OPPOSITION No B 2 624 388

Goody's Societe Anonyme Of Catering Services, Building 14 b, Athens International Airport, 19019  Spata, Greece (opponent), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106-80  Athens, Greece (professional representative)

a g a i n s t

goodies GmbH, Warschauer Str. 69, 10243 Berlin, Germany (applicant).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 624 388 is upheld for all the contested services, namely 

Class 43: Restaurants; restaurants featuring home delivery; providing food and drink for guests in restaurants; serving food and drink for guests in restaurants; self-service restaurants; cafés; catering; mobile catering services; supplying of meals for immediate consumption.

2.        European Union trade mark application No 14 628 879 is rejected for all the contested services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 628 879, namely against all the goods and services in Classes 16, 29, 30, 43.

In the course of the proceedings, the applicant however requested a restriction of its sign, which has been accepted by the Office. Classes 29, 30 and 35 have been deleted from the list of goods and services.

In addition, the opponent explicitly stated in its observations of 08/08/2016 that it requested that the contested sign is rejected only regarding services of Class 43.

Therefore, the opposition is directed against all the services in Class 43 at the date of the present decision.

Furthermore, the opposition is based on, inter alia, European Union trade mark registration No 325 126. The opponent invoked Article 8(1)(b) and 8(5) 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.

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 European Union trade mark registration No 325 126.

1. The goods and services

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

Class 42: Services related with the operation of restaurants.

The contested services are the following:

Class 43: Restaurants; restaurants featuring home delivery; providing food and drink for guests in restaurants; serving food and drink for guests in restaurants; self-service restaurants; cafés; catering; mobile catering services; supplying of meals for immediate consumption.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The contested services overlap with the opponent’s services, since they all can consist of services related with the operation of restaurants. 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 services found to be identical are directed at the public at large. Given that the services are accessible to and used by a large majority of the relevant public on a regular basis and they do not require any specialist knowledge or expertise, the degree of attention is considered average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 majority of the elements of the signs, including the distinctive and most similar words ‘GOODY’S’ and ‘goodies’, are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier mark consist of the word ‘GOODY’S’ written in slightly stylised red upper case letters. It has no elements that could be considered clearly more distinctive or more dominant than other elements.

The contested sign is a figurative mark made up of the word ‘goodies’ written in slightly stylised lower case letters and followed by a figurative element depicting an asterisk. Below the word ‘goodies’ are the words ‘Coffee & healthy food!’ in much smaller lower case letters and preceded by an asterisk.

A significant part of the relevant public will understand the elements ‘Coffee’ and ‘food’, since they are very basic English words commonly used in non-English-speaking territories, also as part of international expressions such as ‘fast food’ for example. These words are deemed to be weak in the context of the relevant services which consists of providing food and drinks.

Moreover, the elements ‘*Coffee & healthy food!’ are less eye-catching than the element ‘goodies*’ due to their much smaller size and position.Therefore the non-English speaking part of the public will pay more attention to the more distinctive and dominant element ‘goodies’.

Visually, the only element of the earlier mark ‘GOODY’S’ and the co-dominant element of the contested sign ‘goodies’ coincide in their four first letters and in their last letter ‘s’.

It has also to be recalled that 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).

Furthermore, 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.

The signs differ in the letter ‘y’ and the apostrophe of the earlier mark compared to the letters ‘IE’ of the contested sign. They differ also in their slightly stylised typefaces as well as in an asterisk and the elements ‘*Coffee & healthy food!’ of the contested sign. However, it has to be recalled that this whole verbal part is less dominant and that the words ‘coffee’ and ‘food’ are considered as weak.

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

Aurally, the only element of the earlier mark ‘GOODY’S’ and the dominant element of the contested sign ‘goodies*’ will be pronounced identically or at least very similarly by the relevant public. Indeed, they coincide in the sound of their initial letters ‘GOOD’ as well as in the sound of their last letter ‘S’. Moreover, the pronunciation will not differ or only to a limited extent in the sound of the letters ‘Y’ of the earlier mark compared to ‘IE’ of the contested sign.

The signs differ in the sound of the verbal sequence ‘Coffee & healthy food’ of the contested sign. However, it is considered as less dominant and the words ‘coffee’ and ‘food’ are weak.

Therefore, the signs are aurally highly similar.

Conceptually, the earlier mark has no meaning for the relevant public, whereas the meanings of the elements ‘Coffee’ and ‘food’ in the contested sign will be perceived. However, since these two words are weak and less dominant, the conceptual aspect does not have much influence on the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark enjoys an enhanced reputation in Greece. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

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.).

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

In the present case, the services are identical and the signs are visually similar to an average degree and aurally highly similar, since the only element of the earlier mark share strong similarities with the dominant and first element of the contested sign. In addition, these two elements are distinctive.

The differences are not particularly prominent, namely slightly stylised typefaces, two relatively basic asterisks, as well as weak and/or less dominant verbal elements.

Based on all the foregoing, these additional elements of the contested sign are not sufficient to clearly differentiate the marks. Indeed, it is considered that, for a sufficiently large part of the public, there are strong coincidences between the signs. Taken together with the identity of the services and the average degree of attention, it is likely that these consumers will believe that the conflicting services come from the same undertaking or economically linked undertakings.

Account should also be 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.

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

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 325 126. It follows that the contested sign must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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)(5) 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

Anna BAKALARZ

Steve HAUSER

Adriana VAN ROODEN

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.