OPPOSITION No B 2 510 363

Roadhouse S.p.A., Via Modena, 53, 41014 Castelvetro di Modena, Italy (opponent), represented by Ufficio Internazionale Brevetti Ing. C. Gregorj S.R.L., Via Muratori 13/B, 20135 Milano, Italy (professional representative)

a g a i n s t

TXRH International IP, LLC, 211 East 7th Street, Suite 620, Austin, Texas 73301, United States of America (applicant), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street, Nottingham NG1 5GG, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 510 363 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 504 171 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 504 171. The opposition is based on, inter alia, Italian trade mark registration No 1 520 994. 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 Italian trade mark registration No 1 520 994.

1. The goods and services

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

The contested goods and services are the following:

Class 29: Meat; fish; poultry and game; meat extracts; seafood and seafood products; vegetarian foodstuffs; preserved, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs; milk and milk products; dairy products; edible oils and fats; salads; cooking oils; pickles; meat products; potato-based snack foods; soups; cooked and frozen foods.

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; dried herbs; flour and preparations made from cereals; bread; pastry; rolls; biscuits; cakes; confectionery; ices; honey, treacle; yeast; baking powder; salt; mustard; vinegar; condiments; sauces; spices and seasonings; herbs; ice; salad dressings; gravies; chicken sandwiches; chicken pot pies; sandwiches; hot dogs; cookies; candy; puddings; pies; rice cakes; pizza; pasta; snack foods; corn chips; tortilla chips; rice chips; crackers; pretzels; popcorn; fried or baked chips consisting of rice; corn or flour; bread sticks; ice cream; muffins; mayonnaise; ketchups; fruit sauces.

Class 43: Restaurants; snack bars; cafes; cafeterias; canteens; self-service restaurants and fast-food outlets; services for providing food and drink; catering services; on-line food and drink ordering services; delicatessen services; advice, information and consultancy relating to all of the aforementioned services.  

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.

Earlier Italian trade mark No 1 520 994 is registered for the entire class headings of Classes 29, 30 and 43 of the Nice Classification. It was filed on 30/06/2011. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

Contested goods in Class 29

The contested meat; fish; poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs; milk and milk products; edible oils and fats; soups are either explicitly included in the opponent’s list of goods or are contained in the alphabetical list of Class 29 in the 9th edition of the Nice Classification, covered by the earlier mark. Therefore, they are identical.

The contested dairy products, albeit worded slightly differently, are identical to the opponent’s milk products.

The contested seafood and seafood products are included in the broad category of, or overlap with, the opponent’s fish. Therefore, they are identical.

The contested vegetarian foodstuffs include, as a broader category, the opponent’s cooked vegetables. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested salads include, as a broader category the opponent’s vegetable salads, contained in the alphabetical list of Class 29 in the 9th edition of the Nice Classification, covered by the earlier mark. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cooking oils are included in the broad category of the opponent’s edible oils. Therefore, they are identical.

The contested pickles are included in the broad category of the opponent’s preserved vegetables. Therefore, they are identical.

The contested meat products are included in the broad category of, or overlap with, the opponent’s preserved meat. Therefore, they are identical.

The contested potato-based snack foods include, as a broader category the opponent’s potato crisps, contained in the alphabetical list of Class 29 in the 9th edition of the Nice Classification, covered by the earlier mark. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cooked and frozen foods include, as a broader category the opponent’s cooked and frozen vegetables. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 30

The contested coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; pastry; confectionery; ices; honey, treacle; yeast; baking powder; salt; mustard; vinegar; sauces; spices; ice; sandwiches; rice cakes; pizza; pasta; popcorn; are either explicitly listed in the opponent’s list of goods or contained in the alphabetical list of Class 30 in the 9th edition of the Nice Classification, covered by the earlier mark. Therefore, they are identical.

The contested dried herbs; herbs include, as a broader category, or overlap with, the opponent’s garden herbs, preserved [seasonings], contained in the alphabetical list of Class 30 in the 9th edition of the Nice Classification, covered by the earlier mark. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested biscuits; cookies; snack foods; corn chips; tortilla chips; rice chips; crackers;  pretzels; fried or baked chips consisting of rice, corn or flour; bread sticks are included in the broad category of, or overlap with, the opponent’s preparations made from cereals. Therefore, they are identical.

