OPPOSITION No B 2 665 357

Narodowy Instytut Fryderyka Chopina, ul. Tamka 43, 00-355 Warsaw, Poland (opponent), represented by Magdalena Slifirczyk, ul. Szczęśliwicka 29/46, 02-353 Warsaw, Poland (professional representative)

a g a i n s t

Cafe Paterman Janusz Paterman, ul. Wolnosci 18, 41-500 Chorzów, Poland (holder), represented by Aleksandra Młoczkowska, ul. Twarda 4, 00-105 Warsaw, Poland (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 357 is upheld for all the contested goods and services.

2.        International registration No 1 251 023 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 251 023 . The opposition is based on European Union trade mark registration No 13 485 867 ‘CHOPIN’ and European Union trade mark registration No 11 931 581 ‘CHOPIN’. The opponent invoked Article 8(1)(b) EUTMR.

PREMILINARY REMARK

In parallel opposition proceedings B 2 672 106, the contested IR No 1 251 023 was refused protection in the EU for all goods in Class 32 by a final decision of 09/02/2017. The present opposition is, therefore, directed against all the remaining goods and services of the contested IR, namely those in Classes 29, 30, 34, 35, 36, 41 and 43.

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

EUTM No 13 485 867

Class 5:        Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

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 and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 35:        Advertising; Business management; Business administration; Office functions.

Class 41:        Education; Providing of training; Entertainment; Sporting and cultural activities.

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

EUTM No 11 931 581

Class 1:        Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.

Class 34:        Tobacco; Smokers' articles; Matches.

Class 36:        Insurance; Financial affairs; Monetary affairs; Real estate affairs.

The contested goods and services are the following:

Class 29:        Fruit-based desserts, whipped cream.

Class 30:        Rolls, breads, pastries, candies, desserts mousses [confectionery], ice cream-based desserts, fruit biscuits, sweets, chocolate, coffee, tea, cocoa, coffee-based beverages, coffee substitutes, flavors coffee, hot chocolate, coffee and iced tea, soluble beverages based on coffee and tea, cakes, cookies, pies, cakes with fruit, waffles, sorbets, ices, ice cream for soft drinks, pancakes, puddings, buns.

Class 34:        Pipes, cigars, cigarettes, cigarette cases, ashtrays, snuff, snuff tobacco, lighters for smokers.

Class 35:        Wholesale and retail services related to food and alcohol; wholesale and retail stores with food and alcohol; business consultancy services; catering and dining network management, namely business management; publishing promotional materials; advertising; advice on organizing and doing business.

Class 36:        Advice in financial matters, financial operations, financial services, financial advice in the field of franchising, for the purpose of keeping catering services and to organize and manage a network of eateries, especially in the conduct of cafes, restaurants, bars, service cafes, restaurants and bars, hotel services, cafe, restaurant and catering and food and drink supplying, service bar, fast food, snack bars, catering facilities associated with the administration of food and drinks at the bars, cafeterias, cafés, restaurants, canteens, preparing dishes to order and their delivery to external customers.

Class 41:         Catering services the organization of cultural and entertainment events, organization of exhibitions for cultural or educational, rental of premises for conferences, courses, demonstrations and symposiums, training and education of personnel working in the catering, organization and operation of conferences, symposia, seminars, orchestra services, organization of balls, playgrounds, discos, planning and organizing parties, club meetings and social.

Class 43:         Services related to managing cafes, namely cafe-restaurants, restaurants, bars, service cafes, restaurants and bars, hotel services, cafe, restaurant and catering and supply of food and beverages, bar services, fast food, snack-bars, catering services associated with the administration of food and drinks at the bars, cafeterias, cafes, restaurants, canteens, preparing dishes to order and their delivery to external customers-catering.

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 ‘especially’, used in the holder’s list 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 holder’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 29

The contested whipped cream is included in the broad category of the opponent’s milk products covered by the earlier EUTM No 13 485 867 in Class 29. Therefore, it is identical.

