in Class 29 as they are foodstuffs that could be directly consumed or consumed after simple preparation. These goods can coincide in producer, end user and distribution channels.

The contested goods soya milk [milk substitute] are highly similar to the opponent’s milk products as they coincide in producer, end user, distribution channels are also in competition to each other.

The goods meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk are identically included in both lists of goods.

The contested dairy products are identical to the opponent’s milk products as they refer to the same goods.

The contested milk beverages, milk predominating; butter; buttercream; cheeses; milk shakes; whipped cream; cream (dairy product); yoghurts; milk derivative products are included in the broad category of the opponent’s milk products and are therefore identical.

The contested edible oils are similar to the opponent’s milk products, which include butter and as such have the same purpose. They can coincide in end user. Furthermore they are in competition.

The contested goods meat, preserved are included in the broad category of the opponent’s meat and are therefore identical.

The contested goods salted meats; corned beef; bacon; hams; sausages; prepared dishes consisting principally of meat, fish, vegetables or pulses; foods made from fish; corned fish; mousse (fish); preserved fish; salted fish are similar to the opponent’s meat, fish, poultry and game as they may coincide in producer, end user and are also in competition to each other.

Contested goods in Class 30

Coffee, tea, cocoa; rice; flours and preparations made of cereals, bread, pastries; confectionery, sugar, honey; yeast are identically included in both lists of goods (including synonyms). Some of these terms are enumerated twice in the list of the applicant.  

The contested ice creams; sorbets are included in the broad category of the opponent’s ices and are therefore identical.

The contested sweetmeats; chocolate pastry; chocolate cakes; chocolate confectionary; sweet snacks and savory snacks; baked goods are included in the broad category of the opponent’s pastry and confectionery and are therefore identical.

The contested raising powder refers to the same good as the opponent’s baking powder and is therefore identical.

The contested bee products include, as a broader category the opponent’s honey. 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 natural sweeteners include, as a broader category the opponent’s honey. 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 goods chocolate; chocolates; chocolate-based products; foodstuffs containing chocolate (as the main constituent); chocolate and desserts; tarts, pies and biscuits; sweets (candy, candy bars and chewing gum) are all included in or overlap with the opponent’s pastry and confectionery and are therefore identical. 

The contested goods coffee-based beverages are identical to the opponent’s goods coffee.

The contested goods cocoa-based beverages are identical to the opponent’s goods cocoa.

The contested goods sauces (condiments, which include also fruit sauces are highly similar to the opponent’s goods cooked fruits in Class 29 as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The earlier goods meat extracts in Class 29 are similar to the contested goods spices in Class 30 as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested cereal bars and energy bars are similar to the opponent’s confectionery as they can coincide in producer and end-user and may be in competition with each other (high calorie snacks).

The contested cereal seeds processed, baking preparations are included in the broad category of the opponent’s preparations made from cereals and are therefore identical.

The contested goods sweet coatings and fillings overlap with the opponent’s categories sugar and honey and are therefore identical.

The contested frozen yogurts are highly similar to the opponent’s milk products as they have the same purpose and nature. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested goods dried and fresh pastas; tagliatelle and gnocchi are lowly similar to the opponent’s goods rice as they can coincide in end user, distribution channels and method of use.

The contested goods chocolate-based beverages; chocolate beverages with milk; cocoa beverages with milk; chocolate drinks; drinks flavoured with chocolate; chocolate-flavored beverages; drinks containing chocolate; chocolate-flavored beverages making preparations; chocolate drinks preparations; preparations for making beverages (chocolate-based) are identical to the opponent’s goods cocoa.

The contested rice-based snack foods; cereal-based snack foods are included in the broad category of the opponent’s preparations made from cereals and are therefore identical.

The contested sandwiches; filled bread rolls are similar to the opponent’s bread as they have the same nature. They can coincide in producer, end user and distribution channels.

The contested tea-based beverages are identical to the opponent’s goods tea.

The contested goods cereals are similar to the opponent’s preparations made from cereals as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested goods coffee-substitute based beverages; coffee substitutes; substitutes thereof [coffee] are highly similar to the opponent’s goods coffee as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

The contested goods substitutes thereof [tea] are highly similar to the opponent’s goods tea as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

The contested goods substitutes thereof [chocolate] are highly similar to the opponent’s goods cocoa as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

The contested goods chocolate powder are highly similar to the opponent’s goods cocoa as they can coincide in producer, end user, distribution channels and method of use. Furthermore they are in competition.

The contested goods vinegar are lowly similar to the opponent’s goods meat extracts as they have the same purpose. They can coincide in end user and distribution channels.

Contested goods in Class 32

The contested goods other non-alcoholic beverages; flavoured carbonated beverages; cocktails non-alcoholic are similar to the opponent’ goods coffee as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested goods other preparations for making beverages are lowly similar to the opponent’ goods coffee as they can coincide in end user, distribution channels and method of use.

The remaining contested goods, namely beers; mineral waters and carbonated water and; fruit-based beverages and fruit juices; syrups are all lowly similar to the opponent’s services for providing food and drink in Class 43 as they can coincide in producer and distribution channels. Furthermore they are complementary.

Contested goods in Class 33

The contested goods alcoholic beverages (except beers); spirits; aperitifs; cocktails; liquors; wines are all lowly similar to the opponent’s services for providing food and drink in Class 43 as they can coincide in producer and distribution channels. Furthermore they are complementary.

Contested services in Class 35

The contested advertising; business management; business administration; office functions are dissimilar to all the opponent’s goods and services in Classes 21, 24, 29, 30 and 43. They do not share the same producer/provider, are directed at different consumers and are neither complementary nor in competition. This logic also applies to the further contested franchising services, namely providing consultancy and technical assistance for opening and/or managing restaurants, bars, cafeterias, snack bars; The opponent’s services in Class 43 include the provision of food and drinks which are directed at end consumers. Franchising services are directed at business consumers who wish to open their own restaurant and do not share any of the similarity criteria established above besides that every business person also from time to time will consume food and drinks from a restaurant. However, this is not enough to establish similarity between these services.

