OPPOSITION DIVISION
OPPOSITION No B 2 759 234
Wiesenhof Geflügel-Kontor GmbH, Paul-Wesjohann-Str. 45, 49429 Visbek,
Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB,
Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional
representative)
a g a i n s t
Bellivo, Société Anonyme, 62 Avenue de la Liberté, 1930 Luxembourg,
Luxembourg (holder), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat
13, 2000 Antwerpen, Belgium (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 759 234 is partially upheld, namely for the following
contested goods:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, compotes; eggs, milk
and milk products; edible oils and fats.
Class 30: Artificial coffee; rice, tapioca, sago; flour and preparations made
from cereals, bread, pastry and confectionery, ices; sugar; honey,
treacle; yeast, baking powder; salt, mustard; vinegar, sauces;
spices; ice.
Class 31: Agricultural, horticultural and forestry products not included in other
classes; live animals; fresh fruits and vegetables; natural plants;
malt.
2. International registration No 1 275 092 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 759 234 page: 2 of 10
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 275 092 . The opposition
is based on European Union trade mark registrations No 11 294 709 ,
No 14 101 109 ‘Paul’s Diner’ and No 14 101 117 ‘Paul’s Farmhouse’. The opponent
invoked Article 8(1)(b) 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.
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 registrations No 11 294 709 and
No 14 101 109 .
a) The goods
The goods on which the opposition is based are the following:
European Union trade mark registration No 14 101 109
Class 29: Meat, poultry and game; meat extracts; preserved, frozen, dried and
cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products;
edible oils and fats; weed extracts for food; alginates for food; apple purée; oysters,
not live; black pudding; stock; bouillon concentrates; fat-containing mixtures for
bread slices; butter; buttercream; dates; preserved beans; curd; eggs; yolk of eggs;
powdered eggs; albumen for food; white of eggs; pulses, preserved; peanut butter;
peanuts, prepared; gherkins; fatty substances for the manufacture of edible fats;
meat; preserved meat; broth concentrates; meat extracts; meat jellies; canned meat;
salted meats; fruit preserved in alcohol; fruit chips; fruit jellies; fruit pulp; fruit salads;
fruit-based snack food; jellies; prawns, not live; poultry, not live; cooked fruits; boiled
vegetables; cooked fruits; jellies; canned vegetables; vegetable salads; toasted
laver; vegetables dried; dried fruit; ginger jam; yoghurt; vegetable soup preparations;
coffee creamers; chocolate nut butter; tripe; crystallized fruits; frosted fruits; potato
chips; potato flakes; potato dumplings; potato fritters; cheese products; caviar; kefir
[milk beverage]; hummus [chickpea paste]; snacks (included in class 29); animal
marrow for food; bone oil, edible; coconut butter; coconut oil and fat [for food];
coconut, desiccated; coconut oil; fruit, stewed; jams; preserved fruits; preserved
vegetables; preserved fruit; crayfish, not live; croquettes; kefir [milk beverage];
rennet; kimchi [fermented vegetable dish]; liver; liver pâté; lentils, preserved; corn oil;
ground almonds; margarine; marmalade; milk; milk beverages, milk predominating;
milk products; whey; mussels (not live); prepared nuts; canned fruits; fruit salads;
Decision on Opposition No B 2 759 234 page: 3 of 10
edible oils; olives, preserved; olive oil for food; palm kernel oil for food; palm oil for
food; pectin for culinary purposes; vegetable juices for cooking; piccalilli; pickles;
mushrooms, preserved; pollen prepared as foodstuff; cranberry sauce (compote);
food protein for human consumption; curds; colza oil for food; raisins; cream [dairy
products]; anchovy; sardines; sauerkraut; fruit peel; ham; whipped cream; snail eggs
for consumption; chocolate-coated, sugar-coated or glazed fruits; chocolate-coated,
sugar-coated or glazed fruits; sesame oil; tahini [sesame seed paste]; shrimps, not
live; soya beans, preserved, for food; soya milk [milk substitute]; sunflower oil for
food; bacon; edible fats; gelatine for food; suet for food; soups; soup (preparations
for making -); tuna fish; frozen fruits; frozen vegetables; fruits (frozen-); tomato juice
for cooking; truffles, preserved; edible birds’ nests; game; sausages; sausages in
batter; meat; preparations for making bouillon and broth; onions, preserved;
slaughtered poultry, meat, game and parts thereof, and poultry/meat specialities
made therefrom, convenience goods, spiced, breaded and marinated meat, including
all the aforesaid goods being prepared meals, semi-prepared meals, frozen food and
soups; instant soups made using poultry meat, poultry products, meat; meat
products and charcuterie, in particular salami, liver sausage, pates, sausages, pork
products, cooked pickle-cured products, meat preserves, aspic products, smoked
products; prepared food, cooked, dried, frozen and preserved; fried chicken;
vegetable burgers, vegetarian sausages, vegetarian food in stick form; vegetarian
convenience goods.
Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour
and preparations made from cereals; bread; pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices;
ice; culinary herbs; aniseed; flavourings, other than essential oils, for beverages;
flavorings, other than essential oils; wheat flour; flavourings, other than essential oils,
for cakes; baking powder; pastries; beer vinegar; thickening agents for cooking
foodstuffs; ice cream (binding agents for -); cookies; bean meal; candy; buns; bread;
unleavened bread; sandwiches; petit-beurre biscuits; chow-chow [condiment];
chutneys [condiments]; couscous [semolina]; curry [spice]; custard; desserts,
consisting essentially of pasta; ice cream; iced tea; peanut confectionery; essences
for foodstuffs, except etheric essences and essential oils; vinegar; vermicelli
[noodles]; ready-made dishes containing pasta; meat tenderizers, for household
purposes; meat pies; meat gravies; fondants; fruit sauces; spring rolls; pastry; royal
jelly for human consumption (not for medical purposes); fruit jellies [confectionery];
grits; husked barley; pearl barley; barley meal; barley (crushed -); tea-based
beverages; chips [cereal products]; cereals; cereal-based snack food; spices;
condiments; cloves [spice]; glucose for food; gluten for food; semolina; groats for
human food; crushed oats; oat flakes; oatmeal; husked oats; halvah; yeast; yeast in
pill form, not for medical use; honey; ginger [spice]; yoghurt (frozen -) [confectionery
ices]; coffee; artificial coffee; vegetal preparations for use as coffee substitutes;
coffee flavorings [flavourings]; coffee based drinks; cocoa; cocoa products; cocoa-
based beverages; candy for food; capers; caramels; potato flour; chewing gum not
for medical purposes; cookies; catsup; gluten for food; pastry; cooking salt; sugar
confectionery; salt for preserving foodstuffs; crackers; infusions, not medicinal;
cakes; garden herbs, preserved [seasonings]; cake powder; cake dough; decorations
for cakes [edible]; ice; turmeric; liquorice [confectionery]; stick liquorice
[confectionery]; gingerbread; maize, milled; maize, roasted; maize flakes; grits; maize
flour; maize samp; macaroni; macaroons [pastry]; maltose; malt for human
consumption; malt biscuits; malt extract for food; maltose; almond confectionery;
marzipan; almond paste; mayonnaise; sea water for cooking; flour for food;
farinaceous foods; molasses for food; molasses for food; gruel, with a milk base, for
food; coffee beverages with milk; cocoa beverages with milk; chocolate beverages
with milk; flour-milling products; nutmeg; muesli; food supplements, not for medical
Decision on Opposition No B 2 759 234 page: 4 of 10
purposes, with a roughage or carbohydrate base; oat-based food; peppers
(seasonings); noodles; breadcrumbs; pasta; pies; pasty; lozenges [confectionery];
petits fours [cakes]; pancakes; pepper; gingerbread; mint for confectionery;
peppermint candy; pide (flat bread); peppers [seasonings]; pizza; popcorn; bee glue
(propolis) for human consumption; puddings; popcorn; quiches; ravioli; rice; rice
cakes; rice-based snack food; relishes; ice, natural or artificial; coffee (unroasted -);
saffron [seasoning]; sago; whipped cream (preparations for stiffening -); dressings for
salad; salt; sandwiches; sauces (spices); leaven; chocolate; drinking chocolate;
allspice; celery salt; baps; mustard; mustard meal; paste (soya bean -) [condiment];
soya flour; soya sauce; sherbets [ices]; sauces [condiments]; spaghetti; edible ices;
powders for ice cream; baking soda [bicarbonate of soda for baking purposes]; food
starch; starch for food; star aniseed; sushi; sweeteners (natural -); candy; tabbouleh;
tacos; tapioca; tapioca flour; tea; ferments for pastes; farinaceous food pastes;
tomato sauce; pastry; tortillas; glucose for food; vanilla [flavoring] [flavouring]; vanillin
[vanilla substitute]; waffles; wraps (pasta); sausage binding materials; spices;
aromatic preparations for food; chicory [coffee substitute]; cinnamon [spice]; sugar;
pralines; confectionery for decorating Christmas trees; rusks.
