OPPOSITION No B 2 665 316

Postal Ilustrado – Eventos, Lda., Rua das Abóbodas 13, 3º. A, 2790-506 Queijas, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Laura Weisser, Falkenried 23, 20251 Hamburg, Germany (applicant), represented by Roever Broenner Susat Mazars Rechtsanwaltsgesellschaft MBH, Domstraße 15, 20095 Hamburg, Germany (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 316 is partially upheld, namely for the following contested goods and services:

Class 9:        Electronic publications (downloadable); recorded, optical, electronic and magnetic data media for reproducing images, sound or information, and recorded compact discs, CD-ROMs and DVDs; the aforesaid goods for the cooking and catering sector.

Class 16:        Printed matter, namely books, magazines (periodicals) and brochures featuring gastronomic content; packaging containers of paper and cardboard; bags of paper and plastic for packaging; photographs, in particular in the field of cooking and gastronomy; instructional and teaching material (except apparatus), in particular for instruction in the field of cooking and gastronomy; plastic materials for packaging, included in class 16; paper, cardboard and goods made from these materials, for decorative purposes (included in class 16).

Class 21:        Household and kitchen utensils and containers (included in class 21); glassware, porcelain and earthenware included in class 21; vases; ice buckets; champagne buckets; tableware, other than knives, forks and spoons, including of precious metal; bottles, including plastic bottles; candlesticks; napkin rings (included in class 21).

Class 25:        Clothing; headgear; footwear; shirts; Tee-shirts; printed t-shirts; caps [headwear]; sun visors [headwear]; shorts; trunks; aprons [clothing]; footwear; hooded pullovers; hooded pullovers; hooded sweatshirts; hoods [clothing].

Class 29:        Meat, meat products and charcuterie, fish, poultry and game; stock made from meat, fish, poultry, game and vegetables; meat extracts; preserved, dried and cooked fruits and vegetables; jellies (included in class 29); Jelly (included in class 29); jams; marmalade; preserves (included in class 29); soups, preparation for making soups; prepared dishes containing meat, fish, poultry or game as the main ingredient; shellfish (not live); nibbles and small snacks consisting primarily of meat, fish, poultry, game, fruits or vegetables, included in class 29; desserts made from yoghurt, cream and curd.

Class 30:        Coffee, tea, artificial coffee; preparations made from cereals (included in class 30); bread, pastry, confectionery; edible ices; coffee, tea, cocoa and chocolate drinks; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages; prepared (or cooked dishes) based on pasta; pasties made from meat, fish, poultry, game and vegetables; nibbles and small snacks consisting primarily of cereals; blancmanges; cocoa beverages with milk, chocolate beverages with milk and coffee beverages with milk.

Class 32:        Beer, mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages; whey beverages.

Class 33:        Alcoholic beverages (other than beer), wines, spirits and liqueurs; sparkling wine, including champagne; alcoholic mixed milk beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine; alcoholic beverages for preparing food; preparations for making alcoholic beverages.

Class 41:        Organisation and conducting of sporting and cultural events; instruction and providing of training in the field of cooking and gastronomy; conducting cookery seminars and cookery courses; publication of printed matter (other than for advertising purposes), and publication and dissemination of recipes; providing of electronic publications (not downloadable) featuring gastronomic content; film and video film production and production of television and radio programmes featuring gastronomic content.

Class 43:        Providing food and drink; party services, namely preparation of food and beverages; catering for the provision of food and beverages.

2.        European Union trade mark application No 14 597 694 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 597 694. The opposition is based on Portuguese trade mark registration No 538 317. 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:

Class 14:        Horological instruments.

Class 16:        Stationery articles.

Class 21:        Chinaware, glassware.        

Class 25:        Clothing; footwear; headgear.

Class 41:        Education; training; entertainment; sporting and cultural activities; organisation of cultural and sporting events; organisation of cultural events, in particular food events and a festival aimed at bringing together the best chefs.

