OPPOSITION No B 2 739 061

Christian Adelius, Großgörschenstr. 2, 10827 Berlin, Germany (opponent), represented by Werdermann von Rüden Partnerschaft von Rechtsanwälten Leipziger Platz 9, 10117 Berlin, Germany (professional representative)

a g a i n s t

Richard Michael Newby, C/ Gran Vía 57,10 G1, 28009 Madrid, Spain (applicant), represented by José Miguel García Viejo, Calle Alcalá 157, 2ºe, 28009 Madrid, Spain (professional representative).

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 739 061 is upheld for all the contested services.

2.        European Union trade mark application No 14 805 667 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 805 667. The opposition is based on German trade mark registration No 30 2013 002 465. The opponent invoked Article 8(1)(a) and (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 services

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

Class 43: Services for providing food and drink in restaurants.

The contested services are the following:

Class 43: Hotel restaurant services; Restaurants; Take-out restaurant services; Serving food and drink in restaurants and bars; Catering; Mobile catering services; Outside catering services; Mobile restaurant services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested hotel restaurant services; restaurants; take-out restaurant services; serving food and drink in restaurants and bars; catering; mobile catering services; outside catering services; mobile restaurant services are at least similar to a high degree to the opponent’s services for providing food and drink in restaurants. These services have the same purpose and the same method of use. They are provided by the same undertakings and target the same relevant public. Moreover, some might be in competition.

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 services found to be at least similar to a high degree are directed at the public at large. The degree of attention is average.

3. The signs

Tuk-Tuk
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 the word mark ‘Tuk-Tuk’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof. The two word elements ‘Tuk’ separated by a hyphen are meaningless for the German-speaking public taken together and also respectively. It is worth noting that the hyphen, which is a common punctuation mark will have little or no impact on the consumer.

The contested sign is a figurative mark composed of the word element ‘tuktuk’ in slightly stylised bold red lower case letters and underneath it, the verbal elements ‘ASIAN STREET FOOD’ in significantly smaller white upper case letters. Next to the word element ‘tuktuk’ on the right side, two stylised white chopsticks are visible, holding a white rounded object. The above elements are placed on a black rectangular background.

As to the aforementioned figurative 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).

The first and central word element ‘tuktuk’ in the contested sign has no meaning in German.

The word ‘ASIAN’ is an English term used to refer to Asian origins. The English expression ‘STREET FOOD’ consists of the basic English words ‘street’ (meaning ‘road, way, path’) and ‘food’ (meaning ‘nourishment’), and refers to food that is purchased from a street vendor and typically eaten immediately, often while standing; a food of this type (information extracted from the Oxford English Dictionary online on 01/06/2017 at http://www.oed.com/view/Entry/191431?redirectedFrom=
street+food#eid124222872). As such, the expression refers to food of an Asian origin that is bought on the street.

German consumers have at least some English knowledge, enough to understand basic English terms, such as those referred to herein. In addition, German consumers are accustomed to using English expressions regularly. This happens with the English terms referred to above. Germans have adopted and use the expression ‘Asian’ for referring to Asiatic-style food, and the term ‘street food’ for referring to the kind of food sold and consumed on the street. Accordingly, the words ‘ASIAN STREET FOOD’ will be understood by German consumers as having the concepts mentioned above, rendering the terms non-distinctive in relation to the relevant services in Class 43.

The chopstick device holding a small rounded object is a clear and internationally recognisable reference to Asian food also, as food is typically consumed with chopsticks in a significant part of Asia. This figurative element within the contested sign is therefore non-distinctive regarding the services at issue.

It follows that the word element ‘tuktuk’ is the most distinctive element of the contested sign. The slight stylisation of this word element does not alter the form of its letters in striking or unusual way.

The word element ‘tuktuk’ is also the dominant element of the contested mark, due to its much bigger size and eye-catching vivid colour. These findings are further supported by the fact that consumers generally tend to focus on the beginning of a sign (the top) when they encounter a trade mark. The other word elements within the mark are placed underneath the dominant word element ‘tuktuk’, and are smaller and less visible, therefore they are considered secondary. The same applies for the chopstick device, which only appears after the word element ‘tuktuk’ on its left side.

Visually, the signs almost identically coincide in the distinctive word ‘tuktuk’, which is the first verbal element in both marks and will primarily attract the attention of the relevant public.

However, they differ in the hyphen present in the earlier mark, the figurative elements and the additional verbal elements in the contested sign, and the stylization of the latter as described above. The differing elements will nevertheless have a limited impact on the relevant public, as they are, are non-distinctive or secondary as mentioned above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛tuktuk’, present in both signs. The pronunciation differs in the sounds of the non-distinctive verbal elements, ‘ASIAN STREET FOOD’, in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of a part of the contested sign as explained above, the other part of the contested sign and the earlier mark as a whole have no meaning in that territory. Since one of the signs will not be associated with any meaning, the 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 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 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This is particularly relevant in the present case, as the conflicting services are at least similar to a high degree.

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and the level of attention is average.

The signs are visually and aurally similar to an average degree. The differences between the signs have only a limited impact on the relevant consumers, as the different elements are non-distinctive or secondary. The relevant public will be more likely to focus on the verbal element of the marks, namely the distinctive and almost completely identical word element ‘tuk(-)tuk’, as those will be used to refer to it.

Consequently, even if average consumers are capable of detecting certain differences between the two conflicting signs, the likelihood that they might associate the signs with each other is real.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. Indeed, due to the element that the signs contain almost identically, ‘tuk(-)tuk’, which plays a distinctive and independent role in both marks, 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 services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, it is conceivable that the targeted public may regard the services designated by the trade mark applied for as belonging to two ranges of services coming, nonetheless, from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2013 002 465. It follows that the contested trade mark must be rejected for all the contested services.

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(1)(a) 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

Vanessa PAGE

Alexandra APOSTOLAKIS

Martin EBERL

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.