CANCELLATION No 12 761 C (INVALIDITY)

Selia, Rue Henri Mondor Biopôle Clermont Limagne, 63360 Saint-Beauzire, France (applicant), represented by Regimbeau, 20, rue de Chazelles, 75847, Paris Cédex 17, France (professional representative)

a g a i n s t

Consorzio Enjoy Apulia, Via Benedetto Croce 17, 70021 Acquaviva delle Fonti (BA), Italia (EUTM proprietor).

On 06/06/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 11 632 494 is declared invalid for some of the contested goods and services, namely:

Class 33:         Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anise [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.

Class 43:         Services for providing food and drink; cafés; cafeterias; canteens; restaurants; self-service restaurants; bar services; food and drink catering; snack-bars.

3.        The European Union trade mark remains registered for all the remaining goods and services, whether contested or not, namely:

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; anchovy; ajvar [preserved peppers]; white of eggs; albumen for culinary purposes; alginates for culinary purposes; salted meats; aloe vera prepared for human consumption; peanuts, processed; spiny lobsters, not live; herrings; milk beverages, milk predominating; broth; soups; fruit peel; butter; peanut butter; cocoa butter; coconut butter; game, not live; meat; meat, preserved; pork; caviar; gherkins; foods prepared from fish; onions, preserved; cranberry sauce [compote]; compotes; broth concentrates; shellfish, not live; jams; preserved garlic; meat, tinned [canned (am.)]; fruits, tinned [canned (am.)]; vegetables, tinned [canned (am.)]; fish, tinned [canned (am.)]; sauerkraut; buttercream; silkworm chrysalis, for human consumption; croquettes; crustaceans, not live; dates; mussels, not live; non-alcoholic egg nog; seaweed extracts for food; meat extracts; soya beans, preserved, for food; fish meal for human consumption; beans, preserved; liver; milk ferments for culinary purposes; fish fillets; potato flakes; cheese; potato fritters; milk shakes; fruit chips; frozen fruits; fruit, preserved; fruit preserved in alcohol; fruit, stewed; frosted fruits; mushrooms, preserved; shrimps, not live; prawns, not live; lobsters, not live; crayfish, not live; meat jellies; gelatine; jellies for food; fruit jellies; edible fats; coconut fat; hummus [chickpea paste]; isinglass for food; vegetable soup preparations; kefir [milk beverage]; kimchi [fermented vegetable dish]; kumys [kumyss] [milk beverage]; bacon; milk; curd; condensed milk; soya milk [milk substitute]; albumin milk; lecithin for culinary purposes; vegetables, preserved; vegetables, cooked; vegetables, dried; lentils, preserved; fruit salads; vegetable salads; almonds, ground; margarine; marmalade; fatty substances for the manufacture of edible fats; animal marrow for food; fat-containing mixtures for bread slices; vegetable mousses; fish mousses; edible birds' nests; coconut, desiccated; nuts, prepared; edible oils; olive oil for food; coconut oil; rape oil for food; sunflower oil for food; corn oil; palm kernel oil for food; bone oil, edible; palm oil for food; linseed oil for culinary purposes; sesame oil; olives, preserved; sea-cucumbers, not live; oysters, not live; whipped cream; cream [dairy products]; tomato purée; liver pâté; potato chips; low-fat potato chips; pectin for culinary purposes; fish, preserved; salted fish; peas, preserved; poultry, not live; pollen prepared as foodstuff; fruit pulp; preparations for making bouillon; preparations for making soup; rennet; fish, not live; charcuterie; milk products; ham; prostokvasha [soured milk]; apple purée; ryazhenka [fermented baked milk]; sausages; salmon; sausages in batter; black pudding; sardines; suet for food; processed sunflower seeds; processed seeds; whey; smetana [sour cream]; fruit-based snack food; pickles; piccalilli; lard for food; vegetable juices for cooking; tomato juice for cooking; tahini [sesame seed paste]; truffles, preserved; tofu; tuna fish; tripe; yolk of eggs; eggs; snail eggs for consumption; processed fish spawn; powdered eggs; raisins; toasted laver; clams [not live]; yogurt; ginger jam.        

Class 43:        Temporary accommodation; accommodation bureaux [hotels, boarding houses]; day-nurseries [crèches]; retirement homes; tourist homes; providing campground facilities; rental of temporary accommodation; rental of lighting apparatus other than for theatrical sets or television studios; rental of cooking apparatus; rental of transportable buildings; rental of drinking water dispensers; rental of meeting rooms; rental of chairs, tables, table linen, glassware; rental of tents; boarding for animals; boarding houses; hotel reservations; temporary accommodation reservations; boarding house bookings; hotels; holiday camp services [lodging]; motels.