The contested rolls; cakes; puddings; pies; chicken pot pies; muffins; are included in the broad category of, or overlap with, the opponent’s pastry, which refers to ‘a dough of flour, water, shortening, and sometimes other ingredients’, ‘baked foods, such as tarts, made with this dough’ or ‘an individual cake or pastry pie’. Therefore, they are identical.

The contested condiments include, as a broader category, the opponent’s sauces (condiments). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested seasonings include, as a broader category, or overlap with, the opponent’s spices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested salad dressings; gravies; mayonnaise; ketchups; fruit sauces are included in the broad category of, or overlap with, the opponent’s sauces (condiments). Therefore, they are identical.

The contested chicken sandwiches; hot dogs are included in the broad category of the opponent’s sandwiches, contained in the alphabetical list of Class 30 in the 9th edition of the Nice Classification, covered by the earlier mark. Therefore, they are identical.

The contested candy is included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested ice cream is included in the broad category of the opponent’s ices, which are to be understood as ‘edible ices’. Therefore, they are identical.

Contested services in Class 43

Services for providing food and drink are identically contained in both lists of services.

The contested restaurants; snack bars; cafes; cafeterias; canteens; self-service restaurants and fast-food outlets; catering services; on-line food and drink ordering services; delicatessen services are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.

The contested advice, information and consultancy relating to all of the aforementioned services (relating to restaurants; snack bars; cafes; cafeterias; canteens; self-service restaurants and fast-food outlets; services for providing food and drink; catering services; on-line food and drink ordering services; delicatessen services) are similar to the opponent’s services for providing food and drink 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.

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 are directed at the public at large. The degree of attention is deemed to be average.

3. The signs

ROADHOUSE
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 the word mark ‘ROADHOUSE’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘TEXAS’ in the contested sign is likely to be widely understood as referring to a geographical location, namely a large state of the United States of America. Texas is notably famous for its traditional and specific barbecue and Tex-Mex cuisine. Bearing in mind that the relevant goods and services are food-related, it is considered that this element will be associated with a type of cuisine or with the geographical origin of the goods and services provided. Therefore, the distinctiveness of this element in relation to the relevant goods and services is lower than average and its impact is, therefore, limited when assessing the similarity between the marks.

Likewise, the figurative elements of the contested sign will also be seen as references to the state of Texas when perceived together with the verbal indication ‘TEXAS’, since they depict the shape of the state and a cowboy hat (Texas is commonly associated with the image of the cowboy due to the cattle industry that thrived in this state). Therefore, these elements are of limited distinctiveness, as they will be also perceived as referring to the geographical origin of the goods and services.

Moreover, 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).

As regards the element ‘ROADHOUSE’, present in the marks under comparison, the applicant argues that it has a non-distinctive meaning in English in relation to the relevant goods and services and will be perceived as having the same meaning by the relevant Italian consumers. It points out that over 1.7 million Italian nationals visited the USA in 2013 and 2014 and argues that they are familiar with the American culture, and, therefore, with this English expression. Nevertheless, it should be noted that the relevant consumers in the various Member States of the EU mainly speak the languages predominant in their respective territories (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 27). These languages are normally the official languages of the relevant territory.

Moreover, in its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are some trade marks that include the word ‘ROADHOUSE’. In support of its arguments the applicant refers to several trade mark registrations in Italy. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Furthermore, the photos and website printouts submitted by the applicant to prove the use of these signs containing the element ‘ROADHOUSE’ for services of provision of food and drinks do not provide any indication of the extent of the use of these marks. Nor do they indicate in any way that ‘ROADHOUSE’ is used as a descriptive indication and not as an indication of origin, since in most cases the material submitted demonstrates that the establishments are referred to by other, descriptive, words in addition to the word ‘ROADHOUSE’, such as ‘Snack bar Birreria’ or ‘Motorcycle Pub’. The trade mark registrations in other territories are not relevant for determining the perception of the element ‘ROADHOUSE’ by the Italian public. It follows that the documents filed do not demonstrate that consumers in the relevant territory have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘ROADHOUSE’.

