OPPOSITION DIVISION
OPPOSITION No B 2 818 261
Colombo & Valencia SL, C/ Princesa, 14, 08003 Barcelona, Spain (opponent),
represented by Marquespatent, S.L., Tuset, 34 Principal, B-C-D, 08006 Barcelona,
Spain (professional representative)
a g a i n s t
Fonte Fresco Ltd., 12 B zh.k. Bokar, 1404 Sofia, Bulgaria (applicant).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 818 261 is upheld for all the contested service, namely
Class 43: Services for providing food and drink; juice bars; hookah bar
services; salad bars; café services; bistro services; snack-bars; delicatessens
[restaurants]; grill restaurants; wine bar services.
2. European Union trade mark application No 15 562 788 is rejected for all the
contested services. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods and services of
European Union trade mark application No 15 562 788 ‘BRUTALE’, namely against
all the services in Class 43. The opposition is based on European Union trade mark
registration No 12 578 514 ‘BRUTAL’. 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
Decision on Opposition No B 2 818 261 page: 2 of 4
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The services
The services on which the opposition is based are the following:
Class 43: Services for providing food and drink, restaurant, cafeteria, bar.
The contested services are the following:
Class 43: Services for providing food and drink; juice bars; hookah bar services;
salad bars; café services; bistro services; snack-bars; delicatessens [restaurants];
grill restaurants; wine bar services.
The contested services are either identically included in the opponent’s list of
services, or encompassed by one of the broader categories covered by the earlier
mark. Therefore, all the services are identical.
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 services are directed at the public at large with an average
degree of attention.
c) The signs
BRUTAL BRUTALE
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).
Both signs are composed by a single word with no meaning in relation to the relevant
services. The earlier sign ‘BRUTAL’ will be understood as referring to ‘savage, fierce’
by the majority of the relevant public because it is either an existing term in part of
the languages of reference, for instance in English and Spanish, or close variations
thereof (such as brutalus in Lithuanian or brutalno in Slovenian) exist in the different
languages of reference. The same is applicable to the contested sign ‘BRUTALE’.
Decision on Opposition No B 2 818 261 page: 3 of 4
No element can be identified in the signs which could be perceived as more
distinctive than others.
Visually and aurally (irrespective of the different pronunciation rules in different parts
of the relevant territory), the signs coincide in all their letters/phonemes with the
exception of the last letter/phoneme ‘E’ of the contested sign. Therefore, the signs
are visually and aurally highly similar. Moreover, for part of the public, as the French-
speaking consumers, they are aurally identical as the final ‘E’ in the contested sign
will not be pronounced.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived by the majority of the
public as referring to the same concept, they are identical.
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.
In the present case, the earlier trade mark as a whole has no meaning for any of the
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
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 services were found to be identical. The signs are visually and aurally similar to a
high degree and, for a significant part of the public, conceptually identical. Moreover,
for part of the public (i.e. the French public), the signs are even aurally identical. The
relevant public’s attention is average and the distinctiveness of the earlier mark is
normal. 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 12 578 514. It follows that the contested trade mark
must be rejected for all the contested services.
Decision on Opposition No B 2 818 261 page: 4 of 4
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Claudia ATTINÀ Ana María MUÑIZ
RODRIGUEZ
Michal KRUK
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.