OPPOSITION DIVISION
OPPOSITION No B 2 760 711
Kingstone Capital Holding AG, Seestrasse 91, 6052 Hergiswil, Switzerland
(opponent), represented by KWR Karasek Wietrzyk Rechtsanwälte GMBH,
Fleischmarkt 1, 3. Stock, 1010 Wien, Austria (professional representative)
a g a i n s t
Martinez Hnos. Y CIA. S.R.L., Talcahuano 948, Capital Federal, Argentina
(applicant), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta,
08008 Barcelona, Spain (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 760 711 is partially upheld, namely for the following
contested goods and services:
Class 30: Coffee, artificial coffee, tea.
Class 35: Businesses; Business management and business administration, in
particular relating to restaurants, cafeterias and bars; Franchise-issuing relating
to assistance in the operation of commercial companies, in particular a chain of
restaurants, cafeterias and bars.
Class 43: Restaurant, cafeteria and bar services
2. European Union trade mark application No 15 402 233 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 402 233. The opposition is based on European
Union trade mark registration No 10 955 508. The opponent invoked Article 8(1)(b)
EUTMR.
Decision on Opposition No B 2 760 711 page: 2 of 8
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.
a) The goods and services
The services on which the opposition is based are the following:
Class 35: Consulting relating to the organization and management of hotels and
accommodation establishments; rental of advertising spaces; public relations;
organization of exhibitions for commercial and advertising purposes; organization of
exhibitions and trade fairs for commercial or promotional purposes; management
consultancy; management consultancy in terms of business concerns; consulting
relating to business organization; market research; consulting relating to business
management.
Class 41: Preparation and organization of conferences, congresses, seminars; magic
shows, concerts and festivals as well as live music shows, variety shows, comedy
shows as live performances or transmitted on television, cable, satellite, audio and
video media; providing the services of art galleries; rental of facilities for singing to
recorded background music and with presentation of the lyrics on a screen; sound
and video recording services; rental of video recorders, video cassettes, laser discs
and laser disc players, CDs and CD players; organization and conducting of
competitions for educational and entertainment purposes, fashion shows,
competitions and beauty pageants; rental of squash, tennis, golf and entertainment
facilities; rental of games and; sports equipment; film projection in theaters, club
entertainment, operation of night clubs and discotheque services and laser shows,
holding of vocal performances; theater productions and services of ticket agencies;
operation of health clubs, rental of facilities for swimming and gymnastics;
organization of wine tasting for entertainment purposes; operation of clubs with
catering; provision of information regarding demonstrations for entertainment
purposes; advice in relation to the aforesaid services, namely in terms of preparation
and conducting of presentations for educational and entertainment purposes.
Class 43: Services for providing food and drink; temporary accommodation; provision
of accommodation, management of hotels, hotel reservations, accommodation
service; providing of food and drink in restaurants, buffets and snack bars; operating
a bar; catering.
The contested goods and services are the following:
Class 30: Coffee, artificial coffee, tea, cocoa.
Class 35: Businesses; Business management and business administration, in
particular relating to restaurants, cafeterias and bars; Franchise-issuing relating to
Decision on Opposition No B 2 760 711 page: 3 of 8
assistance in the operation of commercial companies, in particular a chain of
restaurants, cafeterias and bars; Sale via computer networks of coffee, coffee
substitutes, tea and cocoa.
Class 43: Restaurant, cafeteria and bar services.
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 ‘in particular’, used in the applicant’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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the opponent’s list of services to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the services specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 30
The contested coffee, artificial coffee, tea are considered similar to a low degree to
the opponent’s services for providing food and drink in Class 43. These goods and
services can be complementary, they can stem from the same undertaking and are
offered through the same distribution channels.
On the other hand, the contested cocoa is deemed dissimilar to the opponent’s
services in Class 43. These goods and services are not complementary nor are they
in competition. Their purpose differs, they do not coincide in distribution channels and
do not normally originate from the same companies.
Furthermore, cocoa is also dissimilar to the other services covered by the earlier
mark in Classes 35 and 41, as they have no relevant point of contact. Those goods
and services are, indeed, of different nature and serve different purposes. They are
not complementary nor are they in competition and they do not originate from the
same economic entities. Finally, they target different consumers and are offered
through different distribution channels.
Contested services in Class 35
As a preliminary remark, it must be clarified that the first language of the application
is Spanish, and that in this language the specification refers to ‘Negocios
comerciales’ in Class 35, which can be translated more exactly as ‘promotional
services’. Given that, in accordance with Article 147(3) EUTMR (formerly Article
120(3) EUTMR), the text in the language of the Office in which the EUTMA was filed
Decision on Opposition No B 2 760 711 page: 4 of 8
is considered the authentic one, the comparison of goods will be carried out on the
basis that the contested services businesses is in fact promotion services.
Business management services are intended to help companies to manage their
business by setting out the strategy and/or direction of the company. These services
also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful
in the management of a business, such as how to efficiently allocate financial and
human resources, improve productivity, increase market share, deal with competitors,
reduce tax bills, develop new products, communicate with the public, carry out
marketing, research consumer trends, and launch new products; how to create a
corporate identity, etc.
It follows that the contested business management, in particular relating to
restaurants, cafeterias and bars includes, as a broader category of the opponent’s
consultancy relating to business management in Class 35. Since the Opposition
Division cannot dissect ex officio the broad category of the contested services, they
are considered identical to the opponent’s services.
Franchise-issuing relating to assistance in the operation of commercial companies, in
particular a chain of restaurants, cafeterias and bars are services offered by
specialised companies to other businesses and consist of professional consultancy in
relation to the management, exploitation and direction of franchise businesses.
