OPPOSITION DIVISION
OPPOSITION No B 2 768 177
Conscious Hotels B.V., Zocherstraat 30-36, 1054 LZ Amsterdam, The Netherlands
(opponent), represented by Arnold & Siedsma, A.J. Ernststraat 595F, 1082 LD
Amsterdam, The Netherlands (professional representative).
a g a i n s t
Mano Strikker, Vlierlaan 138, 4907AE Oosterhout, The Netherlands (applicant).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 768 177 is partially upheld, namely for the following
contested goods and services:
Class 30: Sauces; Fruit coulis [sauces]; Sauces containing nuts; Sauces
flavouredwithnuts;preparationsformakingupintosauces;
prepared foodstuffs in the form of sauces;.
Class 43: Catering; Hospitality services [food and drink]; Mobile catering
services; Mobile restaurant services; Preparation and provision
of food and drink for immediate consumption; Providing of food
and drink via a mobile truck; Provision of information relating to
the preparation of food and drink; Serving food and drink for
guests in restaurants; Serving food and drink for guests;
Services for the preparation of food and drink; Serving food
and drinks; Serving of alcoholic beverages; Take-out
restaurant services; Takeaway services; Restaurant services
incorporating licensed bar facilities; Restaurants; Salad bars;
Self-service cafeteria services; Self-service restaurant
services; Serving food and drink in restaurants and bars;
Snack-bars; Arranging of meals in hotels; Banqueting services;
Bar services; Beer garden services; Beer bar services; Bistro
services; Carvery restaurant services; Catering for the
provision of food and beverages; Catering in fast-food
cafeterias; Club services for the provision of food and drink;
Cocktail lounge buffets; Cocktail lounge services; Consultancy
services relating to food; Consultancy services relating to food
preparation; Hotel restaurant services; Juice bars; Night club
services [provision of food]; Ramen restaurant services; Grill
restaurants; Restaurants.
2. European Union trade mark application No 15 532 071 is rejected for all the
above services. It may proceed for the remaining goods.
3. Each party bears its own costs.
Decision on Opposition No B 2 768 177 page: 2 of 8
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No
2868/95 have been repealed and replaced by Regulation (EU) 2017/1001
(codification), Delegated Regulation (EU) 2017/1430 and Implementing
Regulation (EU) 2017/1431, subject to certain transitional provisions. All the
references in this decision to the EUTMR, EUTMDR and EUTMIR shall be
understood as references to the Regulations currently in force, except where
expressly indicated otherwise
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 532 071 . The opposition is
based on Benelux trade mark registration No 984 701 STICKY FINGERS. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 29: Milk, flavored milk and milk-based drinks.
Class 30: Coffee, tea, cocoa, sugar, coffee, beverages based on coffee, liquid
and powdered mixes for beverages, ground coffee bean coffee, coffee
essences and extracts, coffee beverages, ready-made coffee,
beverages based on coffee, espresso and espresso beverages, herb
tea, tea beverages, cocoa and preparations based on cocoa, cocoa
beverages; pastries, confectionery, cakes, sponge cakes, muffins,
scones, biscuits, cakes and biscuits; puddings and desserts;
confectionery; chocolate and chocolate products and non-medicated
confectionery.
Class 43: Services of hotels, restaurants, cafes, cafeterias, bars and canteens;
reservation of temporary accommodation; restoration (providing food
and beverages); temporary accommodation rental.
Decision on Opposition No B 2 768 177 page: 3 of 8
The contested goods and services are the following:
Class 30: Sauces; Spicy sauces; Soya sauces; Pepper sauces; Satay sauces;
Canned sauces; Curry sauces; Sauces [condiments]; Savory sauces;
Cooking sauces; Salad sauces; Sauces for food; Sauces for rice; Fruit
coulis [sauces]; Vegetable purees [sauces]; Food dressings [sauces];
Tomato based sauces; Sauces containing nuts; Sauces flavoured with
nuts; Sauces for barbecued meat; Sauces for use with pasta; Savory
sauces, chutneys and pastes; Savory sauces used as condiments;
Preparations for making up into sauces; Prepared foodstuffs in the
form of sauces; Flavourings in the form of dehydrated sauces;
Flavourings in the form of concentrated sauces.
Class 43: Catering; Hospitality services [food and drink]; Mobile catering
services; Mobile restaurant services; Preparation and provision of
food and drink for immediate consumption; Providing of food and drink
via a mobile truck; Provision of information relating to the preparation
of food and drink; Serving food and drink for guests in restaurants;
Serving food and drink for guests; Services for the preparation of food
and drink; Serving food and drinks; Serving of alcoholic beverages;
Take-out restaurant services; Takeaway services; Restaurant services
incorporating licensed bar facilities; Restaurants; Salad bars; Self-
service cafeteria services; Self-service restaurant services; Serving
food and drink in restaurants and bars; Snack-bars; Arranging of
meals in hotels; Banqueting services; Bar services; Beer garden
services; Beer bar services; Bistro services; Carvery restaurant
services; Catering for the provision of food and beverages; Catering in
fast-food cafeterias; Club services for the provision of food and drink;
Cocktail lounge buffets; Cocktail lounge services; Consultancy
services relating to food; Consultancy services relating to food
preparation; Hotel restaurant services; Juice bars; Night club services
[provision of food]; Ramen restaurant services; Grill restaurants;
Restaurants.
