OPPOSITION No B 2 580 747
Indesit Company Luxembourg S.A., 11-13 Boulevard de la Foire, 1528, Luxembourg, (opponent), represented by Metroconsult S.R.L., Via Sestriere, 100, 10060, None, Italy (professional representative)
a g a i n s t
Chunshan Zhang, Luxemburger Strasse 20, 50674, Köln, Germany, (applicant), represented by Xiaoming Du, Lise-Meitner-Straße 5-9, Haus 2, 42119, Wuppertal, Germany (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 580 747 is partially upheld, namely for the following contested services:
Class 39: Delivery of food by restaurants
Class 43: Restaurants; carvery restaurant services; snack-bars; take-out restaurant services
2. European Union trade mark application No 14 041 552 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 041 552. The opposition is based on European Union trade mark registration No 3 630 852 ‘’ and No 3 405 081 ‘HOTPOINT’.
The opponent invoked Article 8(5) in relation to both the earlier registrations but also Article 8(1)(b) in relation to European Union trade mark registration No 3 630 852.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 7: Domestic, kitchen and household electrical apparatus, instruments and machines
Class 11: Apparatus, instruments machines and installations for cooking, refrigerating, drying, heating, cooling, freezing
Class 39: Transport, storage warehousing and delivery of goods
The contested services are the following:
Class 35: Restaurant management for others
Class 39: Delivery of food by restaurants
Class 43: Booking of restaurant seats; Restaurants; Carvery restaurant services; Making reservations and bookings for restaurants and meals; Snack-bars; Take-out restaurant 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.
Contested services in Class 35
The contested restaurant management for others services are all aimed at the effective and efficient running of restaurants on behalf of third parties. It is a business service which does not have any similarity to any of the earlier goods and services. Whilst the goods are kitchen related and the services may transport or deliver goods on behalf of such restaurants, the differences in nature, users and distribution channels, plus them not being in competition (or complementary) with one another clearly result in them being dissimilar.
Contested services in Class 39
The contested delivery of food by restaurants are included in the broad category of the opponent’s Class 39 delivery of goods. They are identical.
Contested services in Class 43
The contested restaurants; carvery restaurant services; snack-bars; Take-out restaurant services are establishments which prepare and serve food and drink. Many restaurants (including carvery restaurants and snack bars) normally also deliver the meals they prepare to customer’s homes. Therefore, whilst delivery and the provision of food differ in nature, they are complementary. Further, the end user will be the same and service providers will be the same. They are similar.
With regard to Booking of restaurant seats; Making reservations and bookings for restaurants and meals are all services aimed at the smooth and effective running of restaurants by ensuring that bookings are taken and organised. There is no degree of similarity with any of the earlier goods and/or services. More specifically, the delivery of goods (which includes food from restaurants) is different in nature and they would not be complementary to the aforementioned contested services. They are dissimilar.
- 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 or similar are directed at the public at large. The services at issue are delivery of food and restaurants which are directed at the general public.
- The signs
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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 common elements ‘HOT’ and ‘POINT’ (conjoined and separated) are meaningful words in certain territories, for example, in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a figurative mark consisting of a device and word. Whilst the word element is an invented word, ‘Hotpoint’, ‘Hot’ and ‘point’ are easily understood English words and the word would be dissected to this effect. Although the mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). The device is to the left of the word and is of a black rectangle with a white circle, within the rectangle, at the top. It is considered that neither element (the word or device) is clearly more distinctive or dominant than the other.
With regard to the contested sign, it is composed of two words ‘HOT and POINT’ and a complicated depiction which red circles and lines which are akin to oriental symbols or letters. The figurative element is considered to be weak for restaurant type services since it could indicate the type of food provided, i.e. oriental food. The words ‘HOT’ and ‘POINT’, included in both signs, are easily understood words with ‘HOT’ being defined as ‘having a high degree of heat or high temperature’ and ‘POINT’ as ‘the tapered, sharp end of a tool, weapon, or other object’ (both definitions taken from the Oxford English dictionary on 17/07/2017). The letters ‘IN’ in the word ‘POINT’ are in a slightly smaller font and in red but this does not detract the word from clearly being ‘POINT’. Whilst the device is above the words and slightly larger in size, no element is considered to be more dominant than the other.
Visually, the signs coincide in the words ‘HOT’ and ‘POINT’. Whilst these words are conjoined in the earlier mark and separated in the contested sign, given the ordinary meaning of ‘HOT’ and ‘POINT’, this does not reduce the visual similarity between the words. The signs differ insofar that they have entirely different figurative elements. 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).
Notwithstanding this, since each of the signs include ‘HOTPOINT’ (with and without a space), the signs are considered to be visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘HOT-POINT’, present identically in both signs. The devices in the respective signs will not be verbalised. Therefore, the signs are aurally identical.
Conceptually, both signs contain devices, with the earlier mark being clearly recognised as a square with a hole at the top and the contested sign including a device which is evocative of Asia and is entirely different. With regard to the word elements, although the word in the earlier trade mark is conjoined, it is an invented word. However, given the ordinary and natural meaning of ‘HOT’ and ‘POINT (as outlined above), the relevant consumer will recognise and understand these words. Taken literally, the combination of words could be understood to mean the point (of whatever the item is) is high in temperature. Therefore, the signs are considered to be conceptually highly similar.
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 claims that its mark is particularly distinctive by virtue of its reputation. However, it has not filed any evidence in support of this claim. 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.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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). This is known as the interdependency principle.
In the present case some of the services were found to be identical, some similar and the remaining services are dissimilar. The degree of attention paid by the relevant public is average, and the distinctive character of the earlier mark is average.
The signs are considered to be aurally identical, conceptually highly similar and visually similar to an average degree. In spite of the device elements being markedly different, they are weak in distinctive character. Therefore, the Opposition Division considers there to be a likelihood of confusion in respect of all the identical services. Applying the interdependency principle set out above, there is also a likelihood of confusion in respect of the services which are found to be similar.
Considering all the above, there is a likelihood of confusion on the part of the 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 Article 8(1)(b) EUTMR is upheld against the following services:
Class 39: Delivery of food by restaurants
Class 43: Restaurants; carvery restaurant services; snack-bars; Take-out restaurant services
Since the similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition cannot be successful against the remaining
Class 35: Restaurant management for others
Class 43: Booking of restaurant seats; Making reservations and bookings for restaurants and meals
To summarise, the opposition is partially well-founded on the basis of the opponent’s European Union trade mark registration No 3 630 852. It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, as listed above.
Since the opposition was only partially successful, the Article 8(5) EUTMR claims must now be assessed in respect of the remaining services.
REPUTATION – ARTICLE 8(5) EUTMR
The opponent claims to have a reputation in respect of its European Union trade mark registration No 3 405 081 ‘HOTPOINT’(word mark) and 3 630 852 (as shown above). It claims to have a reputation in the UK for various goods in classes 7 and 11 and services in class 39.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.
On 25/09/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 31/01/2016.
The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
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 will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Ioana MOISESCU |
Mark KING |
Cristina CRESPO MOLTO |
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.