OPPOSITION No B 2 696 246
Alois Dallmayr Kaffee oHG, Dienerstr. 14-15, 80331 München, Germany (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative)
a g a i n s t
HK4 Group Limited, 1 Colleton Crescent, Exeter Devon EX2 4DG, United Kingdom (applicant), represented by Ashfords Llp, Ashford House Grenadier Road, Exeter EX1 3LH, United Kingdom (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 696 246 is partially upheld, namely for the following contested services:
Class 43: Provision of facilities for the consumption of food and beverages.
2. European Union trade mark application No 14 684 963 is rejected for all the above services. It may proceed for the remaining goods and services, namely:
Class 7: Automatic vending machines.
Class 9: Computer application software for mobile devices and mobile phones, namely, software for consumers to access, menu data and store location information; electronic timers and counters; magnetic encoders; identity cards; cash cards; recorded media including computer software; safety covers for data processing electrical equipment and apparatus; safety alarms; protective and safety equipment; monitoring instruments.
Class 35: Retail and wholesale services in relation to automatic vending machines; business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount scheme; business information; advisory services for business management; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, printed forms, savings stamps, provision of information to customers and advice or assistance in the selection of goods brought together as above.
Class 38: The provision of access to internet services from within self-service restaurants, restaurants, coffee shops, cafés, cafeterias, bistros, canteens, snack bars, pizza bakery shops, bakeries, takeaway food premises, fast-food premises, bars, public houses, nightclubs, wine bars, hotels and other premises involved in the provision of food and beverage services.
Class 41: Entertainment.
Class 43: Temporary accommodation; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 684 963. The opposition is based on international trade mark registration No 1 244 388 designating Austria, Benelux and France and German trade mark registration No 302 014 053 936. The opponent invoked Article 8(1)(b) EUTMR.
- The goods and services
The goods on which the opposition is based are the following:
IR No 1 244 388:
Class 30: Coffee; coffee extracts; tea; tea extracts; cocoa; cocoa extracts; coffee substitutes; coffee-based, tea-based, chocolate-based and cocoa-based beverages, including mixtures and preparations therefore; non-alcoholic coffee, tea, cocoa and chocolate beverages; non-alcoholic, ready-to-drink coffee, tea, cocoa and chocolate preparations.
DE No 302 014 053 936:
Class 30: Coffee; coffee extracts; tea; tea extracts; cocoa; cocoa extracts; artificial coffee; mixtures for coffee-containing, tea-containing, chocolate-containing and cocoa-containing beverages; alcohol-free coffee, tea, cocoa and chocolate beverages; alcohol-free ready-to-drink coffee, tea, cocoa and chocolate preparations.
The contested goods and services are the following:
Class 7: Automatic vending machines.
Class 9: Computer application software for mobile devices and mobile phones, namely, software for consumers to access, menu data and store location information; electronic timers and counters; magnetic encoders; identity cards; cash cards; recorded media including computer software; safety covers for data processing electrical equipment and apparatus; safety alarms; protective and safety equipment; monitoring instruments.
Class 35: Retail and wholesale services in relation to automatic vending machines; business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount scheme; business information; advisory services for business management; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, printed forms, savings stamps, provision of information to customers and advice or assistance in the selection of goods brought together as above.
Class 38: The provision of access to internet services from within self-service restaurants, restaurants, coffee shops, cafés, cafeterias, bistros, canteens, snack bars, pizza bakery shops, bakeries, takeaway food premises, fast-food premises, bars, public houses, nightclubs, wine bars, hotels and other premises involved in the provision of food and beverage services.
Class 41: Entertainment.
Class 43: Provision of facilities for the consumption of food and beverages; temporary accommodation; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s and opponent’s lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 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 7
The contested automatic vending machines are apparatus using or applying mechanical power whereas the opponent’s goods in Class 30 belong to the food and drinks industry. Consequently, the nature of these goods is different. Although, as argued by the opponent, the goods applied for may be related to the opponent’s coffee, these sets of goods are usually not marketed by the same undertakings and have different methods of use and purposes. The purpose of coffee or related beverages is to quench thirst or act as a stimulant and the purpose of a vending machine is to dispense/sell goods.