These services overlap with the opponent’s consultancy relating to business
management. Therefore, they are identical.
The contested businesses have important points of contact with the opponent’s
rental of advertising spaces as these services may be offered by the same or linked
undertakings, have the same purpose and target the same public. Furthermore, they
are complementary. These services are, therefore, highly similar.
Business administration services are intended to help companies with the
performance of business operations and, therefore, the interpretation and
implementation of the policy set by an organisation’s board of directors. These
services consist of organising people and resources efficiently so as to direct
activities toward common goals and objectives. The contested business
administration, in particular relating to restaurants, cafeterias and bars are
considered similar to the opponent’s consultancy relating to business management,
since these services can be complementary, share the same public and are usually
offered by the same undertakings.
The contested sale via computer networks of coffee, coffee substitutes, tea and
cocoa is considered dissimilar to any of the opponent’s services in Classes 35, 41
and 43. The services in question differ in nature and purpose. They normally stem
from different commercial origin, are intended for different public and are offered
through different distribution channels.
Contested services in Class 43
Despite the slightly different wording, the contested restaurant and bar services are
identical to the opponent’s providing of food and drink in restaurants, buffets and
snack bars; operating a bar.
The contested cafeteria services are included in the broad category of the opponent’s
services for providing food and drink. Therefore, they are identical.
Decision on Opposition No B 2 760 711 page: 5 of 8
b) 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 at the public at large and business customers with
specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised
nature of the services, the frequency of purchase and their price.
c) The signs
MARTINEZ
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 mark is a word mark consisting of the word ‘MARTINEZ’. The contested
mark is a figurative mark consisting of a black rectangular background that includes
the word ‘MARTINEZ’ in bold white capital letters and some small white figurative
elements of abstract nature above the word.
The signs’ coinciding element, ‘MARTINEZ’, is a common Spanish surname that will
be recognised as such by the Spanish public. It is reasonable to assume that this
word will be recognised as a surname of Spanish origin by a large part of the relevant
public, even in language areas where it is not common. This element lacks any direct
meaning in relation to the relevant goods and services and is, therefore, distinctive.
As regards the contested sign, it is composed of a distinctive verbal element and less
distinctive figurative elements of a purely decorative nature. Therefore, the verbal
element ‘MARTINEZ’ is more distinctive than the figurative elements.
Furthermore, the element ‘MARTINEZ’ in the contested sign is the dominant element
as it is the most eye-catching.
Visually, the signs coincide in the word ‘MARTINEZ’ identically present in both
marks. The signs differ in the figurative elements in the contested mark.
Decision on Opposition No B 2 760 711 page: 6 of 8
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the word ‘MARTINEZ’, present
identically in both signs.
Therefore, the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as a surname of
Spanish origin, ‘MARTINEZ’, the signs are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
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.
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 goods and services are partially identical, partially similar (to various degrees)
and partially dissimilar. The marks are visually highly similar and aurally and
conceptually identical.
The earlier mark, which has a normal degree of distinctive character, is included in its
entirety in the contested sign. The only difference between the marks is the small
figurative elements and the black background of the contested sign, which are clearly
not sufficient to rule out a likelihood of confusion among the relevant public.
Decision on Opposition No B 2 760 711 page: 7 of 8
In its observations, the applicant argues that it owns one European Union trade mark
registration with the word ‘MARTINEZ’ which pre-exists the opposing mark and which
coexists with the opponent’s earlier mark.
Furthermore, the applicant mentions other EUTM registrations which include the
word ‘MARITNEZ’ and submits evidence of how these marks are used in the market
in order to demonstrate that the coexistence of these marks on the market is
peaceful.
Finally, the applicant argues that it possesses other marks including the word
‘MARTINEZ’ which constitute a ‘family of marks’ or ‘marks in a series’ and the
application is nothing more than another mark belonging to said series. In its view,
such a circumstance is liable to demonstrate the peaceful coexistence of those
marks with the opponent’s mark. The applicant quotes case law to substantiate this
claim.
According to case-law, the possibility cannot be ruled out that the coexistence of two
marks on a particular market might, together with other elements, contribute to
diminishing the likelihood of confusion between those marks on the part of the
relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §
82). In certain cases, the coexistence of earlier marks in the market could reduce the
likelihood of confusion that the Office finds between two conflicting marks (judgment
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the applicant for the
European Union trade mark duly demonstrated that such coexistence was based
upon the absence of any likelihood of confusion on the part of the relevant public
between the earlier marks upon which it relies and the intervener’s earlier mark on
which the opposition is based, and provided that the earlier marks concerned and the
marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169,
§ 86).
In this regard it should be noted that formal coexistence in national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) at
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, including
the evidence submitted that is per se rather scarce to enable the Opposition Division
to draw any conclusion on the coexistence of those marks in the market, this
argument of the applicant must be rejected as unfounded.
As to the earlier ‘MARTINEZ’ mark owned by the applicant and to the alleged series
of marks including the element ‘MARTINEZ’, it is observed that the right to an EUTM
Decision on Opposition No B 2 760 711 page: 8 of 8
begins on the date when the EUTM is filed and not before, and from that date on the
EUTM has to be examined with regard to opposition proceedings.
Therefore, it is immaterial, for the purpose of the present proceedings, whether the
applicant owns another mark, or a series of marks, that may predate the earlier trade
mark registration on which the opposition is based.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar, to various degrees, to those of
the earlier trade mark.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Plamen IVANOV Claudia ATTINA Keeva DOHERTY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.