The contested fruit-based desserts are at least similar to the opponent’s preserved, frozen, dried and cooked fruits covered by the earlier EUTM No 13 485 867 in Class 29. They have the same or very similar nature, purpose and method of use. The goods also coincide in the distribution channels and sales outlets.

Contested goods in Class 30

Coffee (mentioned twice in the contested list of goods), tea, cocoa, ices are identically contained in the contested list of goods and the list of goods in Class 30 of the earlier EUTM No 13 485 867.

The contested breads are synonymous to the opponent’s bread covered by the earlier EUTM No 13 485 867 in Class 30 and are, therefore, identical.

The contested pastries are synonymous to the opponent’s pastry covered by the earlier EUTM No 13 485 867 in Class 30 and are, therefore, identical.

The contested rolls, fruit biscuits, cakes, pies, cakes with fruit, waffles, pancakes, buns are included in, or overlap with, the broad category of the opponent’s preparations made from cereals covered by the earlier EUTM No 13 485 867 in Class 30. Therefore, they are identical.

The contested candies, desserts mousses [confectionery], sweets, chocolate, cookies are included in, or overlap with, the broad category of the opponent’s confectionery covered by the earlier EUTM No 13 485 867 in Class 30. Therefore, they are identical.

The contested ice cream-based desserts, sorbets, ice cream for soft drinks are included in, or overlap with, the broad category of the opponent’s ices (understood as edible ices) covered by the earlier EUTM No 13 485 867 in Class 30. Therefore, they are identical.

The contested coffee-based beverages, flavors coffee, soluble beverages based on coffee are included in, or overlap with, the broad category of the opponent’s coffee covered by the earlier EUTM No 13 485 867 in Class 30. Therefore, they are identical.

The contested coffee substitutes are synonymous to the opponent’s artificial coffee covered by the earlier EUTM No 13 485 867 in Class 30 and are, therefore, identical.

The contested hot chocolate is included in, or overlaps with, the broad category of the opponent’s cocoa covered by the earlier EUTM No 13 485 867 in Class 30. This is because cocoa covers both cocoa powder and cocoa drinks, including hot ones. Therefore, these goods are identical.

The contested iced tea, soluble beverages based on … tea are included in, or overlap with, the broad category of the opponent’s tea covered by the earlier EUTM No 13 485 867 in Class 30. Therefore, they are identical.

The contested puddings are similar to a low degree to the opponent’s ices (understood as edible ices) covered by the earlier EUTM No 13 485 867 in Class 30. These goods coincide in the relevant consumers and distribution channels. Furthermore they are in competition.

Contested goods in Class 34

The contested cigars, cigarettes, snuff, snuff tobacco are included in the broad category of the opponent’s tobacco covered by the earlier EUTM No 11 931 581 in Class 34. It is considered that the term ‘tobacco’ is sufficiently broad to include cigarettes and other types of tobacco products such as cigars (see the decision of the Boards of Appeal of 25/07/2013 in case R 68/2013-1, p. 12-15). Therefore, these goods are identical.

The contested pipes, cigarette cases, ashtrays, lighters for smokers are included in the broad category of the opponent’s smoker’s articles covered by the earlier EUTM No 11 931 581 in Class 34. Therefore, they are identical.

Contested services in Class 35

Advertising is identically contained in the contested list of services and the list of services in Class 35 of the earlier EUTM No 13 485 867.

The contested business consultancy services; catering and dining network management, namely business management; advice on organizing and doing business are included in the broad category of, or overlap with, the opponent’s business management covered by the earlier EUTM No 13 485 867 in Class 35. Therefore, they are identical.

The contested publishing promotional materials is included in the broad category of the opponent’s advertising covered by the earlier EUTM No 13 485 867 in Class 35. Therefore, they are identical.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

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 or wholesale services in Class 35.