Contrary to the opponent’s claims, the complementary relationship between these goods is not sufficiently pronounced in the sense that one is essential or important for the use of the other so that consumers may think that the responsibility for the manufacture of such products lies with the same undertaking. In the present case, although one may be essential or important for the use of the other or these goods could be used in combination, this is not sufficient for a finding of similarity, since the contested goods usually do not have the same commercial origin and distribution channels as the opponent’s goods. The relevant public for a vending machine is not the same as a consumer obtaining a drink through a vending machine and consumers are aware that producers of goods in Class 30 do not normally produce machines in Class 7. Accordingly, for all the above mentioned reasons these sets of goods are considered dissimilar.
Contested goods in Class 9
The contested computer application software for mobile devices and mobile phones, namely, software for consumers to access, menu data and store location information; electronic timers and counters; magnetic encoders; identity cards; cash cards; recorded media including computer software; safety covers for data processing electrical equipment and apparatus; safety alarms; protective and safety equipment; monitoring instruments are dissimilar to the opponent’s goods in Class 30. These sets of goods belong to entirely different industries (software, safety and protective instruments, cards, data carriers, etc. versus beverage industry). These goods differ in all of the relevant Canon criteria, as they differ in nature, purpose, method of use, producers, distribution channels and relevant public. They are neither in competition, nor complementary.
Contested services in Class 35
Retail services of automatic vending machines and retail shop services of automatic vending machines, printed forms, savings stamps and the opponent’s goods in Class 30 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.
Therefore, in view of the above, the contested retail and wholesale services in relation to automatic vending machines; the bringing together, for the benefit of others, enabling customers to conveniently view and purchase all of these goods from a retail shop, namely, automatic vending machines, printed forms, savings stamps are dissimilar to all of the opponent’s goods in Class 30.
The remaining contested business management; business administration; office functions; organisation, operation and supervision of loyalty schemes and incentive schemes; organisation, operation and supervision of sales incentive schemes; on-line administration and supervision of a discount scheme; business information; advisory services for business management; provision of information to customers and advice or assistance in the selection of goods brought together as above are dissimilar to all the opponent’s goods in Class 30. In general, the contested services are rendered by companies specialised in the specific field such as business administration and management consultants, marketing specialists, etc. The earlier trade mark registrations cover beverages for human consumption. The contested marketing, business information and business management consultancy and information and advisory services are clearly different in nature and purpose from the opponent’s goods. Furthermore, their origin, method of use, distribution channels, consumers and distribution channels do not coincide and they are neither complementary nor in competition with one another.
Contested services in Classes 38 and 41
The contested services in these classes cover provision of access to internet services in Class 38 and entertainment services in Class 41. The contested services are different in nature and purpose from the opponent’s goods. The fact that the contested telecommunications and entertainment services may be provided ‘in relation to drinks, tea, coffee, restaurants, coffee shops, cafés, etc.’ and that the opponent’s goods in Class 30 are (related to) tea and coffee products is not sufficient to find a similarity between them. As mentioned, the goods and services compared differ in nature and purpose. Furthermore, their method of use, their distribution channels, producers/providers and relevant public do not coincide and they are neither complementary nor in competition with one another. The fact that the subject matter of the services and the goods at stake may be similar/the same is not a relevant factor for finding a similarity and is not a reason to consider these goods and services complementary. Contrary to the arguments of the opponent, these goods and services do not have complementary relation, as there is no close connection between them in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. Their usual origin and/or distribution channels are so distinct that the relevant public will not attribute the same origin to them. Therefore, they are dissimilar.
Contested services in Class 43
The contested provision of facilities for the consumption of food and beverages are services related to serving of food and drinks directly for consumption. The mere fact that food and drinks are consumed in a facility such as a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26).