4.        Each party bears its own costs.

REASONS

On 01/04/2016 the applicant filed an application for a declaration of invalidity against European Union trade mark No 11 632 494 ENJOY APULIA (word mark) (‘the contested EUTM’), filed on 06/03/2013 and registered on 27/11/2013.

The request is directed against some of the goods and services covered by the contested EUTM, namely:

Class 33:         Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anise [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.

Class 43:         Services for providing food and drink; cafés; cafeterias; canteens; restaurants; self-service restaurants; hotels; bar services; food and drink catering; snack-bars.

The application is based on French trade mark registration No 113 795 764 ‘ENJOY’ (word mark), filed and registered on 07/01/2011, for the following goods on which the application is based:

Class 33:         Alcoholic beverages (except beers); ciders; digesters (liqueurs and spirits); wines, spirits; alcoholic extracts or essences.

The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks because the conflicting goods and services are identical or similar and the signs ‘ENJOY’ and ‘ENJOY APULIA’ are similar. The average consumer will therefore be confused as regards the commercial origin of the goods and services covered by the signs.

In its response, the EUTM proprietor states that the earlier mark ‘ENJOY’ is weak in connection with the relevant goods and, therefore, its scope of protection is pretty narrow. The EUTM proprietor points out that the applicant filed no evidence proving that its mark has acquired enhanced distinctiveness or reputation. Therefore, given that the earlier mark consists of a generic expression, while the contested mark contains a further distinctive element (‘APULIA’), there is no risk of confusion between the signs.    

The applicant replies that the term ‘ENJOY’ does not convey any information regarding the kind, quality, quantity, intended purpose, value, geographical origin or any other characteristics of the earlier goods. In the applicant’s view, just because a term may have significance in English, does not automatically prevent that term from being used as a trade mark. Therefore, since the earlier sign is fully reproduced in the contested EUTM, there is a likelihood of confusion.

The EUTM proprietor did not file any observations in reply

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 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 goods on which the application is based are the following:

Class 33:         Alcoholic beverages (except beers); ciders; digesters (liqueurs and spirits); wines, spirits; alcoholic extracts or essences.

The contested goods and services are the following:

Class 33:         Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anise [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.

Class 43:         Services for providing food and drink; cafés; cafeterias; canteens; restaurants; self-service restaurants; hotels; bar services; food and drink catering; snack-bars.

Contested goods in Class 33

The contested alcoholic beverages (except beers) (repeated twice in the contested good’s list), spirits [beverages], alcoholic essences, alcoholic extracts, cider and wine are equally covered by the earlier mark. These goods are, therefore, identical.

The contested brandy, peppermint liqueurs, rice alcohol, bitters; anise [liqueur], anisette [liqueur], aperitifs, arak [arrack], alcoholic beverages containing fruit, pre-mixed alcoholic beverages, other than beer-based, distilled beverages, cocktails, curacao, digesters [liqueurs and spirits], gin, hydromel [mead], kirsch, liqueurs, nira [sugarcane-based alcoholic beverage], rum, sake, perry, piquet, vodka, whisky are all included in the broad category alcoholic beverages (except beers) covered by the applicant’s mark. Thus, these goods are also identical.

As for the remaining contested fruit extracts, alcoholic, they are included in the wider category alcoholic extracts of the earlier sign. It follows that they are identical.

Contested services in Class 43

As a preliminary remark, it is recalled that goods or services can be considered complementary when 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 contested services for providing food and drink; cafés; cafeterias; canteens; restaurants; self-service restaurants; bar services; food and drink catering; snack-bars essentially cover restaurant activities, such as catering, cafeterias and snack bars, which are intended to serve food and drinks directly for consumption. The earlier goods in Class 33 include, among others, alcoholic beverages (except beers) in Class 33.

In certain situations these conflicting goods and services can be complementary (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). Indeed, as above recalled, the contested services involve providing guests with food and drink, with the result that the earlier goods are complementary to the earlier services. Furthermore, drinks may be offered for sale in places in which food and drink are served. Such goods are therefore used and offered in restaurants, cafés, cafeterias, canteens, self-service restaurants, bars and are also part of catering services. These goods and services are consequently closely connected (see, by analogy, 13/04/2011, T-345/09, Puerta de Labastida, EU:T:2011:173, § 52).

Therefore, there is a low degree of similarity between the abovementioned contested services relating, amongst others, to the serving of drinks and the earlier goods alcoholic beverages (except beers).

On the other hand, the same considerations cannot be applied to the contested hotels.

Such services address the needs of travelers who, for whatever reasons, have to spend the night away from home. While it is true that hotels may offer breakfast or meals together with the accommodation, consumers will not assume that the food and drink provided in the hotel restaurant have been produced by the hotelier. The same applies with respect to the so-called minibars which are frequently found in hotel rooms. Food and beverages are not an indispensable element of hotel services and consumers are well aware that the snacks and beverages of the minibar have a different commercial origin than that of the accommodation provided. The hotel services and all the earlier goods in Class 33 have different natures, intended purposes and methods of use. Their producers and providers, distribution channels and relevant publics are also different. Consequently, they are dissimilar.

