OPPOSITION No B 2 567 959

Font Salem, S.L., Ptda. del Fronton, s/n, 46843 Salem (Valencia), Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

TS Food GmbH, Tübinger Str. 60, 72108 Rottenburg, Germany (applicant), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative).

On 20/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 567 959 is upheld for all the contested services, namely

Class 43:        Providing food and drink; restaurant services; self-service restaurants.

2.        European Union trade mark application No 14 116 586 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 116 586, namely against all the services in Class 43. The opposition is based on, inter alia, European Union trade mark registration No 9 102 492. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 European Union trade mark registration No 9 102 492.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 9 102 492.

In the present case the contested trade mark was published on 19/06/2015.

Earlier European Union trade mark No 9 102 492 was registered on 28/09/2010. Therefore, the request for proof of use is inadmissible.

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 on which the opposition is based are, inter alia, the following:

Class 32:        Beer.

The contested services are the following:

Class 43:        Providing food and drink; restaurant services; self-service restaurants.

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.

The contested services providing food and drink; restaurant services; self-service restaurants covers services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended to serve food and drinks directly for consumption. It is clear that when compared with the opponent’s beers in Class 32 they have a different nature.  

However, in certain situations these services and goods 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). Goods or 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.

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). In the present case, it can be expected that the producers/providers of these goods and services are the same. Thus, the Opposition Division deems that these goods and services are similar to a low degree.

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 similar to a low degree are directed at the public at large. The degree of attention will be average.

3. The signs

BURGEMEESTER	BURGERMEISTER Café Gino
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian and Spanish-speaking part of the relevant public.

Both marks in dispute are word marks. The earlier mark is the word ‘BURGEMEESTER’ while the contested mark consists of the three words ‘BURGERMEISTER Café Gino’.

In relation to both signs, it is reasonable to assume that the public in the relevant territory will recognise in the word ‘BURGERMEISTER’ of the contested sign, which in Bulgarian and Spanish have no meaning per se, the English word ‘burger’, which is widely understood as pieces of meat or vegetables that are pressed together, cooked in a flat round shape and served in a bread roll (see online Macmillan Dictionary). In view of the nature of the services at hand, it is likely to expect that this element is weak for the services in Class 43, in which it is normal to serve, together with drinks and other kind of foodstuffs, burgers. Also, the word ‘Café’ is likely to be understood by both the Bulgarian and Spanish-speaking consumers as designating a small or inexpensive restaurant serving light refreshments. In this case, this element is deemed to be non-distinctive in relation to all the services in Class 43, which can all be rendered by a café. The remaining elements of the contested sign, namely ‘-MEISTER’ and ‘GINO’ are meaningless and therefore distinctive. The earlier mark has no elements that could be considered weak or non-distinctive in relation to beer in Class 32.

The marks in dispute have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘BURGE(x)ME(x)STER’ of the words ‘BURGEMEESTER’ and ‘BURGERMEISTER’. As regards the letters ‘BURGER-’, of the contested sign, they are weak elements. However, they differ in the additional eight letter ‘E’ of the earlier mark, in the additional letters ‘R’ and ‘I’ of the word ‘BURGERMEISTER’ of the contested sign and in the last two words ‘Café Gino’ of the contested sign, the element ‘Café’ being a non-distinctive element of the contested sign.

Account must be taken on the fact that the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BURGE(x)ME(x)STER’ of both signs. As regards the letters ‘BURGER-’ in the case of the contested sign, they are weak elements The pronunciation differs in the sound of the letters ‘R’ and ‘I’ of the word ‘BURGERMEISTER’ and in the last two words ‘Café Gino’ of the contested sign, the element ‘Café’ being a non-distinctive element of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the marks are not similar to the extent that they both make reference to the semantic content of ‘burger’, although account must be taken on the fact that this element is weak as concerns the contested sign. From a conceptual point of view a difference between the signs also exists due to the presence of the word ‘Café’ of the contested sign. However, this element is non-distinctive and it is therefore to be expected that it will be disregarded. As the signs will be associated with a similar meaning, the signs are conceptually 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.

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

The goods and services covered by the trade marks in dispute have been found similar to a low degree identical.

The distinctiveness of the earlier mark must be seen as normal while the level of attention is expected to be average.

It is true that the signs ‘BURGEMEESTER’ on one hand and ‘BURGERMEISTER Café Gino’ on the other, display some differences. However, at least as regards one of the additional elements of the contested sign, namely the word ‘Café’, it can be expected that it will play a secondary role due to its non-distinctive character, for the reasons explained above in details in section c) of the present decision.

Furthermore, these additional elements, namely ‘Café Gino’ are only the second and the third word of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Additionally, the first element ‘BURGERMEISTER’ of the contested sign is alone longer than the two other elements of the sign together. The fact that a part of it, namely the word ‘BURGER’, will be recognized and considered as a weak element is in principle not capable to offset the strong similarities this part of the signs displays in when compared to the earlier mark only element ‘BURGEMEESTER’.

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 view of all the above, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs while the additional element of the contested sign, for the reasons explained in the previous paragraphs, are destined to play a secondary role.

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 covered are from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian and Spanish-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 opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 102 492. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 9 102 492 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

Vita VORONECKAITE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.