European Union trade mark registration No 11 294 709
Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried
and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk
products; edible oils and fats; prepared (or cooked) dishes and salads, ready-made
meals, mainly comprising meat, fishes, poultry and/or game; oysters, not live, blood
sausage, bouillon, bouillon concentrates, fat-containing mixtures for bread slices,
gherkins; salted fish; fish, preserved; fish fillets, foods prepared from fish, fish, tinned
[canned (am.)], mousses (fish -), fish spawn (processed -); meat, preserved; bouillon
concentrates, meat jellies, meat, tinned [canned (am.)]; salted meats; fruit preserved
in alcohol, fruit, stewed, fruit, preserved, frozen fruits, fruit chips, fruit jellies, fruit pulp,
fruit salads, fruit-based snack food, prawns, not live, vegetables, tinned [canned
(am.)], mousses (vegetable -), vegetable salads, toasted laver, desiccated fruits,
herrings, lobsters, not live, vegetable soup preparations, crystallized fruits, frosted
fruits, potato dumplings, potato fritters, cheese, caviar, kephir [milk beverage], broth,
soups, crayfish, not live, croquettes, crustaceans, not live, salmon, spiny lobsters,
not live, liver, liver pâté, lentils, preserved, almonds, ground, milk shakes, mussels
(not live), nuts, prepared, fruits, tinned [canned (am.)], pickles, mushrooms,
(preserved), shellfish, not live, ham, pork, shrimps, not live, bacon, soup
(preparations for making -), tuna fish, frozen vegetables, tofu, tomato purée, truffles,
preserved, clams [not live], game, not live, sausages, charcuterie.
The contested goods 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 milk products;
edible oils and fats.
Class 30: Artificial coffee; rice, tapioca, sago; flour and preparations made from
cereals, bread, pastry and confectionery, ices; sugar; honey, treacle; yeast, baking
powder; salt, mustard; vinegar, sauces; spices; ice.
Class 31: Seeds and agricultural, horticultural and forestry products not included
in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and
flowers; foodstuffs for animals, malt.
Decision on Opposition No B 2 759 234 page: 5 of 10
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 29
Meat, poultry and game; meat extracts; preserved, dried and cooked fruits and
vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
are identically contained in the lists of goods of earlier EUTM No 14 101 109 and the
contested sign.
The contested fish includes, as a broader category, the opponent’s tuna fish of earlier
EUTM No 14 101 109. Since the Opposition Division cannot dissect ex officio the
broad category of the contested goods, they are considered identical to the
opponent’s goods.
Contested goods in Class 30
Artificial coffee; rice, tapioca, sago; flour and preparations made from cereals, bread,
pastry and confectionery, ices; sugar; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces; spices; ice are identically contained (including synonyms)
in the lists of goods of earlier EUTM No 14 101 109 and the contested sign.
Contested goods in Class 31
The contested live animals include live animals that are eaten live or sold to be
cooked in their living state, such as oysters, mussels and lobsters. The contested
goods and the opponent’s oysters, not live in Class 29 of earlier EUTM
No 14 101 109 have the same providers and distribution channels. These goods are,
therefore, considered similar to a low degree.
The contested fresh fruits and the opponent’s dried fruits in Class 29 of earlier EUTM
No 14 101 109 have the same distribution channels and relevant public.
Furthermore, they are in competition. These goods are, therefore, considered similar
to a low degree.
The same reasoning applies to the contested agricultural, horticultural and forestry
products not included in other classes, which include a variety of fresh fruits, and the
opponent’s dried fruits in Class 29 of earlier EUTM No 14 101 109. These goods are
considered similar to a low degree.