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

The contested goods and services are the following:

Class 9:        Electronic publications (downloadable); recorded, optical, electronic and magnetic data media for reproducing images, sound or information, and recorded compact discs, CD-ROMs and DVDs; the aforesaid goods for the cooking and catering sector.

Class 16:        Printed matter, namely books, magazines (periodicals) and brochures featuring gastronomic content; paper napkins, packaging containers of paper and cardboard; bags of paper and plastic for packaging; towels of paper and tablecloths of paper; photographs, in particular in the field of cooking and gastronomy; instructional and teaching material (except apparatus), in particular for instruction in the field of cooking and gastronomy; plastic materials for packaging, included in class 16; paper, cardboard and goods made from these materials, for decorative purposes (included in class 16).

Class 21:        Household and kitchen utensils and containers (included in class 21); small hand implements (hand-operated) for household and kitchen use (included in class 21); hand-operated kitchen utensils for chopping, grinding and pressing; glassware, porcelain and earthenware included in class 21; vases; ice buckets; champagne buckets; tableware, other than knives, forks and spoons, including of precious metal; sponges and articles for cleaning purposes, paper plates, bottles, including plastic bottles; candlesticks; napkin rings (included in class 21); tea towels of paper.

Class 24:        Household linen, table linen, tablemats, napkins (all included in class 24); textiles and textile goods (included in class 24) for decorative purposes.

Class 25:        Clothing; headgear; footwear; shirts; Tee-shirts; printed t-shirts; caps [headwear]; sun visors [headwear]; shorts; trunks; aprons [clothing]; footwear; hooded pullovers; hooded pullovers; hooded sweatshirts; hoods [clothing].

Class 29:        Meat, meat products and charcuterie, fish, poultry and game; stock made from meat, fish, poultry, game and vegetables; meat extracts; preserved, dried and cooked fruits and vegetables; jellies (included in class 29); Jelly (included in class 29); jams; marmalade; eggs, milk and milk products (included in class 29); edible oils and fats; preserves (included in class 29); soups, preparation for making soups; prepared dishes containing meat, fish, poultry or game as the main ingredient; shellfish (not live); mixed milk beverages (milk predominating); desserts made from yoghurt, cream and curd; nibbles and small snacks consisting primarily of meat, fish, poultry, game, fruits or vegetables, included in class 29.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals (included in class 30); bread, pastry, confectionery; edible ices; honey, molasses for food, syrup, yeast, baking-powder; salt (included in class 30); mustard; vinegar; sauces (condiments) and salad dressings; spices; ice; coffee, tea, cocoa and chocolate drinks; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages; prepared (or cooked dishes) based on pasta; pasties made from meat, fish, poultry, game and vegetables; nibbles and small snacks consisting primarily of cereals; blancmanges; cocoa beverages with milk, chocolate beverages with milk and coffee beverages with milk.

Class 32:        Beer, mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages; whey beverages.

Class 33:        Alcoholic beverages (other than beer), wines, spirits and liqueurs; sparkling wine, including champagne; alcoholic mixed milk beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine; alcoholic beverages for preparing food; preparations for making alcoholic beverages.

Class 41:        Organisation and conducting of sporting and cultural events; instruction and providing of training in the field of cooking and gastronomy; conducting cookery seminars and cookery courses; publication of printed matter (other than for advertising purposes), and publication and dissemination of recipes; providing of electronic publications (not downloadable) featuring gastronomic content; film and video film production and production of television and radio programmes featuring gastronomic content.

Class 43:        Providing food and drink; party services, namely preparation of food and beverages; catering for the provision of food and beverages.

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 terms ‘in particular’ and ‘including’, used in the both lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’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.

