OPPOSITION No B 1 892 028

MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Thomas Honnet,  MIP METRO Group Intellectual Property GmbH & Co. KG,  Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Palladino Diego, 50 The Avenue, Sunbury on Thames, Middlesex TW16 5ES, United Kingdom (applicant).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 892 028 is upheld for all the contested goods and services.

2.        European Union trade mark application No 10 044 592 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350. 

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 044 592 ‘Pizza Metro Pizza’. The opposition is based on European Union trade mark registrations No 7 585 045  and No 779 116 . 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.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

EUTM No 7 585 045

Class 39: Transport; packaging and storage of parcels and/or goods; collection and delivery of parcels and/or goods; transport of parcels and/or goods by vehicle, ship, aeroplane; logistics services (included in class 39), in particular order entry, storage and contract logistics, procurement logistics, distribution logistics and returns logistics (stock management), including by means of RFID; Transport; freight brokerage services; haulage (freight transport), other than the customs clearance of goods, for others; transport brokerage; tracking, including electronic tracking of goods.

EUTM No 779 116

Class 9: Electric and electronic apparatus and instruments (included in class 9); spectacles, field glasses, projectors, enlarging equipment, stands for cameras; radio and television apparatus, voice machines, entertainment equipment, being adapted for use with television apparatus; colour photocopying equipment and machines, including electrostatic and thermal colour photocopying equipment and machines, photocopiers and other copying apparatus; special purpose containers, specially adapted for the aforesaid apparatus and instruments; electric soldering apparatus, electric welding apparatus, autogenous welding apparatus, battery charging apparatus; foil sealing devices; wax polishing machines, flat irons; protective helmets for people engaging in winter sports, horse riders, cyclists and motorcyclists; diving suits, diving goggles, ski goggles; clothing for protection against accidents, including shoes, special clothing for life-saving purposes, face protection shields, protective goggles or protective masks for workers; exposed films; batteries, tachometers, transformers; electric cables, wires, conductors and connection fittings therefor, commutators, distribution boards and distributing boxes; warning triangles; fire-extinguishing apparatus; cash registers, calculating machines, data processing equipment and computers, data carriers containing machine-readable programs, data processing programs; automatic vending machines and mechanisms for coin-operated apparatus; magnetic data carriers in the form of tapes, films, discs, cassettes, sound recording discs; apparatus for recording, transmission or reproduction of sound or images; nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for weak-current engineering, namely for telecommunications, high-frequency engineering and control engineering; scientific apparatus and instruments for scientific research in laboratories; metal detectors and voltage detection apparatus; garage door openers.

Class 30: Dietetic substances with a protein and/or carbohydrate base, being foodstuffs for nutrient-reduced and/or calorie-controlled consumption; salad dressings, mayonnaise; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee and tea; flour and preparations made from cereals (except foodstuffs for animals), in particular breakfast cereals; pasta; chocolate and chocolate goods, pralines, including pralines with a liquid filling of wine and/or spirits, sweets, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; edible salt; mustard; vinegar, sauces [except salad dressings]; spices and condiments; flavourings for food.

Class 39: Travel arrangement, arrangement of tourist services, sightseeing, rental of garages and parking places, rental of vehicles, parcel delivery; collecting, transporting and sorting of waste and secondary raw materials.

Class 42: Computer programming, rental of electronic data processing installations; providing of food and drink, party services, consultancy for businesses which manufacture and/or use packaging and/or packaging materials, in the development, selection and use of ecologically compatible and economically viable packaging and packaging materials, and in the labelling of the aforesaid packaging and packaging materials; business and consumer consultancy in matters relating to the environment and waste, namely consultancy in the avoidance of waste, and in the collecting, transporting, sorting, evaluating and disposal of waste and secondary raw materials; copyright management and exploitation (all the aforesaid services for others); providing of expert opinion in the commercial and professional business sector, in particular for the retail food sector, providing commercial and professional business know-how, in particular for the retail food sector; disposal of waste and secondary raw materials for others using chemical, physical and/or biological processes.

The contested goods and services are the following:

Class 30: Bread.

Class 39: Packaging and storage of goods.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

Class 43: Services for providing food and drink.

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 opponent’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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and 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 goods in Class 30

Bread is identically contained in both lists of goods.

Contested services in Class 39

Packaging and storage of goods is identically contained in both lists of services.

