OPPOSITION No B 2 319 997

Madeleines Bijou SA, Les Lacs, 87500 Saint Yrieix la Perche, France (opponent), represented by Fidal, Le Montesquieu 19, avenue du Président JF Kennedy BP 50330, 33695 Mérignac Cedex, France (professional representative)

a g a i n s t

Boop Limited, Flat 2, 52 Queen’s Gate Gardens, London SW7 5NF, United Kingdom, (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 319 997 is partially upheld, namely for the following contested goods and services:

Class 29:        Milk and milk products; condensed milk; milk; milk beverages, milk predominating; milk ferments for culinary purposes; milk products; milk shakes; soya milk (milk substitute); whipped cream.

Class 30:        Coffee, tea, cocoa and artificial coffee; artificial coffee; chocolate; chocolate-based beverages; chocolate beverages with milk; cocoa; cocoa-based beverages; cocoa beverages with milk; coffee; coffee-based beverages; coffee beverages with milk; coffee flavourings (flavourings); frozen yogurt (confectionery ices); ice cream; iced tea; infusions, not medicinal; tea; tea-based beverages; unroasted coffee; vegetal preparations for use as coffee substitutes.

Class 43:        Services for providing food and drink; cafés; cafeterias; food and drink catering; restaurants; self-service restaurants; snack-bars.

2.        European Union trade mark application No 12 296 109 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 some of the goods and services of European Union trade mark application No 12 296 109, namely, after a subsequent limitation, all the goods in Classes 29 and 30 and some of the services in Class 43. The opposition is based on:

1. French trade mark registration No 3 699 239 ;
2. French trade mark registration No 9 876 701 ‘BIJOU’;
3. the company name ‘Madeleines Bijou’, used in the course of trade in France for the manufacturing and commercialization activities of rusks, biscuits, preserved pastry goods and cakes;
4. the domain name bijou.com, used in the course of trade in the European Union and France for the manufacturing and commercialization activities of rusks, biscuits, preserved pastry goods and cakes.

The opponent invoked Article 8(1)(b) EUTMR in relation to earlier rights 1 and 2, and Article 8(4) EUTMR in relation to earlier rights 3 and 4.

ADMISSIBILITY

On 23/03/2016, the applicant limited the list of goods and services for which protection is sought. In a letter dated 12/08/2016, the opponent declared that it maintains its opposition in relation to all the remaining goods and services in Classes 29, 30 and 43.

The Opposition Division notes that, as regards Classes 29 and 30, all of the remaining goods had been contested initially by the opponent in the notice of opposition. On the other hand, bar services in Class 43, which had also been expressly listed before the limitation, were not contested by the opponent within the three-month opposition period. In its letter of 12/08/2016, however, the opponent declares that it also maintains its opposition for these services.

As the opponent opposed only some of the services in Class 43 within the three-month opposition period, which ended on 19/02/2014, the subsequent opposition against bar services in Class 43 constitutes an inadmissible extension of the scope of the opposition.

Pursuant to Rule 15(3)(a) EUTMIR, the opposition shall be considered to be directed against all of the goods and services of the application if the opponent does not specify otherwise. However, if the opponent specifies the goods and services it opposes, it must do so clearly and precisely, within the three-month opposition period, in a manner that leaves no doubt about the scope of the opposition. This also follows from the requirement of the adversarial nature of the proceedings and the applicant’s right of defence. The Opposition Division cannot speculate about why the opponent opposed certain goods and services and not others, and is bound by the relief sought (Article 76(1) EUTMR). It logically follows that including any further services in the scope of the opposition would qualify as an inadmissible extension of the original scope of the opposition.

Admissibility is not a matter of discretion for the parties or the Office, but has to be examined ex officio, at any stage of the proceedings, irrespective of whether or not the applicant raises it. Therefore, the Opposition Division can take into account only those goods and services which had already been contested within the opposition period.

As regards the rights invoked by the opponent under Article 8(4) EUTMR, it must be clarified that in its notice of opposition, under the heading ‘goods, services or activities for which the mark/sign is used in the course of trade’, the opponent stated that both the company name and the domain name are used in trade in France for the manufacturing and commercialization activities of rusks, biscuits, preserved pastry goods and cakes. Then, on 12/08/2016, once the opposition period had elapsed, the opponent stated that these two earlier rights were used for the manufacture and sale of food products and in particular of all industrial biscuit and pastry products. According to Article 41 EUTMR, the opponent has three months to file an opposition following the publication of the contested trade mark. Within these three months, the opponent must identify the basis for the opposition. Once this period has elapsed, the opponent can only limit the basis of the opposition, but cannot make relevant changes/alterations in relation to this basis. Consequently, the activities in relation to which the opposition filed under Article 8(4) EUTMR will be evaluated, for both the earlier company name and the earlier domain name, will be the manufacturing and commercialization activities of rusks, biscuits, preserved pastry goods and cakes.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 3 699 239, which is not subject to the requisite of proof of use. As a prior clarification, it must be stated that, although in relation to the other mark, namely French trade mark registration No 9 876 701, the opponent initially based its opposition on all the goods for which the mark is registered, in its observations of 12/08/2016 it limited the scope of the goods for which it had to prove use to pastry; cookies; filled cookies; madeleines; cakes; biscuits, that is to say, fewer goods than French trade mark registration No 3 699 239 is registered for. This limitation is construed by the Opposition Division as a wish on the part of the opponent to limit the scope of its opposition in relation to this mark.