The contested fresh vegetables and the opponent’s dried vegetables in Class 29 of
earlier EUTM No 14 101 109 have the same distribution channels and relevant
public. Furthermore, they are in competition. These goods are similar to a low
degree.
The contested natural plants include fresh garden herbs. The contested goods and
the opponent’s garden herbs in Class 30 of earlier EUTM No 14 101 109 have the
Decision on Opposition No B 2 759 234 page: 6 of 10
same distribution channels and relevant public. Furthermore, they are in competition.
These goods are, therefore, considered similar to a low degree.
The contested malt and the opponent’s malt for human consumption in Class 30 of
earlier EUTM No 14 101 109 have the same producers and distribution channels.
These goods are, therefore, considered similar to a low degree.
The contested seeds (listed twice); flowers; foodstuffs for animals, are not similar to
any of the opponent’s goods in Classes 29 and 30. These goods do not have the
same purpose, method of use or distribution channels. Furthermore, they are neither
in competition nor necessarily complementary, and the end user would not expect
them to originate from the same producer. These goods are, therefore, considered
dissimilar.
Since all the goods found to be identical or similar to a low degree are covered by
earlier EUTM No 14 101 109, the assessment of likelihood of confusion will continue
on the basis of that earlier mark.
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 found to be identical or similar to a low degree are
directed at the public at large. The goods can, furthermore, be the subject of habitual
buying behaviour. Purchase decisions in this area relate to, for example, inexpensive
goods purchased on a daily basis (15/06/2010, T-547/08, Strumpf, EU:T:2010:235,
§ 43).
Therefore, the degree of attention when purchasing the relevant goods will vary from
lower than average to average, depending on the price of the goods and the
frequency of their purchase.
c) The signs
Paul’s Diner
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
Decision on Opposition No B 2 759 234 page: 7 of 10
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.
The elements of the signs under comparison 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.
The earlier mark is a word mark that consists of the elements ‘Paul’s Diner’. In the
case of word marks, it is the word as such that is protected, and not its written form.
Therefore, the use of upper or lower case letters is immaterial.
The word ‘Paul’ will be perceived by the relevant part of the public as a male given
name. The apostrophe and the letter ‘s’ after the name ‘Paul’ indicate possession.
The element ‘Paul’s’ of the earlier mark has no relation to the relevant goods and it is
therefore distinctive.
The element ‘Diner’ of the earlier mark will be understood by the relevant part of the
public as meaning, inter alia, ‘a small restaurant, often at the roadside; a fashionable
bar, or a section of one, where food is served ’ (information extracted from
http://dictionary.reverso.net/english-definition/diner). Bearing in mind that the relevant
goods are ‘foodstuffs and beverages’, this element is considered non-distinctive for
all of the relevant goods, as it refers to the place where the goods are
offered/served/used in the preparation of meals. The elements ‘Paul’s’ and ‘Diner’,
taken together, are likely to be perceived as ‘the restaurant (diner) of Paul’.
The contested sign is a figurative sign consisting of the elements ‘PAUL’S MEAT’,
written in bold rather standard upper case letters. The element ‘PAUL’S’ will be
perceived in the meaning given above, and reference is made to the conclusion on
its distinctiveness, equally applicable to the contested sign. The element ‘MEAT’ of
the contested sign will be understood by the relevant part of the public as meaning
‘the flesh of an animal used as food’. The elements ‘PAUL’S’ and ‘MEAT’, taken
together, are likely to be perceived as ‘meat that is offered (produced/sold/served) by
Paul’.
The relevant goods include foodstuffs, beverages, live animals, and land and sea
products. The element ‘MEAT’ will therefore be perceived either as directly referring
to the nature/purpose of the relevant goods (meat) or to other ingredients/products
used for seasoning/flavouring meat or to be cooked/served with meat to form a meal
or different courses of a meal. It is therefore considered that the element ‘MEAT’ is
non-distinctive for some of the relevant goods (e.g. meat in Class 29 and live animals
in Class 31), and its distinctiveness is lower than average for the remaining relevant
goods (e.g. preserved, dried and cooked fruits and vegetables in Class 29 and
spices in Class 30).
The contested sign has no element that could be considered clearly more dominant
than other elements.