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 conflicting goods and services target consumers at large, whose level of attention is average.

3. The signs

ENJOY	ENJOY APULIA
Earlier trade mark	Contested trade mark

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

In its observations, the EUTM proprietor states that the earlier mark ‘ENJOY’ is weak as it consists of an expression that is generically used in connection with the relevant goods and services.

The word ‘ENJOY’ is an English term meaning to have a good time to take pleasure or satisfaction in something (source: www.merriam-webster.com/dictionary/enjoy). While it is true that such word might evoke an advertising message to English speakers, on the other hand it has to be recalled that the applicant’s earlier mark is a French trade mark registration and, therefore, that the relevant territory is France. To such extent, the Cancellation Division considers that a significant majority of French consumers, and thus the relevant average consumer, are not likely to grasp its meaning.

As to the second element of the contested EUTM, the parties argue that the relevant public will understand the term ‘APULIA’ as a reference to the Italian Region Puglia. Nonetheless, as above stated, given that the relevant public consists of the French consumers, and taking also into account that the French equivalent for ‘Apulia’ is Pouilles, it is reasonable to affirm that such reference to the Italian territory will not be perceived.

It follows from the above that the words ‘ENJOY’ and ‘APULIA’ are both distinctive.

In light of the above considerations, the signs are visually and aurally similar to an average degree to the extent that they coincide in the term ‘ENJOY’ which constitutes the whole earlier mark and the first element of the contested sign, which is normally the part that attracts more the public’s attention (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65).

Furthermore, the fact that the earlier mark is entirely contained in the contested EUTM constitutes an indication of visual and aural similarity between the signs (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 40; and 21/03/2011, T-372/09, Gold Meister, EU:T:2011:97, § 27).

On the other hand, since neither of the marks will evoke a clear concept to the French public, a conceptual comparison is not possible (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 69). Thus, 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.

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.

Since the applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In light of the above analysis on the fact that French consumers will understand the meaning of the word ‘ENJOY’, it can be concluded that the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods and services were found to be partly identical, partly similar to a low degree and partly dissimilar to the applicant’s earlier goods.

No likelihood of confusion within the meaning of Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR can arise where the goods and services at issue are not at least similar to some degree. Therefore, the request for invalidity must be rejected for the contested services hotels found to be dissimilar to the earlier goods.

For the remaining identical or similar goods and services, according to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

Furthermore, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (04/05/2005, T 22/04, Westlife, EU:T:2005:160, § 40).

The comparison of the signs has shown that the signs are visually and phonetically similar to an average degree and, in relation to the French speaking public, the signs evoke no concept.

Taking into account that, in the present case, the earlier sign ‘ENJOY’ is entirely included at the beginning of the contested EUTM, the presence of the further element ‘APULIA’ of the contested mark, despite being distinctive, is not sufficient to exclude that consumers will conclude that the goods and services at issue come from the same or from economically-linked undertakings.

As above mentioned, the Cancellation Division is not persuaded by the EUTM proprietor’s claim that implies that the element ‘ENJOY’ is weak. Indeed, it cannot be considered as a term which is generally used or understood by the French public.

In addition, even the finding of a weak distinctive character for the earlier mark does not preclude the conclusion that there exists a likelihood of confusion between the marks.

Indeed, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, on the one hand, and a contested EUTM which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). In the case at hand, the earlier mark is totally included in the contested sign and the marks are similar overall.

In light of all the foregoing, taking also into account the principles of interdependence, there is reason to assume that the French relevant public may be misled into thinking that the goods and services bearing the overall similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked, including lowly similar services.

Therefore, the request for a declaration of invalidity is well founded on the basis of the applicant’s EU trade mark as far as the goods and services at issue have been found to be identical and similar (to different degrees).

It follows from the aforesaid that the contested EUTM must be invalidated for the following goods and services:

Class 33:         Alcoholic beverages (except beers); brandy; peppermint liqueurs; rice alcohol; spirits [beverages]; bitters; anise [liqueur]; anisette [liqueur]; aperitifs; arak [arrack]; alcoholic beverages, except beer; alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; distilled beverages; cocktails; curacao; digesters [liqueurs and spirits]; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; hydromel [mead]; kirsch; liqueurs; nira [sugarcane-based alcoholic beverage]; rum; sake; cider; perry; piquette; wine; vodka; whisky.

Class 43:         Services for providing food and drink; cafés; cafeterias; canteens; restaurants; self-service restaurants; bar services; food and drink catering; snack-bars.

The application for a declaration of invalidity is not successful insofar as the remaining dissimilar services hotels are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Jessica LEWIS

Pierluigi M. VILLANI

José Antonio GARRIDO OTAOLA

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.