Nevertheless, in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). As hinted above, goods and services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking.
The mere fact that food and/or drinks are essential to the services of facilities such as restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).
On the other hand, consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs). Therefore, in the present case and for the reasons mentioned above, it is not excluded that the consumers may establish a link between the contested services and the opponent’s coffee in Class 30. Consequently, there is a low degree of similarity between these goods and services, as they can coincide in producers/ providers and distribution channels. Furthermore, they are complementary.
The contested temporary accommodation; provision of venues for parties, balls, weddings and events; hotel reservations; crèche services are services for providing accommodation, events venues, hotel reservations and day care services. These services are dissimilar to the opponent’s goods in Class 30. The nature, purpose and method of use of these services and goods are different. They do not have the same trade origin, distribution channels and they are not in competition. Therefore, 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 goods and services found to be similar to a low degree are directed at the public at large. In view of the nature of these goods and services, as well as the fact that they may be relatively inexpensive and are mass consumption goods and services, it is considered that the level of attention of the relevant public may vary from low to average.
- The signs
| ESPRESSO ARTIGIANO
|
ARTIGIANO
|
|
Earlier trade marks |
Contested sign |
The relevant territory is Austria, Benelux, France and Germany.
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).
Both marks are word marks. As such, they have no elements that could be considered clearly more dominant than other elements.
The contested sign consists of the verbal element ‘ARTIGIANO’ and the earlier marks (which are identical) are made up of the same word preceded by the additional element ‘ESPRESSO’.
The word ‘artigiano’ present in both signs has no meaning in the relevant territories and is, therefore, inherently distinctive. The word ‘espresso’ included in the beginning of the earlier mark will be widely associated by all the members of the relevant public with ‘a type of coffee’ (for example, espresso in German and Dutch and expresso in French) or ‘a bar’ (‘Espresso bar’ in German). Bearing in mind that the relevant goods are coffee, this element is non-distinctive for the goods, as it indicates their kind. Therefore, the relevant public will not pay as much attention to this non-distinctive element as to the other, more distinctive element of the earlier mark.
Visually, the signs coincide in the word ‘ARTIGIANO’, which represents the entirety of the contested sign and the second verbal element of the earlier mark. The signs differ in the initial verbal element ‘ESPRESSO’ of the earlier mark which has no counterpart in the contested sign. Although the differences in the signs are placed in the beginning of the earlier mark and this is visually noticeable, the differing element ‘ESPRESSO’ is non-distinctive and the consumers will focus on the remaining distinctive element of the earlier mark, which coincides in full with the contested sign. Therefore, the signs are considered visually highly similar.
Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to a high degree.
The concepts of the elements in the signs have been defined above. Consequently, the coinciding word ‘ARTIGIANO’ has no specific concept and the element ‘ESPRESSO’ is meaningful but it is non-distinctive. This means that it has no significant conceptual impact, as it will not be perceived as an indication of commercial origin. Consequently, since neither of the signs has a specific and relevant meaning, a conceptual comparison is not possible and 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.
- 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested goods and services are partly similar to a low degree and partly dissimilar to the opponent’s goods. The relevant goods and services are directed at the public at large and the level of attention may vary from low to average.
The signs are visually similar and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.
The similarities between the signs are on account of the common and normally distinctive element ‘ARTIGIANO’, which constitutes the totality of the contested mark and is the distinctive element in the earlier mark.
In the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a variation of the earlier mark, configured in a different way according to the type of services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the high degree of similarity between the signs is sufficient to induce a likelihood of confusion on the part of the relevant public in spite of the low degree of similarity between the goods and services.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 244 388 designating Austria, Benelux and France and German trade mark registration No 302 014 053 936.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to the goods of the earlier trade mark.
The rest of the contested goods and services are dissimilar. 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 these goods and services cannot be successful.
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 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
| Marzena MACIAK | Liliya YORDANOVA | Gueorgui IVANOV
|
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.