OPPOSITION No B 2 658 170

Espresso House Sweden AB, Hanögatan 9, 211 24 Malmö, Sweden (opponent), represented by Awapatent AB, Matrosgatan, 1, 211 18 Malmö, Sweden (professional representative)

a g a i n s t

ΣΤΡΑΒΕΛΑΣ ΑΘΑΝΑΣΙΟΣ, Κοντογεωργακη 14, 59100 βεροια, Greece (applicant)

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 658 170 is upheld for all the contested goods.

 

2.        European Union trade mark application No 13 893 953 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 893 953. The opposition is based on, European Union trade mark registration No 11 153 897. The opponent invoked Articles 8(1)(b) and 8(5) 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 29:         Meat, fish, poultry and game; meat extracts; preserved, dried, and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and other 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; aniseed; aromatic preparations for food; pastries; baking powder; royal jelly; baking soda [bicarbonate of soda for cooking purposes]; bee glue; ice cream (binding agents for -); sausage binding materials; bean meal; bread; buns; chocolate; chocolate-based beverages; chocolate beverages with milk; chow-chow [condiment]; chutneys [condiments]; chicory [coffee substitute]; corn flakes; couscous [semolina]; crackers; curry [spice]; essences for foodstuffs, except etheric essences and essential oils; tarts; coulis (fruit -) [sauces]; thickening agents for cooking foodstuffs; chips [cereal products]; fruit jellies [confectionery]; frozen yogurt [confectionery ices]; fondants [confectionery]; ice cream; frosting [icing] (cake -); glucose for culinary purposes; gluten prepared as foodstuff; gluten additives for culinary purposes; groats for human food; turmeric for food; halvah; oat-based food; oat flakes; oatmeal; sea water for cooking; honey; infusions, not medicinal; ginger [spice]; ice for refreshment; edible ices; iced tea; ferments for pastes; yeast; peanut confectionery; confectionery for decorating Christmas trees; coffee; coffee-based beverages; coffee beverages with milk; coffee flavorings [flavourings]; artificial coffee; cocoa; cocoa-based beverages; cocoa beverages with milk; cocoa products; cake powder; pastry; candy; cinnamon [spice]; capers; sweetmeats [candy]; ketchup [sauce]; biscuits; cooking salt; caramels [candy]; confectionery; barley meal; meat pies; meat gravies; relish [condiment]; seasonings; cloves [spice]; spices; allspice; bread rolls; flour-milling products; liquorice [confectionery]; stick liquorice [confectionery]; linseed for human consumption; golden syrup; mayonnaise; hominy; hominy grits; corn meal; macaroni; oats (crushed -); corn, milled; barley (crushed -); malt for human consumption; malt extract for food; malt biscuits; maltose; macaroons [pastry]; almond confectionery; almond paste; semolina; marinades; marzipan; molasses for food; meal; farinaceous foods; meat tenderizers, for household purposes; mousses (chocolate -); mousses (dessert -) [confectionery]; nutmegs; muesli; mint for confectionery; ice, natural or artificial; noodle-based prepared meals; noodles; beer vinegar; coffee (unroasted -); weeds [condiment]; cheeseburgers [sandwiches]; unleavened bread; pies; pancakes; peppers [seasonings]; pasta; lozenges [confectionery]; pepper; gingerbread; peppermint sweets; pesto [sauce]; petits fours [cakes]; pasties; pizzas; popcorn; potato flour for food; pralines; cereal preparations; high-protein cereal bars; puddings; powders for ice cream; quiches; ravioli; cream of tartar for cooking purposes; cream of tartar for culinary purposes; rice; rice-based snack food; rice cakes; corn, roasted; cereal-based snack food; saffron [seasoning]; sago; dressings for salad; salt for preserving foodstuffs; sauces [condiments]; celery salt; mustard; mustard meal; husked oats; husked barley; ham glaze; rusks; cookies; flavorings, other than essential oils; flavorings, other than essential oils, for cakes; flavorings, other than essential oils, for beverages; condiments; sandwiches; petit-beurre biscuits; sugar; soya flour; soya sauce; sweeteners (natural -); soya bean paste [condiment]; spaghetti; stiffening whipped cream (preparations for -); starch for food; star aniseed; breadcrumbs; leaven; sushi; tabbouleh; tacos; tapioca; tapioca flour for food; cakes; tea; tea-based beverages; tomato sauce; tortillas; garden herbs, preserved [seasonings]; chewing gum; waffles; gruel, with a milk base, for food; vanilla [flavoring] flavouring; custard; vanillin [vanilla substitute]; spring rolls; sorbets [ices]; vegetal preparations for use as coffee substitutes; vermicelli [noodles]; wheat germ for human consumption; wheat flour; vinegar.