The contested services in Class 35 contain wholesale and retail services and wholesale and retail store services, all relating to food and alcohol. The earlier EUTM No 13 485 867 covers various types of food, such as milk products in Class 29 or pastry in Class 30. As to the term alcohol, in the absence of any further specification the Opposition Division considers that this term includes not only alcoholic beverages but also other types of alcohol such as alcohol for disinfecting sold for example in pharmacies (covered by the earlier EUTM No 13 485 867 under the term disinfectants in Class 5) or alcohol as a chemical substance used in the industry (covered by the earlier EUTM No 11 931 581 under the term chemicals used in industry in Class 1).

Therefore, the contested wholesale and retail services related to food, wholesale and retail stores with food are similar to a low degree to the opponent’s milk products in Class 29 or pastry in Class 30 covered by the earlier EUTM No 13 485 867. Furthermore, the contested wholesale and retail services related to alcohol, wholesale and retail stores with alcohol are similar to a low degree to the opponent’s disinfectants covered by the earlier EUTM No 13 485 867 in Class 5 or chemicals used in industry covered by the earlier EUTM No 11 931 581 in Class 1.

 

Contested services in Class 36

The contested advice in financial matters, financial operations, financial services, financial advice in the field of franchising, for the purpose of keeping catering services and to organize and manage a network of eateries, especially in the conduct of cafes, restaurants, bars, service cafes, restaurants and bars, hotel services, cafe, restaurant and catering and food and drink supplying, service bar, fast food, snack bars, catering facilities associated with the administration of food and drinks at the bars, cafeterias, cafés, restaurants, canteens, preparing dishes to order and their delivery to external customers are included in the broad category of the opponent’s financial affairs covered by the earlier EUTM No 11 931 581 in Class 36. Therefore, they are identical.

Contested services in Class 41

The contested catering services in Class 41 are listed in this class due to an obvious classification mistake because these services consist in the provision of food and drink which is a service proper to Class 43 according to the Nice classification. Consequently, it is considered that the contested catering services in Class 41 are included in the broad category of the opponent’s services for providing food and drink covered by the earlier EUTM No 13 485 867 in Class 43 and are, therefore, considered identical.

The contested organization of cultural … events is included in the broad category of the opponent’s cultural activities covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested organization of … entertainment events is included in the broad category of the opponent’s entertainment covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested services organization of exhibitions for cultural or educational will be interpreted as organization of exhibitions for cultural or educational purposes (in line with the original Polish list of the basic registration). The contested organization of exhibitions for cultural … [purposes] is included in the broad category of the opponent’s cultural activities covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical. The contested organization of exhibitions for … educational [purposes] is included in the broad category of the opponent’s education covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested rental of premises for conferences, courses, demonstrations and symposiums is included in, or overlaps with, the broad categories of the opponent’s education or providing of training covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested training … of personnel working in the catering is included in the broad category of the opponent’s providing of training covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested education of personnel working in the catering is included in the broad category of the opponent’s education covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested organization and operation of conferences, symposia, seminars is included in the broad category of the opponent’s education covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested orchestra services, organization of balls, playgrounds, discos are included in the broad category of the opponent’s entertainment covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

The contested planning and organizing parties, club meetings and social will be interpreted as planning and organizing parties, club meetings and social meetings (in line with the original Polish list of the basic registration). These contested services are included in the broad category of, or overlap with, the opponent’s entertainment covered by the earlier EUTM No 13 485 867 in Class 41. Therefore, they are identical.

Contested services in Class 43

The contested services related to managing cafes, namely cafe-restaurants, restaurants, bars, service cafes, restaurants and bars, cafe, restaurant and catering and supply of food and beverages, bar services, fast food, snack-bars, catering services associated with the administration of food and drinks at the bars, cafeterias, cafes, restaurants, canteens, preparing dishes to order and their delivery to external customers-catering are included in the broad category of the opponent’s services for providing food and drink covered by the earlier EUTM No 13 485 867 in Class 43 and are, therefore, considered identical.

The contested hotel services are included in the broad category of the opponent’s temporary accommodation covered by the earlier EUTM No 13 485 867 in Class 43 and are, therefore, considered identical.

