OPPOSITION DIVISION
OPPOSITION No B 2 439 373
Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG,
Meicastr. 6, 26188 Edewecht, Germany (opponent), represented by Glawe, Delfs,
Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional
representative)
a g a i n s t
Roberto Ugolini, Viale Parioli 55, 00197 Rome, Italy (applicant), represented by
Studio Rag. G. Gristina S.R.L., Largo Appio Claudio 395, 00174 Roma, Italy
(professional representative).
On 16/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 439 373 is partially upheld, namely for the following
contested services:
Class 43: Restaurants; pizza parlors.
2. European Union trade mark application No 13 062 401 is rejected for all the
above services. 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 062 401 for the figurative mark . The
opposition is based on, inter alia, European Union trade mark registration
No 2 885 077 for the word mark ‘Curry King’. The opponent invoked Article 8(1)(b)
EUTMR.
Decision on Opposition No B 2 439 373 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 2 885 077.
a) The goods and services
The goods on which the opposition is based are the following:
Class 29: Ready-to-cook or ready-to-eat meals or snacks, mainly consisting of
charcuterie; all the aforesaid goods with, or for use with, curry.
The contested goods and services are, after the applicant’s limitation of 25/11/2016,
the following:
Class 11: Ovens for cooking pizza.
Class 43: Restaurants; pizza parlors.
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 11
The contested ovens for cooking pizza are considered dissimilar to all of the
opponent’s goods in Class 29. The conflicting goods have different natures, methods
of use and intended purposes. As they belong to different market sectors, they do not
have the same distribution channels and they originate from different undertakings.
They are neither complementary nor in competition.
Contested services in Class 43
The contested restaurants; pizza parlors are services involving serving food and
drinks directly for consumption. The market reality shows that some producers of
foodstuffs and/or drinks also provide restaurant services under their brand; however,
this is not an established trade custom and rather applies to (economically)
successful undertakings. The mere fact that foods and drinks are consumed in a
Decision on Opposition No B 2 439 373 page: 3 of 7
restaurant is not enough reason to find similarity between them (09/03/2005, T-33/03,
Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, Thai SPA / SPA et al., § 24-
26).
Nevertheless, in certain situations these goods and services can be complementary
(17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09,
Yorma’s, EU:T:2011:37, § 46). In particular, goods or services are complementary if
one is indispensable or important for the use of the other in such a way that
consumers may think that responsibility for the production of those goods or the
provision of those services lies with the same undertaking.
On the other hand, consumers may think that responsibility lies with the same
undertaking if the market reality is that the provision of food and drinks and the
manufacture of such goods are commonly offered by the same undertaking under the
same trade mark (the opponent’s ready-to-cook or ready-to-eat meals or snacks; all
the aforesaid goods with, or for use with, curry in the applicant’s restaurants and
pizza parlors). In such cases, there is a low degree of similarity.
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 similar to a low degree are directed at
the public at large. The degree of attention will be average.
c) The signs
Curry King
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 element ‘CURRY’ of the earlier mark will be understood by the relevant public as
a ‘spicy dish of oriental, especially Indian, origin’ (see Collins English Dictionary
online). It will be understood by the relevant public in the whole EU, since this word is
also used in the languages of the Member States. Within the context of the goods
Decision on Opposition No B 2 439 373 page: 4 of 7
and services at stake, this element is directly descriptive of either the type of the food
being produced or served, or its flavour.
The element ‘KING’ contained in both marks is a basic commonly used English word
which means ‘a person, animal, or thing considered as the best or most important of
its kind’ (see Collins English Dictionary online) and as such it will be understood by
the relevant public. This word is mostly used as a laudatory term in the sense of ‘the
best in one area’ in relation to any goods or services (see by analogy 20/09/2011,
T-99/10, Tofuking, EU:T:2011:497, § 26). Thus, this element most likely will be
perceived by the relevant public as rather weak in relation to the goods and/or
services at stake.
The element ‘PIZZA’ of the contested sign will be understood by the relevant public
as referring to a ‘dish of Italian origin consisting of a baked disc of dough covered
with a wide variety of savoury toppings’ (see Collins English Dictionary online) and to
that extent it is descriptive. Bearing in mind that the relevant goods and services are
food-related ones, the verbal element ‘PIZZA’ is non-distinctive, as it indicates only
that the company is involved in producing or providing pizzas or ingredients for
pizzas or taste like pizzas. Insofar as the contested sign’s device is concerned, it is
worth mentioning that it will be perceived by the relevant public as a depiction of a
pizza reinforcing the word ‘PIZZA’. Since this representation is very basic and lacks
additional elements which might render it fanciful, this element is not distinctive
either.
Consequently, the most distinctive part of the marks under comparison is the word
‘KING’.
