OPPOSITION No B 2 762 626

ISS World Services A/S, Buddingevej 197, 2860 Søborg, Denmark (opponent), represented by Awapatent A/S, Strandgade 56, 1401 Copenhagen K, Denmark (professional representative)

a g a i n s t

iss mich! Catering e.U., Erlafstrass 7, 1020 Wien, Austria (applicant), represented by Andrea Zinober, Landstraßer Hauptstraße 1/1/10, 1030 Wien, Austria (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 626 is partially upheld, namely for the following contested services:

Class 43:         Food preparation services; Services for the preparation of food and drink; Food preparation for others on an outsourcing basis; Services for the preparation of food and drink; Preparation and provision of food and drink for immediate consumption; Provision of information relating to the preparation of food and drink; Catering for the provision of food and beverages; Catering for the provision of food and beverages; Catering services for schools; Catering services for conference centers; Catering services for nursing homes; Catering services for educational establishments; Catering services for hospitality suites; Business catering services; Organisation of catering for birthday parties; Food and drink catering for cocktail parties; Food and drink catering for institutions; Food and drink catering for banquets; Providing food and drink catering services for exhibition facilities; Providing food and drink catering services for convention facilities; Coffee supply services for offices [provision of beverages]; Providing food and drink catering services for fair and exhibition facilities.  

2.        European Union trade mark application No 15 107 964 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 107 964 for the figurative mark, namely against some services of Class 35 and all services of Class 43. The opposition is based on European trade mark registration No 1 366 426 for the word mark ‘ISS’ and international trade mark registration No 968 240 designating the European Union for the figurative mark  The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF INTERNATIONAL TRADE MARK REGISTRATION NO 968 240

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 968 240 on which the opposition is based.

On 05/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 10/01/2017.

The opponent did not submit any evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on earlier international trade mark registration No 968 240.

The examination of the opposition will proceed based on the remaining earlier right, European trade mark registration No 1 366 426.

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 services

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

Class 42:        Providing of food, except catering; catering.

The contested services are the following:

Class 35:        Retail services relating to food.  

Class 43:        Food preparation services; Services for the preparation of food and drink; Food preparation for others on an outsourcing basis; Services for the preparation of food and drink; Preparation and provision of food and drink for immediate consumption; Provision of information relating to the preparation of food and drink; Catering for the provision of food and beverages; Catering for the provision of food and beverages; Catering services for schools; Catering services for conference centers; Catering services for nursing homes; Catering services for educational establishments; Catering services for hospitality suites; Business catering services; Organisation of catering for birthday parties; Food and drink catering for cocktail parties; Food and drink catering for institutions; Food and drink catering for banquets; Providing food and drink catering services for exhibition facilities; Providing food and drink catering services for convention facilities; Coffee supply services for offices [provision of beverages]; Providing food and drink catering services for fair and exhibition facilities. 

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 services in Class 35

The contested retail services relating to food are dissimilar to the opponent´s providing of food, except catering; catering. The fact that they theoretically might compete for the same relevant public (a consumer that is e.g. interested in purchasing food for an event may also consider to opt for a catering service instead) is not sufficient to render them similar, as they still differ in their nature, provider, method of use and distribution channels and they are not complementary.

Contested services in Class 43

The contested food preparation services; services for the preparation of food and drink; food preparation for others on an outsourcing basis; services for the preparation of food and drink; preparation and provision of food and drink for immediate consumption; provision of information relating to the preparation of food and drink; catering for the provision of food and beverages; catering for the provision of food and beverages; catering services for schools; catering services for conference centers; catering services for nursing homes; catering services for educational establishments; catering services for hospitality suites; business catering services; organisation of catering for birthday parties; food and drink catering for cocktail parties; food and drink catering for institutions; food and drink catering for banquets; providing food and drink catering services for exhibition facilities; providing food and drink catering services for convention facilities; coffee supply services for offices [provision of beverages]; providing food and drink catering services for fair and exhibition facilities are included in the broad category, or overlap with the opponent’s catering. Therefore, they are identical.

The difference in the Class number between the opponent´s services and the contested services results from the fact that the marks were applied for under different editions of the Nice Classification and does not affect the result of the comparison.

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 services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the purchased services. Some of the contested catering services for example may be exclusive and high in price.

3. The signs

ISS
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.

The element ‘THE GOOD FOOD COMPANY’ of the contested sign is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in the United Kingdom, Ireland and Malta.

The verbal element ‘ISS’ present in both signs and the verbal element ‘MICH’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The element ‘THE GOOD FOOD COMPANY’ of the contested sign will be associated with a food-related commercial undertaking of good quality. Bearing in mind that the relevant services are related to food (preparation and provision of food, catering services, etc.) this element is non-distinctive for all the contested services in Class 43 as the consumer will merely perceive it as a laudatory statement, highlighting the good quality of the provider and its services.

The exclamation mark of the contested sign merely emphasizes the preceding verbal elements and is therefore non-distinctive.

The typeface of the contested sign’s verbal elements is a standard one and therefore non-distinctive. The circular orange background of the contested sign is a common label and therefore non-distinctive as well. The depiction of a spoon and a fork, conjoined with the letter ‘H’, is of low distinctiveness, given that symbols of cutlery are commonly used to indicate food-related services, such as the contested services.

Consequently the verbal elements ‘ISS’ and ‘MICH’ are the most distinctive elements of the contested sign.

The elements ‘ISS MICH!’ in conjunction with the depiction of cutlery are the dominant elements of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (or, as the case may be, from top to bottom) which makes the part placed at the left (or the top) of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive verbal element ‘ISS’. They differ in the additional distinctive verbal element ‘MICH’ of the contested sign, its additional non-distinctive verbal elements ‘THE GOOD FOOD COMPANY’  and exclamation mark, and the graphical stylization, as described above, which is however of low distinctiveness at most.  

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ISS’, present identically in both signs, and differs in the sound of the letters ’MICH’ of the contested mark, which have no counterpart in the earlier sign. The additional non-distinctive verbal element ‘THE GOOD FOOD COMPANY’ of the contested sign is not likely to be pronounced given that it is non-distinctive and visually clearly subordinated. The exclamation mark and the figurative elements of the contested signs have no impact on the aural comparison.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the depiction of cutlery and the non-distinctive verbal elements ‘THE GOOD FOOD COMPANY’ included in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The services are identical and dissimilar. The signs are visually and aurally similar. The attention of the relevant public will vary from average to high and the distinctiveness of the earlier mark is normal.

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

Given that the entire earlier mark is incorporated in the beginning of the contested sign as an independent and distinctive element, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The further element ‘MICH’ of the contested sign, albeit distinctive, and the additional non-distinctive or lowly distinctive verbal and figurative elements of the contested sign are not sufficient to safely exclude the possibility that the relevant consumer might associate the signs with a common commercial origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

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

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

The Opposition Division

Lars HELBERT

Tobias KLEE

Swetlana BRAUN

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.