        

Class 32:         Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; aloe vera drinks, non-alcoholic; table waters; cider, non-alcoholic; grape must, unfermented; essences for making beverages; fruit juices; fruit nectars, non-alcoholic; ginger ale; vegetable juices [beverages]; hops (extracts of -) for making beer; aperitifs, non-alcoholic; cocktails, non-alcoholic; non-alcoholic beverages; non-alcoholic fruit juice beverages; non-alcoholic fruit extracts; non-alcoholic honey-based beverages; isotonic beverages; peanut milk [non-alcoholic beverage]; aerated water; syrups for beverages; syrups for lemonade; kvass [non-alcoholic beverage]; lemonades; lithia water; malt beer; malt wort; orgeat; mineral water [beverages]; milk of almonds [beverage]; must; beer wort; beer; beverages (preparations for making -); liqueurs (preparations for making -); mineral water (preparations for making -); aerated water (preparations for making -); powders for effervescing beverages; sarsaparilla [non-alcoholic beverage]; seltzer water; smoothies; soda water; sorbets [beverages]; pastilles for effervescing beverages; tomato juice [beverage]; whey beverages; waters [beverages]. 

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

Class 43:         Cafes; Catering services; Services for providing food and drink.

The contested goods are the following:

Class 7:         Coffee extracting machines; Machines for grinding [electric]. 

Class 11:          Coffee percolators, electric; Electric espresso machines. 

Class 30:        Coffee; Coffee-based beverages; Chocolate-based beverages. 

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 Classes 7 and 11

The contested coffee extracting machines; machines for grinding [electric]; coffee percolators, electric; electric espresso machines are all coffee maker or related machines and can be offered for sale through the same distribution channels and sales outlets to the same consumers and could originate from the same producers as the coffee of the opponent in Class 30. These goods are also complementary to one another. Therefore they are similar.

Contested goods in Class 30

The contested coffee; coffee-based beverages; chocolate-based beverages are identically contained in both lists of goods.  They are 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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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). 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.

All the common and uncommon elements are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier sign is a figurative mark consisting of a round label with white and brown inner circle and a red mid band dividing two semi-circular parts with the word ‘ESTD’. on the left side and the number ‘1996’ on the right side. The semicircular band above is black with the word ‘ESPRESSO’ in standard white capital letters. The semicircular band below is in blue with the word ‘HOUSE’ and two decorative elements in white standard capital letters. The white inner circle contains a brown coffee bean.

The contested sign is a figurative mark consisting of a round label with white and brown inner circle and a red mid band dividing two semi-circular parts. The semicircular band above is black with the word ESPRESSO in white standard capital letters. The semicircular band below is in blue with the word HOUSE in standard capital white letters. The white inner circle contains a brown world map.

It should be noted that various verbal and figurative elements (such as illegible words ESTD’. and the number ‘1996’ and some tiny decorative elements) are negligible in the overall design of the labels, because either of their very small size, and furthermore because they form part of a complex label with numerous other elements. Therefore, they are very likely to be disregarded by the relevant public. Therefore, the Opposition Division will not consider these negligible elements in the comparison of the signs.

The signs have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

The element ‘ESPRESSO’ in both sings will be understood as strong coffee made by forcing steam or boiling water through ground coffee beans, an apparatus for making coffee in this way by the relevant public and is, therefore, descriptive for some of the goods and services.

The element ‘HOUSE’ of the earlier mark is used in the names of types of places where people go to eat and drink, the relevant public will perceive it as such and therefore it is descriptive at least for goods and services in Classes 30 and 43.

The figurative element of the earlier sign consisting of a coffee bean is descriptive at least for goods and services in Classes 30 and 43.

The element ‘WORLD’ of the contested sign is used to refer to a particular field of activity the relevant public will perceive it as such and therefore it is weak when used in combination with a descriptive element. The figurative element consisting of a world map reinforces the message and therefore it is considered to be weak.

Both signs are composed of descriptive and weak elements. Therefore, it is because of the specific combination of the components that the signs as a whole enjoy an average degree of distinctiveness. As a consequence, the signs have no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the word ‘ESPRESSO’ and in almost all the figurative elements, colours and shape. However, they differ in the figurative element in the inner circle and the words HOUSE and WORLD respectively.

Therefore,  given that the overall presentation of the signs mostly coincides, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables /es-pre-sso/, present identically in both signs. The pronunciation differs in the syllables /house/ of the earlier sign and /world/ of contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the element ‘ESPRESSO’, a kind of coffee, will be perceived in both signs identically, 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.

According to the opponent, the earlier mark has been extensively used and enjoys reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a/some weak element/s in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods have been found to be identical and similar. They are directed at the public at large. The degree of attention of the public has been considered average.

The degree of distinctiveness of the earlier mark has been considered normal despite the presence of several weak elements.

The signs are visually similar to a high degree and aurally and conceptually similar to an average degree. Their differences are based on several week elements that will not catch the consumers’ attention.

The finding of several weak distinctive character elements in the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 13/12/2007 in Case T-134/06 ‘Pagesjaunes.com).

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/services covered are from the same or economically linked undertakings.

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 spite of the differences in some of the word elements, there is a likelihood of confusion because the visual coincidences are overwhelming.

Considering all the above, there is a likelihood of confusion on the part of the English-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 11 153 897. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

María Clara IBÁÑEZ FIORILLO

Agueda MAS PASTOR

Pierluigi M. VILLANI

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.