1. The goods and services

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

Class 29:        Preserved, dried, candied, crystallized, cooked fruits and in compotes; jellies, jams, eggs, milk, edible oil and fats.

Class 30:        Pastry and confectionery, flour and preparations made from cereals, yeast, baking-powder, condiments, spices, salt, sugar, sweeteners and artificial flavours for confectionery, coffee, cocoa, coffee substitutes, honey, treacle, syrup, cookies, filled cookies, madeleines, cakes, brioches, biscuits, flour-milling dishes and desserts.

After a limitation made by the applicant on 23/03/2016, the contested goods and services are the following:

Class 29:        Milk and milk products; condensed milk; milk; milk beverages, milk predominating; milk ferments for culinary purposes; milk products; milk shakes; soya milk (milk substitute); whipped cream.

Class 30:        Coffee, tea, cocoa and artificial coffee; artificial coffee; chocolate; chocolate-based beverages; chocolate beverages with milk; cocoa; cocoa-based beverages; cocoa beverages with milk; coffee; coffee-based beverages; coffee beverages with milk; coffee flavourings (flavourings); frozen yogurt (confectionery ices); ice cream; ice for refreshment; ice, natural or artificial; iced tea; infusions, not medicinal; tea; tea-based beverages; unroasted coffee; vegetal preparations for use as coffee substitutes.

Class 43:        Services for providing food and drink; cafés; cafeterias; food and drink catering; restaurants; self-service restaurants; snack-bars.

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 milk and milk products (listed twice), condensed milk, soya milk (milk substitute) are identical to the opponent’s milk, as they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested milk beverages, milk predominating; milk shakes are highly similar to the opponent’s milk, as these goods have the same purpose. They can have the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested whipped cream and milk ferments for culinary purposes are similar to the opponent’s milk to an average degree, as they have similar natures, target the same public, are distributed through the same channels and may be produced by the same companies.

Contested goods in Class 30

The contested coffee, cocoa (listed twice), artificial coffee (listed twice), chocolate, chocolate based beverages; chocolate beverages with milk; cocoa based beverages, cocoa beverages with milk; coffee based beverages, coffee beverages with milk, unroasted coffee, vegetal preparations for use as coffee substitutes are identical to the goods of the opponent in this class, as they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested frozen yogurt (confectionery ices); ice cream are similar to the opponent’s milk in Class 29, as they have similar natures, target the same public, are distributed through the same channels and may be produced by the same companies.

Coffee flavourings (flavourings) are similar to a low degree to coffee, as they have the same purpose. They can also have the same methods of use.

Tea (listed twice), iced tea; infusions (not medicinal); tea based beverages are similar to different degrees to coffee, as they can have the same end users, distribution channels and methods of use, and/or they can be in competition.   

The contested ice for refreshment, ice, natural or artificial are dissimilar to all of the opponent’s goods, as they do not coincide in any of the criteria for comparison: they have different natures and purposes, they are produced and put on the market by different companies through different channels of trade, and they are neither in competition nor complementary.

Contested services in Class 43

There is a low degree of similarity between services for providing food and drink; cafés; cafeterias; food and drink catering; restaurants; self-service restaurants; snack-bars and some of the opponent’s goods, such as pastries, bread, preparations made from cereals and coffee, in as much as they can have the same producer and distribution channels. Furthermore, they are complementary.

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 identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specific nature of the goods and services, the frequency of purchase and their price.

3. The signs

	Biju
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The word ‘Biju’ of the contested mark has no meaning for the relevant public and is therefore distinctive. Because the contested mark is a word mark, it has no dominant elements.