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 9

The contested electronic publications (downloadable); recorded, optical, electronic and magnetic data media for reproducing images, sound or information, and recorded compact discs, CD-ROMs and DVDs; the aforesaid goods for the cooking and catering sector are all goods with a specific content and not simple blank media. This distinction also comports with the reality of the marketplace where blank recording media and media that contain recorded data are very distinct products. For example, the difference between the market for blank recordable CDs and that for CDs pre-recorded with music is vast. In the latter the subject matter recorded on the CD determines the fundamental characteristic of the product. The consumer is, in essence, purchasing the recorded data. Consumers looking for a CD of their favourite band would not buy a blank CD instead or another music CD. The recorded data characterises the product and the maker of the medium (CD) is irrelevant. It would be wrong to ignore this and to have a situation where a term covers both blank and recorded media; the difference between the two is too significant.  These goods can be also goods used in teaching, and therefore they can be essential and thus complementary to the opponent’s education in Class 41. These materials can be issued by the same undertaking; they share the same public and distribution channels. These goods are similar to the services in question.

Contested goods in Class 16

The contested paper, cardboard and goods made from these materials, for decorative purposes (included in class 16) overlap with the opponent’s stationery articles in Class 16. Thus, these goods are identical.

The contested printed matter, namely books, magazines (periodicals) and brochures featuring gastronomic content; instructional and teaching material (except apparatus), in particular for instruction in the field of cooking and gastronomy; photographs, in particular in the field of cooking and gastronomy are also essential and thus complementary to the opponent’s education in Class 41. Generally the materials share the same public and distribution channels. These goods are similar to the aforementioned opponent’s services.

The contested packaging containers of paper and cardboard; bags of paper and plastic for packaging; plastic materials for packaging, included in class 16 and the opponent’s stationery articles also in Class 16 have different intended purpose, method of use and origin. Neither are they complementary or in competition. However, these goods share the same relevant public and can be distributed through the same channels. Thus, they are deemed to be similar to a low degree.

The rest of the contested goods in Class 16, namely paper napkins; towels of paper and tablecloths of paper have nothing relevant in common with any of the opponent’s goods and services in Classes 14, 16, 21, 25, 41 and 43. These contested goods are disposable paper goods. Entirely different by nature and intended purpose, these goods and services do not originate from the same undertakings and do not move through the same distribution channels. They are neither complementary nor in competition. Therefore, the contested paper napkins; towels of paper and tablecloths of paper are dissimilar to all the opponent’s goods and services.

Contested goods in Class 21

The contested glassware included in class 21 are also covered by the earlier trade mark. Thus, these goods are identical.

The contested vases; tableware, other than knives, forks and spoons, including of precious metal overlap with the opponent’s chinaware in Class 21. It follows that these goods are identical.

The contested household and kitchen utensils and containers (included in class 21); bottles, including plastic bottles; candlesticks; ice buckets; champagne buckets; napkin rings (included in class 21) overlap with the opponent’s glassware. These goods are therefore identical.

The contested porcelain included in class 21 are synonyms of the opponent’s chinaware in Class 21. Thus, these goods are identical.

The contested earthenware included in class 21 are strictly related to the opponent’s chinaware in Class 21. All of these goods are articles made of hard substances made by heating clay. Nature, intended purpose, origin, distribution channels and relevant public of these goods can be the same. Furthermore, these goods can be in competition. Thus, they must be considered highly similar.

The contested sponges and articles for cleaning purposes; small hand implements (hand-operated) for household and kitchen use (included in class 21); hand-operated kitchen utensils for chopping, grinding and pressing; paper plates, tea towels of paper are clearly of a different nature and have a different intended purpose compared to the earlier goods and services. Furthermore, they are not in competition with each other or complementary to each other. Consequently, they are considered to be dissimilar.

Contested goods in Class 24

The contested household linen, table linen, tablemats, napkins (all included in class 24); textiles and textile goods (included in class 24) for decorative purposes are not related to any of the goods and services in Classes 14, 16, 21, 25, 41 and 43 covered by the earlier trade mark. The main point of contact between the various contested textile goods and substitutes for textile goods in Class 24 and the opponent’s goods and services is especially to be found in relation to the opponent’s goods in Class 25, and is that they are made of textile material or their substitutes. However, this is not enough to justify a finding of similarity. These goods in Classes 25, but also all the remaining opponent’s goods and services, serve completely different purposes: the opponent’s goods are meant, inter alia, to be worn by people, for protection and/or fashion, whereas the contested goods in Class 24 are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, the contested household linen, table linen, tablemats, napkins (all included in class 24); textiles and textile goods (included in class 24) for decorative purposes are considered dissimilar to the opponent’s goods and services in Classes 14, 16, 21, 25, 41 and 43.