In addition, the existence of one American film entitled ROAD HOUSE and its distribution in Italy under a name containing the words ‘ROAD HOUSE’ is not indicative of whether or not the vast majority of the public in the relevant territory is familiar with the particular meaning of these words in combination as designating a type of establishment providing food and drinks.

Consequently, the Opposition Division considers that only a small part of the public in Italy (the population of which is more than 60 million people) may be familiar with the meaning of ‘ROADHOUSE’ as a restaurant, bar, or nightclub located on a major road, since ‘ROADHOUSE’ was originally and chiefly used in North America and is not frequently used in Europe nowadays, especially in the relevant territory, where the official language is Italian.

It cannot be excluded also that a part of the public in the relevant territory with some knowledge of English may be familiar with the meanings of the individual English words ‘ROAD’ and ‘HOUSE’. That part of the public will most likely perceive the word combination ‘ROADHOUSE’ as having the literal meanings of its constituent parts, that is, as referring to a house on the road. For that part of the public the distinctiveness of the element ‘ROADHOUSE’ of the marks under comparison is average, as the meaning is not related to the goods and services at issue.

Furthermore, the Opposition Division is of the opinion that a significant part of the relevant Italian public will not understand ‘ROADHOUSE’ as having any particular meaning and will perceive it as a fanciful and fully distinctive term. This is because the words ‘ROAD’ and ‘HOUSE’ do not exist in Italian and do not have close equivalents (the equivalents being ‘strada’ or ‘via’ and ‘casa’, respectively) and, as seen above, the applicant has not submitted compelling evidence that this word is known by a significant portion of the relevant public as designating a particular type of establishment.

Considering all of the above and for reasons of procedural economy, the analysis below will focus on the part of the relevant public in Italy that does not perceive any meaning in the element ‘ROADHOUSE’ of the marks under comparison.

Conceptually, although the public in the relevant territory will perceive the meanings of the element ‘TEXAS’ and the figurative elements of the contested sign, as explained above, the other sign has no meaning for the public in the relevant territory taken into consideration. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, this conceptual difference has little impact because the meaningful elements in the contested sign are of limited distinctiveness for the goods and services at issue.

Visually, the signs coincide in the word ‘ROADHOUSE’, which constitutes the entire earlier mark and is included as the second verbal element of the contested sign. They differ in the additional first word, ‘TEXAS’, in the contested sign and in the figurative elements and the stylisation of that sign, which have a limited impact on the perception of the sign for the reasons explained above.

Although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impressions produced by those signs, bearing in mind, in particular, their distinctive and dominant components.

Therefore, taking into account the fact that the marks coincide in the independent and distinctive verbal element ‘ROADHOUSE’, it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘ROADHOUSE’, present identically in both signs. The pronunciation differs in the sound of the first word of the contested sign, ‘TEXAS’, which, however, has a limited impact on the aural perception of the mark in relation to goods and services related to the food and beverage industry. Consequently, the marks are aurally similar to an average degree.

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 has been extensively used and enjoys an enhanced scope of protection. 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 taken into account. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services under comparison are partly identical and partly similar, and they target the general public, whose degree of attention in relation to these goods and services is deemed average. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods. The signs are visually and aurally similar to an average degree on account of the coinciding verbal element ‘ROADHOUSE’, constituting the earlier mark in its entirety and present as the second and more distinctive verbal element of the contested sign.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, the relevant consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark, referring to goods and services with a particular geographical origin provided under the earlier mark, ‘ROADHOUSE’.

Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to identical and similar goods and services for the part of the Italian public that perceives the element ‘ROADHOUSE’ as a meaningless and fanciful term. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

In its observations, the applicant argues that it owns several registrations featuring the word ‘ROADHOUSE’ in Spain and Germany, where they coexist with some of the opponent’s earlier marks. However, the coexistence of earlier marks in other markets is not particularly relevant to the question of whether or not the public in the relevant territory is used to seeing the marks without confusing them. Therefore, this argument of the applicant must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 520 994. It follows that the contested trade mark must be rejected for all the contested goods and 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 the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the evidence of use in relation to that earlier right.

Likewise, there is no need to further examine the other ground of the opposition, namely Article 8(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

Adriana VAN ROODEN

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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.