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 30
The contested sauces overlap with the opponent´s chocolate products, as do the
preparations for making up into sauces and the prepared foodstuffs in the form of
sauces; They are identical.
The contested Sauces containing nuts; Sauces flavoured with nuts are highly similar
to chocolate products, which include chocolate sauces. They have the same nature,
share the same intended purpose and method of use, and are distributed in similar
outlets. Furthermore, they are in competition.
The contested fruit coulis [sauces] are lowly similar to chocolate products, namely
chocolate sauces. They are of a different nature in that they are based on different
ingredients. However, they share the same intended purpose and method of use, and
are distributed in similar outlets. Furthermore, they are in competition.
Decision on Opposition No B 2 768 177 page: 4 of 8
The contested Spicy sauces; Soya sauces; Pepper sauces; Satay sauces; Canned
sauces; Curry sauces; Sauces [condiments]; Savory sauces; Cooking sauces; Salad
sauces; Sauces for food; Sauces for rice; Vegetable purees [sauces]; Food
dressings [sauces]; Tomato based sauces; Sauces for barbecued meat; Sauces for
use with pasta; Savory sauces, chutneys and pastes; Savory sauces used as
condiments; Flavourings in the form of dehydrated sauces; Flavourings in the form of
concentrated sauces are all sauces, condiments and their preparations and
flavourings which are dissimilar to the opponent´s Services of hotels, restaurants,
cafes, cafeterias, bars and canteens; reservation of temporary accommodation;
restoration (providing food and beverages); temporary accommodation rental. These
latter services are intended to cover accommodation and catering services. While it is
clear that goods and services are of a different nature in general, the market reality
shows that some producers of foodstuffs and/or drinks also provide restaurant
services under their brand (e.g. coffee and their coffee shops, ice cream and their ice
cream parlours, beer and their pubs); however this is not an established trade
custom. The mere fact that food and drinks are consumed in a restaurant is not
enough reason to find similarity between them. The consumer is aware that the foods
and drinks being served are manufactured by a different company (see judgment of
09/03/2005, T-33/03, ‘Hai’, para. 45 and decision of 20/10/2011, R 1976/2010-4,
‘THAI SPA/SPA et al.’, paras. 24-26).
The contested sauces, condiments, flavourings and preparations are used to improve
the flavour of food. They are also dissimilar to the opponent´s milk, flavored milk and
milk-based drinks in Class 29 as they have entirely different base ingredients and
manufacturers.
They are further dissimilar to the opponent´s coffee, tea, cocoa, sugar, coffee,
beverages based on coffee, liquid and powdered mixes for beverages, ground coffee
bean coffee, coffee essences and extracts, coffee beverages, ready-made coffee,
beverages based on coffee, espresso and espresso beverages, herb tea, tea
beverages, cocoa and preparations based on cocoa, cocoa beverages; pastries,
confectionery, cakes, sponge cakes, muffins, scones, biscuits, cakes and biscuits;
puddings and desserts; confectionery; chocolate and chocolate products and non-
medicated confectionery in class 30, being goods of a different nature and intended
purpose. The fact that they are all comestibles does not suffice to render them
similar. They generally have different producers and are neither complementary, nor
are they in competition.
Contested services in Class 43
The contested Hotel restaurant services are included in the opponent´s restaurants.
They are identical.
The contested Catering; Hospitality services [food and drink]; Mobile catering
services; Mobile restaurant services; Preparation and provision of food and drink for
immediate consumption; Providing of food and drink via a mobile truck; Provision of
information relating to the preparation of food and drink; Serving food and drink for
guests in restaurants; Serving food and drink for guests; Services for the preparation
of food and drink; Serving food and drinks; Serving of alcoholic beverages; Take-out
restaurant services; Takeaway services; Restaurant services incorporating licensed
bar facilities; Restaurants; Salad bars; Self-service cafeteria services; Self-service
restaurant services; Serving food and drink in restaurants and bars; Snack-bars;
Arranging of meals in hotels; Banqueting services; Bar services; Beer garden
services; Beer bar services; Bistro services; Carvery restaurant services; Catering for
the provision of food and beverages; Catering in fast-food cafeterias; Club services
Decision on Opposition No B 2 768 177 page: 5 of 8
for the provision of food and drink; Cocktail lounge buffets; Cocktail lounge services;
Consultancy services relating to food; Consultancy services relating to food
preparation; Juice bars; Night club services [provision of food]; Ramen restaurant
services; Grill restaurants; Restaurants are all included in, or overlap with, the
opponent´s restoration (providing food and beverages) services. They are identical .