The contested services for retail points of sale in the field of food; retail or wholesale services, provided- by retail stores through mail order catalogues, by means of electronic means, through web-sites, of food products in general are lowly similar to the opponent’s foodstuff such as meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products in Class 29. This is because retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. This applies by analogy to all other means of sale such as wholesale, through mail order.

However, retail and wholesale services concerning other goods, which are not included in the list of goods of the opponent, namely services for retail points of sale in the field of drink; retail or wholesale services, provided- by retail stores through mail order catalogues, by means of electronic means, through web-sites, of alcoholic beverages and non-alcoholic beverages are considered dissimilar to all goods and services of the opponent.

Contested services in Class 43

The contested services restaurant services (food); restaurants; bars; cafeterias; self-service restaurants; catering services; take-away food and drink services are all included in the broad category of the opponent’s services for providing food and drink and are therefore identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large. The degree of attention is considered to vary from below average to average as many of the relevant goods in Classes 29, 30 and 32 are cheap mass consumption foodstuff. The degree of attention for the services in Class 43 is considered to be average.  

3. The signs

PAUSA
Earlier trade marks	Contested sign

The relevant territory is the European Union for mark No 1 and the United Kingdom for mark No 2.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom which also coincides with the relevant territory for mark No 2. Thus, the Opposition Division will focus, for the sake of economy of proceedings, its comparison of the signs on the United Kingdom.

The contested sign is a figurative mark consisting of a rather basic round label with  toothed-like rim in black with a thin white circle. It contains various elements: the verbal elements ‘PAUSA CAFFE’, written on top of the sign in relatively standard upper-case white letters; below, a cup of coffee with three lines indicating steam rising of the beverage on a white background.

The element ‘PAUSA’ included in both signs has no meaning for the relevant public and is, therefore, distinctive.

The element ‘CAFFE’’ of the contested sign will be associated with ‘1. A coffee-house, a cafe, or an informal restaurant; esp. one in Italy, or of Italian ownership. 2. (A drink of) coffee, esp. as served in Italian or Italian-style cafes and restaurants’ (see Oxford Online Dictionary). Bearing in mind that the relevant goods and services are foodstuffs, this element is non-distinctive for at least a part of these goods and services such as coffee, coffee based beverages and sweets, confectionery or pastry which could contain coffee in Class 30, beverages in Classes 32 and 33 which also could contain coffee, the retail of coffee in Class 35 and the provision of drinks and food in Class 43 as a place which sells food normally also sells coffee. The apostrophe at the end of the word ‘CAFFE’ will either not be noticed or is considered to be non-distinctive.

The representation of a coffee cup in the contested sign will be associated with such. Bearing in mind that the relevant goods and services are foodstuffs, this element is non-distinctive for at least a part of these goods and services such as coffee and coffee based beverages in Class 30, beverages in Classes 32 and 33 which could contain coffee, the retail of coffee in Class 35 and the provision of drinks and food in Class 43 as a place which sells food normally also sells coffee.

As regards the contested sign, it is composed of a distinctive verbal element (PAUSA) and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

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

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).

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.

Visually, the signs coincide in ‘PAUSA’. However, they differ in the second verbal element ‘CAFFE’´ in the contested sign which is considered to be non-distinctive for a substantial part of the relevant goods and services. They also differ in the figurative elements of the contested sign, notably in the representation of a cup of coffee, which is also considered to be non-distinctive for a substantial part of the relevant goods and services. The additional word and figurative elements give to the contested sign a certain visual difference, yet, since these elements are non-distinctive in connection with substantial part of the relevant goods, they have a minimal impact in differentiating the signs.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PAUSA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CAFFE’ of the contested mark, which have no counterpart in the earlier sign. This verbal element remains to be non-distinctive for a substantial part of the relevant goods and services.

Therefore, the signs are highly similar.

Conceptually, the earlier sign has no meaning for the public in the relevant territory. In the contested sign the verbal element ‘CAFFE’´ as well as the cup of coffee will be associated with the meanings explained above, which are however considered non-distinctive for a substantial part of the relevant goods and services. To that extent, the signs are conceptually not 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 mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks 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 and 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.

5. Global assessment, other arguments and conclusion

The goods and services are partially identical, partially similar (to various degrees) and partially dissimilar. The similarities between the signs have been duly established in the previous sections.

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).

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.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion exists, as the coinciding element plays an independent distinctive role in both signs and the differences between the signs are confined to non-distinctive or secondary elements and aspects.

The Opposition Division notes, that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.

Since the component ‘PAUSA’ will be easily recognised and perceived in both signs and because of the said meaning of the remaining word components in the contested sign, the Opposition Division finds that it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘PAUSA’. In support of its argument the holder refers to several trade mark registrations in Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, EU trade marks, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden and the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include “PAUSA”, especially taking into account that the vast majority of these marks contain other verbal or figurative elements. Under these circumstances, the holder’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union and United Kingdom trade mark registrations. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. This likelihood of confusion also applies in relation to the goods and services found to be only lowly similar as the signs are aurally highly similar and the differences lie mostly in non-distinctive (for a substantial part of the relevant goods and services) verbal or figurative elements. Moreover, as previously mentioned the Opposition Division finds that the relevant consumer may perceive the contested sign as a variation of the earlier mark. Hence, the public may attribute the same (or economically linked) commercial origin also to the goods and services that are similar to a low degree.  

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Lars HELBERT

Sigrid DICKMANNS

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.