OPPOSITION No B 2 752 452

Kabushiki Kaisha Tsujirihei Honten, 41 Ujiwakamori, Uji-shi, Kyoto 611 0021, Japan (opponent), represented by Matthew Emmerson Allen, Allen IP Limited, 3 Windsor Terrace, Hagley Road, Birmingham, West Midlands B16 8UH, United Kingdom (professional representative)

a g a i n s t

Tsuji Riichi Honten Co., LTD, 49, Renge, Uji, Uji-city, Kyoto 611-0021, Japan (applicant), represented by Müller · Hoffmann & Partner Patentanwälte mbB, St.-Martin-Strasse 58, 81541 München, Germany (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 452 is upheld for all the contested goods and services, namely

Class 30:        Tea, bread, pastry, confectionery.

Class 43:        Providing food and drink in restaurants.

2.        European Union trade mark application No 15 380 702 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 380 702 for the figurative mark , namely against some of the goods in Class 30 and all the services in Class 43. The opposition is based on European Union trade mark registration No 13 188 511 for the figurative mark . 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 30:        Bread; Tea; Sandwiches; Pizzas; Meat pies; Steamed buns stuffed with minced meat (niku-manjuh); Seasonings; Ice cream mixes; Sherbet mixes; Cereal preparations; Confectionery; Hamburgers in buns; Hot dogs [sausages in a bread roll]; Pastry.

Class 43:        Services for providing food and drink.

The contested goods and services are the following:

Class 30:        Tea, bread, pastry, confectionery.

Class 43:        Providing food and drink in restaurants.

Contested goods in Class 30

Tea, bread, pastry, confectionery are identically contained in both lists of goods.

Contested services in Class 43

The contested providing food and drink in restaurants 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 are directed at the public at large.

The degree of attention is considered to be 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 earlier sign is a figurative mark composed of a figurative element resembling a pictogram of a roof and the Latin letter ‘n’ with an inverted end underneath. Under the figurative element there is a verbal element ‘TSUJIRI’ in standard-typeface uppercase letters.

The contested sign is also a figurative mark composed of Asian-like characters and the verbal element ‘TSUJURI’ underneath in standard-typeface uppercase letters. The Asian-like characters are not likely to be associated with a particular meaning by the relevant public but will be rather perceived as a fanciful figurative device.

The applicant argues that the figurative element in the earlier sign will be perceived as the Greek letters ‘lambda’ and ‘eta’. Such a perception of the figurative element is, however, quite improbable because there is no clue that the relevant public associates these elements with letters from the Greek alphabet. However, due to the fact that the Greek letters ‘Λ’ (‘lambda’) and ‘η’ (‘eta’) differ from the particularly arranged figurative element of the earlier sign, such perception cannot be assumed even for the Greek-speaking part of the relevant public. A perception of the figurative element in the earlier sign as Greek letters, as claimed by the applicant, is also not reinforced by a possible association of the verbal element with a Greek word since the verbal element ‘TSUJIRI’ does not have any meaning for the relevant public. Therefore, for the relevant consumers the figurative element will convey no particular meaning but will be rather fanciful.

The figurative element in the earlier sign is due to its position and size the more dominant (visually-outstanding) one. The contested sign has no element which can be considered clearly more dominant than the other elements.

However, the common meaningless verbal element ‘TSUJIRI’ in both signs is the more distinctive one. 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).

Visually, the signs coincide in the distinctive verbal element ‘TSUJIRI’, which regardless of the different typeface, is identically contained in both signs. They differ in the figurative elements which have no common features. Despite the fact that the figurative element in the earlier sign is more dominant than the verbal element, as explained above, the verbal element will have a bigger impact on the consumers as it will be easier memorised and recalled than the figurative device.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the common verbal element ‘TSUJIRI’ will be pronounced identically. The figurative elements will not be pronounced and, therefore, they are not subject to a phonetic assessment. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. This finding is not called into question by the assertion of the applicant that the verbal element in the earlier sign composes a significant part of the opponent’s company name, resulting that the consumers will recognize the company name in that sign. First, such an association would require a preliminary knowledge which the relevant public is not likely to possess and, second, even for those consumers, who are aware of this fact, the earlier sign remains without a concrete meaning.

Since a conceptual comparison is not possible, the conceptual aspect does not influence 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.

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.

5. Global assessment, other arguments and conclusion

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.

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).

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).

In the case at hand the conflicting goods and services are identical and the conflicting signs are visually similar and aurally identical. They share the same verbal element ‘TSUJIRI’ which is also the most distinctive one in both signs. Therefore, the figurative elements, even though being different, are not capable of ruling out a likelihood of confusion, i.e. the probability that the consumers assume that the goods and services covered by the trade marks in question come from the same or economically linked undertakings.

This finding is also not overturned by the assertion of the applicant that in Japan numerous trade marks containing the verbal element ‘TSUJIRI’ have been registered and co-exist on the market. This argument is not applicable in the case at hand because the figurative elements found to be fanciful but with less impact on the relevant consumers, may be verbal elements with a specific concept for the Japanese-speaking consumers, resulting in the ability of the Japanese consumers to distinguish the signs. However, as for the relevant public in the European Union the signs share the distinctive verbal element ‘TSUJIRI’ and differ just in the less distinctive figurative elements, the signs at issue are confusingly similar.  

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 188 511. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Lars HELBERT

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.