Contested goods in Class 25 

The contested clothing; headgear; footwear [repeated twice] are also covered by the earlier trade mark. Thus, these goods are identical.

The contested shirts; Tee-shirts; printed t-shirts; shorts; trunks; aprons [clothing]; hooded pullovers [repeated twice]; hooded sweatshirts; hoods [clothing] are included in the broad category of the opponent’s clothing in Class 25. Therefore, these goods are identical.

The contested caps [headwear]; sun visors [headwear] are included in the broad category of the opponent’s headgear in Class 25. Therefore, these goods are identical.

Contested goods in Class 29

The contested meat, meat products and charcuterie, fish, poultry and game; stock made from meat, fish, poultry, game and vegetables; meat extracts; preserved, dried and cooked fruits and vegetables; preserves (included in class 29); jellies (included in class 29); jelly (included in class 29); jams; marmalade; soups, preparation for making soups; prepared dishes containing meat, fish, poultry or game as the main ingredient; shellfish (not live); nibbles and small snacks consisting primarily of meat, fish, poultry, game, fruits or vegetables, included in class 29; desserts made from yoghurt, cream and curd are complementary to the opponent’s services for providing food and drink, as these goods are often necessary elements on menus in restaurants, bars and cafes. Numerous business models not only provide for the sale of foodstuffs produced by them as goods but also for the provision of catering services, be it within their own business establishments or through outside catering, and vice versa, with providers of catering services offering ready-to-serve meals. These include, for instance, bakeries or ice cream parlours, restaurants serving meals to take away or be delivered and many others.  Also, some butchers or charcuteries roast chickens or other types of meat. Although those goods are not necessarily consumed on the premises, there is an overlap with the services of a fast food restaurant or take away. The same is true with regard to some fishmongers, who offer their customers a selection of fish and seafood either to take away or to be cooked and eaten on the premises (in an adjoining restaurant). Therefore, these goods are similar to a low degree to the opponent’s services in Class 43, as they can have the same producers and distribution channels.

However, the contested eggs, milk and milk products (included in class 29); edible oils and fats; mixed milk beverages (milk predominating) are mainly raw products that are used for preparing other dishes. As regards the milk products, they are dairy products made of milk by specialised companies. The purpose of the opponent’s services is to serve food and drink directly for consumption. The market reality is that some producers of foodstuffs also provide restaurant services under their brand (e.g. coffee and related coffee shops, ice cream and related ice cream parlours, beer and related pubs). However, this is not an established trade custom and rather applies only to (economically) successful undertakings. The mere fact that eggs, milk, dairy products or edible oils are consumed in a restaurant is not enough reason to find similarity between them. The consumer is aware that these goods are manufactured by a different company, not by the restaurant. Neither are these goods similar to the remaining opponent’s goods and services in Classes 14, 16, 21, 25, 41 and 43, since origin and distribution channels are not the same. Neither are these goods and services complementary or in competition. Thus, the contested eggs, milk and milk products (included in class 29); edible oils and fats; preserves (included in class 29); mixed milk beverages (milk predominating); desserts made from yoghurt, cream and curd are dissimilar to the opponent’s goods and services.