The element ‘BIJOU’ of the earlier mark will be understood as ‘bijouterie’ and, in the context of the relevant goods, it is distinctive, as it does not refer to the goods or any of their characteristics. ‘Tradition Pâtissière’ and ‘depuis 1845’, flanked by figurative elements depicting two ears of grain, will be understood as ‘confectionery tradition since 1845’. These elements are non-distinctive for all the relevant goods, as they will be perceived as merely a reference to the long-standing experience of the provider of the goods in the field of confectionery. All the verbal elements are placed on an oval background, which resembles a label. The elements ‘Tradition Pâtissière’ and ‘depuis 1845’ are less dominant than the word ‘BIJOU’, and the label device is merely decorative and therefore less relevant than this word.

Visually, ‘BIJOU’ of the earlier mark coincides with the only word of the contested mark in four letters, ‘BIJ*U’, which are the only letters of the contested sign. The signs differ in the rest of the verbal and figurative elements of the earlier mark but, taking into account that ‘BIJOU’ is the most dominant and distinctive element of the earlier mark, the signs must be deemed visually similar to a high degree.

Aurally, the sounds /ou/ (earlier mark) and /u/ (contested sign) are similar, and taking into account that the sounds of the rest of the letters that make up the signs are identical, the degree of aural similarity must be deemed high.

Conceptually, the signs are not similar because, as mentioned above, all the verbal elements of the earlier mark have a meaning, whereas the contested mark is a neologism.

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 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 some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

Some of the goods and services are identical or similar to various degrees and some are clearly dissimilar, and the relevant public’s degree of attention varies. As for the signs, the fact that they are not conceptually similar must be considered in the context of the fact that some of the verbal elements of the earlier mark are less dominant and distinctive than the word ‘BIJOU’, which is so similar to the only word of the contested sign, ‘Biju’, that the marks are visually and aurally highly similar.

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 well founded on the basis of the opponent’s French trade mark registration No 3 699 239.

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 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.

The opponent has also based its opposition on French trade mark registration No 9 876 701, ‘BIJOU’. As explained above, the opponent bases its opposition in relation to this mark on fewer goods than the opposition in relation to the trade mark used in the evaluation above is based on.

Consequently, since this mark is identical to the most distinctive and dominant element of the mark used in the comparison above and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The opposition will continue on the basis of the company name ‘Madeleines Bijou’ and the domain name bijou.com, both of which are used in the course of trade in France, and the contested goods that have been found dissimilar to all of the opponent’s goods, namely ice for refreshment, ice, natural or artificial.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

In the documents provided to substantiate the opposition, the opponent refers to Article L.711-4 of the French Intellectual Property Code, which, according to the translation provided by the opponent, states the following:

‘Signs may not be adopted as marks where they infringe earlier rights, particularly:

1. An earlier mark that has been registered or that is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property;
2. The name or style of a company, where there is a risk of confusion in the public mind;
3. A trade mark or signboard known throughout the national territory, where there exists a risk of confusion in the public mind.’

In relation to domain names, the opponent explains that ‘they are also considered as earlier rights by virtue (of) national courts decisions which have recently been confirmed by the following decision: TGI Paris, 3e ch., 2e sect., 17 janv.2014, nº 11/03304, HSS c/Netposition International et a’.

The opponent states that it bases the opposition in relation to Article 8(4) EUTMR on point c) above, namely a likelihood of confusion among the relevant public.

For the purposes of economy of the proceedings, the Opposition Division will not examine whether the use in trade of more than mere local significance has been proved, nor whether or not the evidence submitted by the opponent allows the Opposition Division to determine safely that a particular right is provided for under French law, as well as some other requirements, such as the conditions for acquisition of that right, whether or not the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

Taking into account that the relevant law governing the signs invoked under Article 8(4) EUTMR and on which the opponent bases its opposition, as seen above, requires the likelihood of confusion among the public, the first issue to be considered is the identity or similarity of the goods and services in dispute.

1. The goods and services

The services on which the opposition is based in relation to the company name and the domain name are manufacturing and commercialization activities of rusks, biscuits, preserved pastry goods and cakes. The goods for which the opposition filed under Article 8(1)(b) EUTMR has not been successful are ice for refreshment, ice, natural or artificial in Class 30.

These goods and services are dissimilar. First, they have, per se, different natures, as goods are tangible whereas services are intangible. Further, not even the nature of the goods in relation to which the services of the earlier rights are carried out (rusks, biscuits, preserved pastry goods and cakes) is the same as the nature of the different kinds of ‘ice’ of the contested mark; that is to say, consumers will never think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). The goods and services are not in competition with each other and they are not offered through the same channels of trade.

Consequently, as the goods and services are dissimilar there cannot be a likelihood of confusion among the relevant public. Taking into account that this is a prerequisite of the pertinent French law for Article 8(4) EUTMR to be applicable, the opposition filed under this article 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. 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

Natascha GALPERIN

María Belén IBARRA DE DIEGO

Angela DI BLASIO

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.