OPPOSITION DIVISION
OPPOSITION No B 2 480 195
Holder (Société par actions simplifiée), 344, avenue de la Marne, 59700 Marcq en
Baroeul, France (opponent), represented by T Mark Conseils, 9 avenue Percier,
75008 Paris, France (professional representative)
a g a i n s t
Paul Drèze, Kleine St.-Jansstraat 15, 8500 Kortrijk, Belgium (applicant), represented
by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional
representative).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 480 195 is upheld for all the contested goods and services.
2. European Union trade mark application No 13 300 355 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 13 300 355 for the figurative mark:
The opposition is based on, inter alia, European Union trade mark registration
No 9 619 651 for the word mark ‘PAUL GOURMET’. The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 480 195 page: 2 of 7
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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 9 619 651.
a) The goods and services
The goods and services on which the opposition is based are, inter alia, the
following:
Class 29: Prepared (or cooked) dishes based on meat, fish, poultry, game and
vegetables; Meat, fish, poultry and game; Preserved frozen, dried and
cooked fruits and vegetables; Potato crisps; Olives, preserved;
Tapenades; Nuts; Hazelnuts; Ground almonds; Gherkins, jellies, jams,
compotes, fruit salads, crystallised fruits, fruit-based snack food,
vegetable salads, soups; Eggs, milk and milk products; Edible oils and
fats; Charcuterie, crustaceans, not live, tinned meat, tinned fish; Milk
beverages [milk predominating].
Class 43: Services for providing food and drink, catering services, self-service
restaurants, snack-bars, cafeterias, cafés, bars, tea rooms,
preparation of take-away meals and dishes.
The contested goods and services, after the limitation requested by the applicant on
19/07/2016, are the following:
Class 29: Hamburgers; Edible oils and fats.
Class 43: Services for providing food and drink; Snack-bars, mobile and
stationary potato and french fries stalls, hamburger stalls, fast food
restaurants, cafeterias, cafés and bars; Catering; Preparing and
serving food and drink; Temporary accommodation.
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 good in Class 29
Edible oils and fats are identically contained in both lists of goods.
Decision on Opposition No B 2 480 195 page: 3 of 7
A hamburger is ‘minced meat which has been shaped into a flat circle.’ ‘Hamburgers
are fried or grilled and then eaten, often in a bread roll’ (Collins English dictionary on
19/10/2017 at https://www.collinsdictionary.com). The contested hamburgers are,
therefore, included in the broad category of the opponent’s prepared (or cooked)
dishes based on meat. Therefore, they are identical.
Contested services in Class 43
Services for providing food and drink; snack-bars, cafeterias, cafés and bars;
catering are identically contained in both lists of services (including synonyms).
The contested mobile and stationary potato and french fries stalls, hamburger stalls,
fast food restaurants; preparing and serving food and drink are included in the broad
category of the opponent’s services for providing food and drink. Therefore, they are
identical.
The contested temporary accommodation is similar to the opponent’s services for
providing food and drink. These are complementary services and are often supplied
by the same provider as it is common that accommodation establishments provide
meals and drinks to their guests. The services are also directed at the same relevant
consumer.
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 are
directed at the public at large.
The degree of attention is considered to be average given that the goods and
services in question are not normally particularly expensive and are purchased fairly
frequently.
c) The signs
PAUL GOURMET
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
Decision on Opposition No B 2 480 195 page: 4 of 7
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 elements ‘GOURMET’ and ‘BOUTIQUE’ are 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 the United Kingdom and Ireland.
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 from top to bottom),
which makes the part placed at the left of the sign, or the top of the sign, (the initial
part) the one that first catches the attention of the reader.
The earlier mark is a word mark with the verbal elements ‘PAUL’ and ‘GOURMET’.
‘PAUL’ is a man’s name and will be perceived as such by English-speakers. As it has
no relation to the relevant goods and services, it is distinctive. ‘A gourmet is someone
who enjoys good food, and who knows a lot about food and wine.’ ‘Gourmet food is
nicer or more unusual or sophisticated than ordinary food, and is often more
expensive.’ (Collins English dictionary on 19/10/2017 at https://www.collins
dictionary.com). Therefore the word ‘GOURMET’ is extremely weak in relation to the
goods and services at hand.