Contested goods in Class 30

Similarly, as in the previous comparison, the contested coffee, tea, artificial coffee; preparations made from cereals (included in class 30); bread, pastry, confectionery; edible ices; coffee, tea, cocoa and chocolate drinks; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages; prepared (or cooked dishes) based on pasta; pasties made from meat, fish, poultry, game and vegetables; nibbles and small snacks consisting primarily of cereals; blancmanges; cocoa beverages with milk, chocolate beverages with milk and coffee beverages with milk are food products that are not necessarily sold only in grocery or bakery shops. These goods may also be provided on the same premises as the opponent’s services, in particular services for providing food and drink in Class 43, and, furthermore, they may be made at hoc and offered as home-made production. In such a case, it is obvious that the goods and services will be complementary to each other and that they will originate from the same undertakings. For example, nowadays breads are often sold in bakeries that have been converted into small cafeterias or take-away shops. In line with this argument, the Opposition Division considers that these goods and services are similar to a low degree.

However, the contested cocoa, sugar, rice, tapioca, sago, flour; honey, molasses for food, syrup, yeast, baking-powder; salt (included in class 30); mustard; vinegar; sauces (condiments) and salad dressings; spices; ice are raw ingredients that are not suitable for direct consumption and usually need further processing or preparation to become meals or drinks. These goods, in addition to having different natures and intended purposes from the opponent’s goods and services, are not complementary to them in the same way as the abovementioned goods in this class are, and, moreover, they target different relevant consumers and will be distributed through different channels. They are considered dissimilar to the opponent’s goods and services in Class 14, 16, 21, 25, 41 and 43.

Contested goods in Class 32 

The contested beer, mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages; whey beverages are similar to a low degree to the opponent’s services for providing food and drink in Class 43. It is true that goods are, by their nature, different from services, and that the provision of food and drinks as services in Class 43 entails preparing and serving drinks, whereas the contested goods as goods in Class 32 are merely meant to be consumed to quench thirst or for enjoyment. However, the fact that the contested goods and the provision of food and drinks have some relevant points in common outweighs these differences. In Spain, for example, beers are served in places that serve food and drinks. There is a close connection as regards the purpose of beers and the services of providing food and drink, because people go to places where food and drink are served to have a drink and, perhaps, a beer. In that sense, beers and the services of providing food and drink are strictly complementary, since the provision of drinks (including beers) is the core activity of establishments such as bars.

Contested goods in Class 33

The contested alcoholic beverages (other than beer), wines, spirits and liqueurs; sparkling wine, including champagne; alcoholic mixed milk beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine; alcoholic beverages for preparing food; preparations for making alcoholic beverages are either alcoholic or soft drinks or preparations necessarily used in the mixing of drinks. The earlier services for providing food and drink in Class 43 involve providing paying guests with food and drink, with the result that the contested goods are complementary to the earlier services. Furthermore, drinks may be offered for sale in places in which food and drink are served. Such goods are therefore used and offered in restaurants, pubs, cafés and are also part of catering services. The goods and services are consequently closely connected. Nowadays it is very common that restaurants not only sell but also produce their own beverages, as, for instance, beers (in-house micro-breweries) or freshly squeezed juices, smoothies and cocktails. Therefore, these goods and services are deemed to be similar to a low degree.

Contested services in Class 41

The contested organisation and conducting of sporting and cultural events are included in the broad category of the opponent’s sporting and cultural activities also in Class 41. Therefore, they are identical.

The contested instruction and providing of training in the field of cooking and gastronomy; conducting cookery seminars and cookery courses are included in the broad’s category of the opponent’s training. Thus, these services are identical.

The contested providing of electronic publications (not downloadable) featuring gastronomic content are related to the opponent’s education in Class 41. These services can coincide in producer, relevant public and distribution channels. Furthermore they are complementary. Therefore, they are deemed to be similar.

The contested film and video film production and production of television and radio programmes featuring gastronomic content are related to the opponent’s entertainment. These services have the same intended purpose. Also, they can coincide in origin and relevant public. It follows that they are similar.

The contested publication of printed matter (other than for advertising purposes), and publication and dissemination of recipes also share some points of contact with the opponent’s education in Class 41. It is true that these services have a different nature and are normally provide by different companies. However, they can coincide in distribution channels. Furthermore they are complementary. Thus, they must be considered similar to a low degree.