Visually, the signs coincide in the element ‘KING’ which constitutes the most
distinctive element in both signs. They differ in the additional terms ‘CURRY’ of the
earlier mark and ‘PIZZA’ of the contested sign, both being descriptive in relation to
the goods and services at stake. The same holds true insofar as the figurative device
of the contested sign is concerned, for the reasons mentioned before.
Furthermore, to this extent it should be mentioned that when signs consist of both
verbal and figurative components (as does the contested sign in the present case), 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; decisions of 19/12/2011, R 233/2011-4 Best
Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE
OF AN ELEPHANT (fig.), § 59). This is even more the case here, since the device of
the contested sign is also non-distinctive.
Regarding the slightly fancy typeface in which the contested sign is written, this
stylisation must be considered not that elaborated or sophisticated and it will not lead
the consumer’s attention away from the elements it seems to embellish.
For the sake of completeness, the Opposition Division points out that insofar as the
earlier mark is concerned, as it is a word mark, it is irrelevant whether it is written in
lowercase or uppercase letters or a combination of both (31/01/2013, T-66/11,
‘Babilu’, EU:T:2013:48, § 57).
Decision on Opposition No B 2 439 373 page: 5 of 7
Whilst considering the previous assertions regarding the distinctiveness of the
elements, the differences between the marks under comparison cannot overcome
the finding of at least an average degree of visual similarity between the signs.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the term
‛KING’, which constitutes the most distinctive element of the marks. The
pronunciation differs in the sound of the terms ‘CURRY’ vs ‘PIZZA’, respectively, both
having limited impact, if any, in the comparison as such.
Therefore, the signs are considered aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Although the coinciding word ‘KING’ will evoke a
concept, thus taking into account the distinctiveness issues, the signs are
conceptually similar to an average degree. It should be pointed out that the additional
elements of the marks, i.e. ‘CURRY’ and ‘PIZZA’, the latter reinforced by the same
figurative element, due to their non-distinctive character, cannot offset the conceptual
similarity of the marks.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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 public in the
relevant territory. Even considering what was stated in section c) of this decision, the
distinctiveness of the earlier mark as a whole is normal.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The goods and services have been found partly similar to a low degree and partly
dissimilar. The earlier mark has a normal degree of distinctiveness. The signs are
visually similar to at least an average degree, aurally similar to a high degree
whereas conceptually similar to an average degree. The relevant public is the public
at large whose level of attention is average.
Decision on Opposition No B 2 439 373 page: 6 of 7
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).
A coincidence in an element with a low degree of distinctiveness will not normally on
its own lead to likelihood of confusion. However, there may be likelihood of confusion
if the other components are of insignificant visual impact and the overall impression
of the marks is similar. There may also be likelihood of confusion if the overall
impression of the marks is highly similar or identical. In the present case, the overall
impression of the marks is similar owing to the common term ‘KING’ which
constitutes the most distinctive element in both marks.
In addition, it should be stressed that 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.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand, a variation of the earlier mark, configured in a different way
according to the type of services that it designates (23/10/2002, T-104/01, Fifties,
EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs
at stake distinguish different lines of goods and services provided by the same
undertaking or from connected entities sharing the element ‘KING’.
In view of all the relevant factors in the present case and also the principle of
interdependence between them, i.e. the principle that a lesser degree of similarity
between the goods and services may be offset by a greater degree of similarity
between the marks, the relevant public could be mistaken as to the origin of those
services that are similar even only to a low degree.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the relevant public and, therefore, the opposition is partly
well-founded on the basis of the opponent’s European Union trade mark registration
No 2 885 077.
It follows from the above that the contested trade mark must be rejected for the
services found to be similar to a low degree to the earlier mark’s goods.
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.
Since the opposition is partially successful on the basis of the inherent
distinctiveness of the earlier mark, there is no need to assess the enhanced degree
of distinctiveness of the opposing mark due to its extensive use as claimed by the
opponent and in relation to similar to a low degree services. The result would be the
same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing mark in relation to dissimilar goods, as the similarity of goods and
services is sine qua non for there to exist likelihood of confusion. The result would be
the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
For the sake of completeness, it should be pointed out that the opponent has also
based its opposition on German trade mark registration No 30 404 434 for the word
Decision on Opposition No B 2 439 373 page: 7 of 7
mark ‘KING’. This earlier mark covers goods such as meat and charcuterie, poultry
and game, also in ready-to-eat, preserved, marinated and deep-frozen form; meat
extract; jellies; food preserves, snacks, also suitable for microwave, mainly
containing meat and sausages; food in ready-to-cook, ready-to-grill or ready-to-eat
form, also suitable for microwave, mainly containing meat and sausages, poultry and
game, sausage products in dough rolls, hot dogs in Class 29. These goods are
clearly different from the goods in Class 11 of the contested sign, for the same
reasons as the goods already compared above. Therefore, the outcome cannot be
different with respect to the goods for which the opposition has already been
rejected; no likelihood of confusion exists with respect to those goods.
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
Chantal VAN RIEL Klaudia MISZTAL Saida CRABBE
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.