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 (to various degrees) are directed either at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention of the public will vary from low to average to high, depending on the specialised nature of the goods/services, the frequency of purchase and their price. For example, the degree of attention will be low for breads or sweets in Class 30, average for hotel services in Class 43 and high for advice in financial matters in Class 36.

3. The signs

CHOPIN
Earlier trade marks	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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both parties submitted numerous arguments concerning the legal and factual situation relating to the name / trade mark ‘Chopin’ in Poland. For reasons of procedural economy, the Opposition Division finds it appropriate not to address these arguments and, therefore, to exclude the territory of Poland from the comparison of the signs. Consequently, the comparison of the signs and the subsequent assessment of likelihood of confusion will focus on the territory of the European Union with the exception of Poland.

Both earlier trade marks are word marks protecting the same term ‘CHOPIN’. For the sake of simplicity, both marks will hereinafter be referred to in the singular.

The relevant public will perceive the word ‘CHOPIN’ in the earlier trade mark and in the contested sign as the surname of the famous music composer Fryderyk (Frédéric) Chopin. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The contested sign is a figurative mark containing a large word ‘CHOPIN’ in yellow and a much smaller word ‘CAFE’ in white placed on a green rectangle underneath the letters ‘-HOPI-’, the whole being encased in a white rectangle with thin green and yellow edging.

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The element ‘CAFE’ of the contested sign will be associated either with ‘coffee’ or with ‘café’ (an establishment serving drinks and snacks) by the consumers throughout the relevant territory. This is because the word as such exists in certain EU languages (such as Spanish or French) or because it is close to its equivalent in the relevant EU language. Bearing in mind that the relevant goods and services include coffee, coffee-based beverages or services provided by a café, this element is either weak or non-distinctive for coffee, coffee-based beverages, flavors coffee, soluble beverages based on coffee, coffee substitutes in Class 30, catering services in Class 41 and services related to managing cafes, namely cafe-restaurants, restaurants, bars, service cafes, restaurants and bars, cafe, restaurant and catering and supply of food and beverages, bar services, fast food, snack-bars, catering services associated with the administration of food and drinks at the bars, cafeterias, cafes, restaurants, canteens, preparing dishes to order and their delivery to external customers-catering in Class 43. The element ‘CAFE’ is normally distinctive for the remaining contested goods and services.

As regards the contested sign, its figurative elements consist of common geometric shapes depicted in ordinary colours. These elements are of a purely decorative nature and have, therefore, a very low distinctiveness, if any.

The element ‘CHOPIN’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the word ‘CHOPIN’ which is the only element of the earlier trade mark. In the case of the contested sign, ‘CHOPIN’ is the most dominant element and, for some of the goods and services, also the most distinctive element of the sign. The marks differ in the additional elements of the contested sign which have no counterpart in the earlier trade mark, namely the word ‘CAFE’, the figurative elements and the colours. All these elements are either weak / non-distinctive or are relatively small.

Therefore, the signs are visually highly similar.

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 ‛CHOPIN’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CAFE’ of the contested mark, which have no counterparts in the earlier sign. Nevertheless, this element is relatively small and is either weak or non-distinctive for part of the goods and services. Consequently, it is less likely to be pronounced.

Therefore, the signs are highly similar aurally.

Conceptually, reference is made to the above findings concerning the meaning of the words ‘CHOPIN’ and ‘CAFE’. Given that ‘CHOPIN’ is the dominant component of the contested sign and ‘CAFE’ is either weak or non-distinctive for part of the goods and services, the marks are considered highly similar conceptually.

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 are partially identical, partially similar and partially similar to a low degree. The overall impression created by the marks is highly similar in view of the high degree of visual, aural and conceptual similarity between the marks. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the public will vary between low, average and high.

Considering all the above, there is a likelihood of confusion on the part of the relevant public, namely in the European Union except Poland. 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.

The high degree of similarity of the marks outweighs the low degree of similarity of some of the goods/services and the high degree of attention of the public for some of the goods/services.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 13 485 867 and No 11 931 581. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 holder 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

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

Ric WASLEY

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.