The contested sign is a figurative mark with the verbal elements ‘PAUL’S
BOUTIQUE’. The considerations relating to ‘PAUL’ above also apply here. The ‘’s’ at
the end of the name ‘PAUL’ denotes possession and does not alter the distinctive
character. The word ‘BOUTIQUE’ comes from French and has been traditionally
related to small high quality clothing stores. However it is used nowadays to refer to
other areas, such as boutique hotels or boutique cuisine, as confirmed by the
following dictionary definition: BOUTIQUE: ‘small company that offers highly
specialised services or products, for example boutique wineries’ (Merriam-Webster
English dictionary on 19/10/2017 at https://www.merriam-webster.com). Therefore the
word ‘BOUTIQUE’ is weak in relation to the goods and services at hand as it denotes
the specialised nature or the higher quality of the goods and services in question.
‘PAUL’S’ appears in white fairly standard capitals on a blue sash background. The
sash is a banal and commonplace element and as such is non-distinctive.
Underneath in a smaller typeface appears the word ‘BOUTIQUE’ in blue. Above the
sash is a stylized chef’s head within a brown circle surrounded by a beige spiky
outline. The background is light blue. Eyes closed, he appears to be tweaking his
moustache in an expression of pleasure. This figurative device, which depicts a chef
in a spiked circular frame, is weak in relation to the goods and services at hand, all of
Decision on Opposition No B 2 480 195 page: 5 of 7
which, including temporary accommodation, are related in some way to the provision
of food. (As mentioned above it is common for establishments of temporary
accommodation to offer meals to their guests.)
None of the elements of the contested sign could be considered clearly more
dominant than other elements.
Visually, the signs coincide in ‘PAUL’, the distinctive first verbal element of each
sign. They differ in the letter ‘S’, the weak verbal element ‘BOUTIQUE’ in the
contested sign and the extremely weak verbal element ‘GOURMET’ in the earlier
mark. In addition they differ in the weak figurative device, the blue sash, the typeface
and the colour of the contested sign.
Therefore, the signs are visually similar to a no more than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the distinctive word
‛PAUL’, present identically at the start of both signs. The pronunciation differs in the
sound of the letter ‘S’, the weak word BOUTIQUE’ in the contested sign and the
extremely weak word ‘GOURMET’ of the earlier mark.
Therefore, the signs are aurally similar to an above average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The signs coincide in the concept of ‘PAUL’. In the
contested sign the word ‘BOUTIQUE’ in connection with the chef’s head transmit the
concept of high quality food, as does the word ‘GOURMET’ in the earlier mark. As
the signs will be associated with a very similar meaning, the signs are conceptually
highly similar.
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 claimed that the earlier trade mark is highly distinctive but did not file
any evidence in order to prove such a claim.
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 weak element in the mark, as stated
above in section c) of this decision.
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.
Decision on Opposition No B 2 480 195 page: 6 of 7
According to the case law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.).
Such a global assessment of a likelihood of confusion implies some interdependence
between the relevant factors, and in particular, similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the marks may be offset by a lower degree of similarity between the goods,
and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’,
EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24;
29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
In addition, account is taken of the fact that average consumers only rarely have the
chance to make a direct comparison between different marks, but must trust in their
imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26).
In the present case, the goods and services are partly identical and partly similar. The
signs are conceptually highly similar, aurally similar to an above average degree and
visually similar to a no more than average degree. The level of attention of the
consumer is average and the earlier mark has a normal degree of distinctive
character.
The signs coincide in ‘PAUL’, the first verbal element of the marks where the
consumer’s attention will be focused. This is the most distinctive element of both
signs. The remaining elements are weak and both signs transmit the idea of high
quality food.
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 9 619 651. It follows that the contested trade mark
must be rejected for all the contested goods and services.
As this earlier right leads to the success of the opposition and to the rejection of the
contested trade mark for all the goods and services against which the opposition was
directed, there is no need to examine the other earlier rights invoked by the opponent
(16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(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.
Decision on Opposition No B 2 480 195 page: 7 of 7
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Renata COTTRELL Lynn BURTCHAELL Denitza STOYANOVA-
VALCHANOVA
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.