Contested services in Class 43

The contested providing food and drink are also covered by the opponent’s trade mark. These services are identical.

The contested party services, namely preparation of food and beverages; catering for the provision of food and beverages are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are 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 to various degrees are directed at the public at large and also, in some cases, at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

FOODIES – Festival	Refoodies
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 a word mark. It consists of two words, namely ‘FOODIES’ and ‘Festival’, divided by a hyphen. While the first word is meaningless, the word ‘Festival’ will be understood as an organized series of events such as musical concerts or drama productions. The contested mark is also devoid of any semantic content per se. However, it cannot be excluded that at least a part of the relevant public will understand the first two letters ‘RE-‘ as a common prefix that refers to the repeating of an action or process.

The contested sign has no elements that could be considered clearly more distinctive than other elements.

The element ‘FOODIES’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

As seen above, the element ‘Festival’ of the earlier mark will be understood as an organized series of events such as musical concerts or drama productions. This element is not descriptive, allusive or otherwise weak for most of the relevant goods and services, so that it is distinctive.

However, bearing in mind that some of the relevant services can be directly related to a festival, namely the services in Classes 41 and 43, this element is weak for part of these services, namely for organisation and conducting of sporting and cultural events; instruction and providing of training in the field of cooking and gastronomy; conducting cookery seminars and cookery courses; publication of printed matter (other than for advertising purposes), and publication and dissemination of recipes; providing of electronic publications (not downloadable) featuring gastronomic content; film and video film production and production of television and radio programmes featuring gastronomic content in Class 41 and providing food and drink; party services, namely preparation of food and beverages; catering for the provision of food and beverages in Class 43.

Visually and aurally, the signs coincide in the letters ‘FOODIES’, which are the whole of the first word of the earlier mark and the last seven letters of the nine letters word ‘Refoodies’ of the contested sign. However, they differ in the additional first two letters of the contested sign and in the additional, and for a part of the goods and services weak, element ‘Festival’ of the contested sign. Only from a visual point of view the signs also differ in the hyphen of the earlier mark.

Also, account must be taken on the fact that in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

In view of the foregoing the signs in dispute are considered to be visually and aurally similar to an average degree.

Conceptually, the signs are not similar to the extent that the earlier mark’s word ‘Festival’ will be understood, although for a part of the goods and services this element is weak, as well as the first two letters of the contested sign, namely ‘RE-‘, to which will be attributed the idea of repetition. None of these elements has a counterpart.

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 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, despite the presence of a weak element in the mark, for at least some of the services, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services covered by the trade mark in dispute have been found partly identical, partly similar to various degrees and partly dissimilar. The degree of attention is expected to be average. The distinctiveness of the earlier mark must be seen as normal. This is true notwithstanding the presence of the element ‘Festival’ in the earlier mark, which is a weak element for at least the services covered by the earlier mark.

The signs are similar to an average degree both from a visual and aural perspective. The first word ‘FOODIES’ of the earlier mark is fully contained within the only element of the contested sign, namely ‘Refoodies’. As seen above, it can be excepted that the word ‘FOODIES’, due to its position, will be remembered more clearly than the rest of the sign.

As regards the contested sign, at least a part of the relevant public will identify the prefix ‘Re-‘ within it. For this reason, it is not too far-fetched to consider that the consumers may perceive the contested mark ‘Refoodies’ as a sub-brand, a variation of the earlier mark ‘FOODIES – Festival’, 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). This is true not only for the part of the services for which the word ‘Festival’ has a weak character but also, in particular due to the fact that the word ‘FOODIES’ comes first, for the goods and services for which this word possesses a normal degree of distinctiveness.

Furthermore, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s Portuguese trade mark registration.

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 various degrees to those of the earlier trade mark.

The rest of the contested goods in Classes 16, 21, 24, 29 and 30 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 goods 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 shall 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

Angela DI BLASIO

Andrea VALISA

Cecilie Leth BOCKHOFF

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.