OPPOSITION DIVISION
OPPOSITION No B 2 768 094
Panda Communications Limited, Ingles Manor Castle Hill Avenue, Folkestone Kent
CT20 2RD, United Kingdom (opponent)
a g a i n s t
Sichuan Tianyu Cultural Transmission Co., Ltd., No.15, Jinchuan Road, High-tech
Area, Zigong, Sichuan, People’s Republic of China (applicant), represented by
Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional
representative)
On 12/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 768 094 is partially upheld, namely for the following
contested services:
Class 43: Accommodation bureaux [hotels, boarding houses]; Food and drink
catering; Cafés; Canteens; Hotels; Restaurants; Hotel reservations; Self-
service restaurants; Snack-bars; Bar services.
2. European Union trade mark application No 15 500 176 is rejected for all the
above services. It may proceed for the remaining 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the services of European Union
trade mark application No 15 500 176 ‘Panda Chef’ (word mark), namely against all
the services in Classes 41 and 43. After the withdrawal of another earlier mark as the
basis of the opposition, the opposition is currently still based on United Kingdom
trade mark registration No 3 173 901 ‘PANDA’ (word mark). The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 768 094 page: 2 of 6
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 services
The services on which the opposition is based are the following:
Class 43: Hotel services; hotel and guest house rental and reservations; bar
services; cafe-restaurants.
The contested services are the following:
Class 41: Educational services; Organization of exhibitions for cultural or educational
purposes; Arranging and conducting of workshops [training]; Organization of shows
[impresario services]; Production of shows; Television entertainment; Cinema
presentations; Photography; Ticket agency services [entertainment]; Amusements.
Class 43: Accommodation bureaux [hotels, boarding houses]; Food and drink
catering; Cafés; Canteens; Hotels; Restaurants; Hotel reservations; Self-service
restaurants; Snack-bars; Bar 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.
Contested services in Class 41
The contested educational services; organization of exhibitions for cultural or
educational purposes; arranging and conducting of workshops [training]; organization
of shows [impresario services]; production of shows; television entertainment;
cinema presentations; photography; ticket agency services [entertainment];
amusements are training, educational, cultural and entertainment services. They
have a different nature and purpose from the opponent’s services in Class 43, which
are all services related to the provision of food and drinks and to temporary
accommodation. Moreover, they are neither complementary nor in competition, and
do not have the same distribution channels, end users or usual origin. Therefore,
these services are dissimilar.
Contested services in Class 43
The contested accommodation bureaux [hotels, boarding houses]; hotels; hotel
reservations are identical to the opponent’s hotel services either because they are
identically contained in both lists (including synonyms) or because the opponent’s
services overlap with, the contested services.
Decision on Opposition No B 2 768 094 page: 3 of 6
The contested cafés; canteens; self-service restaurants; restaurants are identical to
the opponent’s cafe-restaurants either because they are identically contained in both
lists (including synonyms) or because the opponent’s services include or overlap with
the contested services.
The contested snack-bars; bar services are identical to the opponent’s bar services
either because they are identically contained in both lists (including synonyms) or
because the opponent’s services include or overlap with the contested services.
The contested food and drink catering services are highly similar to the opponent’s
cafe-restaurants as they are all services related to the provision of food and drinks.
They coincide in purpose, nature, public and are in competition.
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 services found to be identical or highly similar are directed at
the public at large. The applicant considers the level of attention to be high, but did
not state arguments on which to base this. The Opposition Division considers the
degree of attention to be average.
c) The signs
PANDA Panda Chef
Earlier trade mark Contested sign
The relevant territory is the United Kingdom.
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 word ‘PANDA’, contained in both marks, will be understood as a kind of bear by
the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant
services, it is distinctive.
The element ‘Chef’, contained in the contested sign, will be understood by the
relevant public as an expression for ‘a cook in a restaurant or hotel’. It is weak in
relation to the provision of foodstuff and drinks. Therefore, for these services the
word ‘PANDA’ of the contested sign is much more distinctive than the word ‘Chef’. In
relation to the provision of temporary accommodation it has a normal degree of
distinctiveness.
Decision on Opposition No B 2 768 094 page: 4 of 6
The earlier word mark contains only one element. It has no elements that could be
considered clearly more distinctive or dominant (visually eye-catching) than other
elements.
The contested sign is a word mark, so that it has no elements that could be
considered clearly more dominant than other elements.
Visually, the signs coincide in the word ‘PANDA’. Thus, the earlier sign is completely
included in the contested trade mark as its first element. The only additional element
of the contested sign is the word ‘Chef’, which is weak for part of the services.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the syllables
‛PAN-DA’, present identically in both signs. The pronunciation differs in the sound of
the word ‛Chef’ of the contested sign, which is weak for a part of the services.
Therefore, the signs are phonetically similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by (the elements of) the marks. The earlier mark refers to a
specific type of bear. Although the contested sign as a whole does not have any
meaning, its elements ‘Panda’ and ‘Chef’ have. They will be associated with the
meanings explained above. As the signs will be associated with a similar meaning,
namely a specific kind of bear, the signs are conceptually similar to a high degree.
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. The applicant considers the distinctiveness of the
earlier mark to be low, but did not submit any evidence to support this argument.
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
The services are partly identical, partly highly similar and partly dissimilar. The
distinctiveness of the earlier mark is average. The degree of attention of the relevant
public is also average.
The signs are visually, aurally and conceptually similar to a high degree. The earlier
mark is completely contained in the contested sign as its first independently
distinctive and, for part of the services, even most distinctive word. The differentiating
word of the contested sign is weak for part of the services and not able to
counterbalance the similarities between the signs.
Decision on Opposition No B 2 768 094 page: 5 of 6
It is very likely that the consumer in the relevant territory will consider the conflicting
marks as having the same commercial origin, for example, that the contested sign
with its element ‘Chef’ represents a new line of the opponent’s services, which are
personally rendered by the cook of the undertaking.
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 earlier United Kingdom trade mark registration No 3 173 901.
In its observations, the applicant argues that the earlier trade mark has a low
distinctive character given that many trade marks include the word ‘PANDA’ for the
same or related services. In support of its argument the applicant refers to around 30
trade mark registrations in Italy, Japan, the United Kingdom, France, the European
Union, Germany, Spain, Portugal and Austria for services in Classes 41 or 43.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include the word ‘PANDA’. Under
these circumstances, the applicant’s claims must be set aside.
It follows from the above that the contested trade mark must be rejected for the
services found to be identical or highly similar 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 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 services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.
Decision on Opposition No B 2 768 094 page: 6 of 6
The Opposition Division
Swetlana BRAUN Julia SCHRADER Octavio MONGE
GONZALVO
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.