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, which makes the part
placed at the left of the sign (the initial part) the one that first catches the attention of
Decision on Opposition No B 2 759 234 page: 8 of 10
the reader. Therefore, the fact that the signs coincide in their first element, ‘PAUL’S’,
is of material importance when assessing the likelihood of confusion between them.
Visually and aurally, the signs coincide in the element ‘PAUL’S’, present identically
as the first element in both signs. The signs differ in their second elements, namely
‘Diner’ in the earlier mark and ‘MEAT’ in the contested sign. As noted above, the
typeface of the contested sign is rather standard and therefore it does not add to the
differences between the signs.
Taking into account the commonalities between the signs, arising from their first
element, and considering the distinctiveness of the elements of the signs, already
analysed above, it is concluded that the signs are visually and aurally similar to a
high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as referring to an
object that belongs to Paul (due to the coinciding element ‘PAUL’S’) and they are
furthermore conceptually linked by the general concept of food/nourishment (due to
the elements ‘Diner’ and ‘Meat’), they are considered 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.
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 in question from the perspective of the relevant part of
the public in the relevant territory. Therefore, the distinctiveness of the earlier mark
must be seen as normal, despite the presence of a non-distinctive element in the
mark, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
As concluded above, the contested goods are partly identical, partly similar to a low
degree and partly dissimilar to the goods of the earlier mark. The degree of attention
will vary from lower than average to average when choosing the relevant goods.
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).
Furthermore, likelihood of confusion covers situations where the consumer directly
confuses the trade marks themselves, or where the consumer makes a connection
Decision on Opposition No B 2 759 234 page: 9 of 10
between the conflicting signs and assumes that the goods covered are from the
same or economically linked undertakings.
As concluded above, the earlier mark has a normal degree of distinctiveness for the
relevant part of the public. It has also been established that the signs are visually,
aurally and conceptually highly similar. The signs also have the same structure, that
is, the same configuration. The signs have in common their first element, ‘PAUL’S’,
followed by another element, namely ‘Diner’ in the earlier mark versus ‘MEAT’ in the
contested sign, both, however, being related to the general concept of
food/nourishment.
The commonalities in the beginnings of the signs and in their structures are likely to
lead the consumer to believe that the contested sign is a new line of products
launched by the opponent under the earlier sign, or a variation of that sign.
Furthermore, 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). In the
present case, the high degree of similarity between the signs offsets the lesser
degree of similarity between some of the goods.
In the light of the foregoing, and also taking into account the principle of
interdependence mentioned above, the degree of similarity between the marks is
sufficient to consider that a substantial part of the English-speaking public could
reasonably believe that the goods found to be identical or similar to a low degree
originated from the same undertaking or economically linked undertakings. This
would be the case even when the degree of attention is average.
In its observations, the holder argues that the earlier trade mark has a low distinctive
character given that many trade marks include the name ‘Paul’ and that ‘Paul’ is a
common given name. In support of its argument, the holder refers to some trade
mark registrations in the European Union and a printout from the website
www.goudengids.be, showing several entries for the name ‘Paul’ followed by an
address.
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 name ‘Paul’. Furthermore,
no evidence regarding any link between the given name ‘Paul’ and the relevant
goods was submitted that might lead to the conclusion that its distinctiveness in
relation to the relevant goods is limited. Under these circumstances, the holder’s
claims must be set aside.
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 No 14 101 109. 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.
Decision on Opposition No B 2 759 234 page: 10 of 10
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to a low degree to those of the earlier trade
mark.
The rest of the contested goods 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 goods cannot be successful.
As noted above (in the section headed ‘The goods’), the remaining contested goods
are also dissimilar to the goods of earlier European Union trade mark registration
No 11 294 709. Therefore, the outcome cannot be different with respect to goods for
which the opposition has already been rejected; no likelihood of confusion exists with
respect to those goods and this other earlier right.
The opponent has also based its opposition on European Union trade mark
registration No 14 101 117 ‘Paul’s Farmhouse’. Since this mark covers a narrower
scope of goods than earlier European Union trade mark registration No 14 101 109,
the outcome cannot be different with respect to goods for which the opposition has
already been rejected. Therefore, no likelihood of confusion exists with respect to
those goods and this other earlier 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, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Natascha GALPERIN Irina SOTIROVA André Gerd Günther
BOSSE
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.