OPPOSITION No B 2 769 910
SCRA-ITAL SRL, Corso Buenos Aires 64, 20124 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C.SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy
(professional representative)
a g a i n s t
Kiva Foods S.L., Plaza Pompeyo 1 2ºC, 31014 Pamploma, Spain (applicant), represented by Marks & Us Marcas Y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)
On 08/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 769 910 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services in Classes 30 and 43 of European Union trade mark application No 15 522 667. The opposition is based on European Union trade mark registration No 14 571 012 for Class 43. The opponent invoked Article 8(1)(a) and (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 goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant 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 earlier figurative mark is composed of a stylized representation of a bull and beneath it the element ‘BARBACOA’ depicted in a fanciful script. There are no elements that are visually more eye catching then others.
The contested mark is composed of a black square in which a white rectangular is placed, depicting the lid of a barbecue with the stylized word element ‘El’ (which means ‘the’ in Spanish) written on it in white. Beneath the lid, the word ‘JEFE’ is placed in capital red letters. The element ´JEFE´, which means ‘a military or political leader’ in Spanish (information extracted from Collins English Dictionary on 1/09/2017 at https://www.collinsdictionary.com/es/diccionario/ingles/jefe) is clearly visually outstanding in the contested mark due to its central position, colour and size. At the bottom of the mark, hardly illegible, the image of a barbecue fork is placed. Through part of the fork runs the word ´barbacoa´ in very small italic letters.
In relation to the relevant goods and services, the Spanish word ´barbacoa´, will be understood in major part of the relevant territory as barbecue, meaning ‘a meal cooked out of doors over an open fire’ information extracted from Collins English Dictionary on 1/09/2017 at http://www.collinsdictionary.com/dictionary/english/) either because of its origin in Spanish or due to the fact that the English equivalent is used in other languages, such as Romanian, Czech, Dutch, French, Italian, Slovak and Hungarian.
The element ‘BARBACOA’ lacks any distinctive character meaning that it refers either to the type of restaurant or the taste of the relevant goods. Therefore, in either of the signs, if perceived in case of the contested sign, this element will not be attributed any trade mark significance in the context of the relevant goods and services. Consequently, when encountering the signs at issue the public will focus more attention on the elements that are capable of indicating commercial origin, namely the stylization of all the elements in the earlier mark and the element ‘JEFE’ in the contested sign.
In its observations, the opponent argues that the Office could have requested a disclaimer in accordance with – applicable at the time – Article 37(2) CTMR, for the element ‘barbacoa’. However, the lack of a disclaimer does not automatically render this expression distinctive for the part of the relevant public.
Further, the opponent claimed that the earlier trade mark is very famous around the world, but the only documents filed by the opponent are some images taken from the website of the opponent’s company giving a random number of visitors of that website, which is clearly insufficient evidence to establish whether the earlier mark enjoys an enhanced distinctive character in the relevant territory.
Visually and aurally, the signs only coincide in the non-distinctive element ´barbacoa´ if perceived at all in the contested sign. Due to the dominance of the element ‘JEFE’ in the contested sign, it is even reasonable to assume that ‘barbacoa’ in the contested sign will not even be pronounced and therefore completely ignored.
Therefore, the signs are considered visually and aurally dissimilar.
Conceptually, the signs are dissimilar because they overlap in a non-distinctive element and the differentiating elements, of e.g. a bull, convey different distinctive concepts.
As the signs coincide only in a non-distinctive element, which most probably will be ignored in the contested mark due to its position and size, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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Francesca DRAGOSTIN
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Cynthia DEN DEKKER |
Ioana MOISESCU |
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.