The contested provision of information relating to the preparation of food and drink;
Consultancy services relating to food preparation are all at least similar to the
opponent’s restoration (providing food and beverages) services as they are often
provided by the same companies that have expertise in the field of providing food
and drinks. Moreover, they have the same distribution channels and relevant public.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are
directed at the public at large and at business customers with specific professional
knowledge or expertise.
The degree of attention is considered to be average.
Given that the general public is more prone to confusion, the examination will
proceed on this basis.
c) The signs
STICKY FINGERS
Earlier trade mark Contested sign
The relevant territory is Benelux.
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 Benelux trade mark means that an earlier Benelux trade
mark has identical protection in the relevant territories. Earlier Benelux trade marks
may therefore be relied upon to challenge any subsequent application for a trade
mark that would prejudice their protection, even if this is only in relation to the
perception of consumers in part of the Benelux (see, by analogy, 07/09/2006,
C-108/05, Europolis, EU:C:2006:530).
The earlier mark is a word mark made up of the English expression STICKY
FINGERS, which will be understood by a significant part of the relevant public, it
being a well-known fact that the Dutch-speaking public is familiar with English. The
combination of the two words will be understood by a significant part of the Dutch
Decision on Opposition No B 2 768 177 page: 6 of 8
public when perceived in relation to foodstuffs. The contested sign is a figurative
mark containing the same expression in white, together with the letters BBQ in gold,
all against a black background. The colours and background deployed are purely
decorative. The letters BBQ represent a common acronym which will also be
understood by a significant part of the Dutch public, i.e that part of the public familiar
with English, as referring to barbecue–style food (BBQ is the written abbreviation for
barbecue, www.collinsdictionary.com/english/bbq) when perceived in relation to
foodstuffs. It is therefore descriptive in relation to food and services which pertain to
the provision of food.
It should be noted in this regard 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).
The verbal element STICKY FINGERS, common to both signs, will be understood as
a reference to the sticky fingers which result from eating certain kinds of food or even
drinks (A sticky substance is soft or thick and liquid and can stick to other things.
www.collinsdictionary.com/english/sticky). Although it is allusive, it is sufficiently
imaginative to be normally distinctive in relation to food, drinks and services which
include catering services.
Consumers generally tend to focus on the beginning of a sign when they encounter a
trade mark. This is because the public reads from left to right, which makes the part
placed at the left of the sign (the initial part) the one that first catches the attention of
the reader.
Visually, the signs are similar to the extent that they coincide in the verbal elements
‛STICKY FINGERS’, being the sole elements of the earlier mark and fully
incorporated in the contested sign. These elements make up an expression which is
distinctive in relation to comestibles and their related services here. The contested
mark further contains the verbal element BBQ together with a background which
contrasts with the colours of the verbal elements. These latter elements are
secondary. Although there are differences in presentation and an additional word in
the contested sign, the signs share the same verbal expression, which will be the
element which is more likely to be retained visually. The signs are therefore similar to
a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the words ‛STICKY
FINGERS’, present identically in both signs which is normally distinctive. The
pronunciation differs in the sound of the letters ‛BBQ’ of the contested mark, which
have no counterpart in the earlier sign The letters represent a non-distinctive
abbreviation and the figurative elements will not be pronounced.
Therefore, the signs are highly similar.
Conceptually, the signs coincide in the verbal element ‛STICKY FINGERS’ which is
distinctive, and of primary importance in the signs. Reference is made to the previous
assertions concerning the semantic content conveyed by this expression, which is
identical. Reference is also made to the previous assertions concerning the semantic
content conveyed by the additional verbal element of the contested sign (BBQ) which
is purely descriptive. The additional graphic elements will not be perceived by the
Decision on Opposition No B 2 768 177 page: 7 of 8
relevant public as conveying a particular meaning, and will be perceived as purely
decorative. The signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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. The mark as a whole is presumed to have at least a minimum
degree of distinctive character in respect of food, drinks, hostelry and related
services. (See the judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-
41).
e) Global assessment, other arguments and conclusion
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 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).
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
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).
Some of the contested goods and services are identical, some are similar, and some
are dissimilar.
Considering the distinctive character of the semantic elements in common, the fact
that consumers generally refer to marks by their word elements and the aural,
conceptual and visual high similarity between the signs, there is a likelihood of
confusion on the part of the Benelux public that understands English. It follows from
the above that the opposition is partly well founded on the basis of the opponent’s
Benelux trade mark registration No 98 4 7 01. The contested trade mark must be
rejected for the goods and services found to be identical or similar, even to a low
degree, to those of the earlier trade mark.
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 the dissimilar
goods cannot be successful.
Decision on Opposition No B 2 768 177 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some 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
Plamen IVANOV Keeva DOHERTY Natascha GALPERIN
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.