Contested services in Class 42

Scientific and technological services and research and design relating thereto are similar to scientific apparatus and instruments for scientific research in laboratories in Class 9 as they can coincide in producer and end user. Furthermore they are complementary.

Design and development of computer hardware and software are similar to data processing equipment and computers in Class 9 as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

Industrial analysis and research services are similar the opponent’s consultancy for businesses which manufacture and/or use packaging and/or packaging materials, in the development, selection and use of ecologically compatible and economically viable packaging and packaging materials in Class 42 as they can coincide in purpose, provider, end user and distribution channels. Furthermore, the services are complementary.

Contested services in Class 43

Services for providing food and drink are identically contained in both lists of services, although in different classes due to the reclassification of the services in different versions of the Nice classification.

2. 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 and also at 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 goods and services, the frequency of purchase and their price.

3. The signs

EUTM No 7 585 045 EUTM No 779 116	Pizza Metro Pizza
Earlier trade marks	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 figurative marks contain a word element METRO. It is perceived in nearly all relevant languages, due to the same or highly similar transcription/transliteration, as referring to an underground railway. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. In the earlier mark a) the word is depicted in yellow and placed on a rectangular blue background. In the earlier mark b) the word element is depicted in yellow.

The same element METRO is also present in the contested mark. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The element PIZZA of the contested sign will be understood as referring to a flat, round piece of dough covered with tomatoes, cheese, and other savoury food, and then baked in an oven (information extracted from Collins English dictionary on 07/08/2017 at www.collinsdictionary.com).

Bearing in mind that the relevant goods and services are bread, restaurant services, technological and industrial services, this element is weak for part of these goods and services, namely for goods in class 30 and services in class 43 as it refers to the nature of the goods and/or to the subject of the services. It is distinctive for the remaining services.

As regards the earlier sign a), it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature consisting of a banal blue square shaped background. Therefore, the verbal element is more distinctive than the figurative element.

The earlier marks have no elements that could be considered clearly more dominant than other elements.

It is noted that, since the contested mark is a word mark, it is the words that are protected, not their written form.

Visually, the signs coincide in the element METRO. This word constitutes the only word in the earlier marks and the distinctive word element in the contested mark.  However, the marks differ in the words PIZZA of the contested mark which are less distinctive for part of the relevant goods and services, and in the stylisation elements of the earlier marks.

Therefore, considering what has been said above about the distinctiveness of the elements in the contested mark, it is considered that the signs are visually similar to a higher than average degree for the goods and services for which the element PIZZA is weak, and similar to an average degree for the remaining services.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables MET-RO present identically in both signs and being the only pronounceable element in the earlier marks. The pronunciation differs in the sound of the element PIZZA (repeated twice), which was found less distinctive for part of the relevant goods and services, which has no counterpart in the earlier sign.

Therefore, considering what has been said above about the distinctiveness of the elements in the contested mark, it is considered that the signs are aurally similar to a higher than average degree for the goods and services for which the element PIZZA is weak, and similar to an average degree for the remaining services.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived with the same meaning in respect of the common element METRO, which forms the entirety of the earlier marks and is the distinctive element in the contested mark.  

Therefore, considering what has been said above about the distinctiveness of the elements in the contested mark, it is considered that the signs are conceptually similar to a higher than average degree for the goods and services for which the element PIZZA is weak, and similar to an average degree for the remaining services.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services have been found partially identical and partially similar. The visual, aural and conceptual aspects have been examined.

The marks have visual and aural similarities in respect of the element METRO, present in the marks. This element is the only word element of the earlier marks, being also the distinctive element of the contested mark. In respect of the differences, consisting of the double inclusion of the element PIZZA in the contested mark, the distinctiveness of which has been discussed above, or in the slight stylisation of the earlier marks, even if they are noticed, the likelihood of confusion is not excluded since METRO has an independent and distinctive role in the contested mark.  Although the general rule that the public tends to pay particular attention to the first part of the trade mark is not being disregarded in the present case, the differences between the signs, even though they are placed at the beginning of the contested sign, cannot outweigh the prevailing coinciding elements perceived by the public. The earlier marks’ word elements are fully encompassed in the contested sign.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

In the present case, the established similarities between the signs are sufficient to cause at least part of the public in the relevant territory to believe that part of the conflicting goods and services, which have been found identical and similar, come from the same undertaking or from economically linked undertakings. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). The relevant public could therefore believe that the contested sign is a version of the earlier marks based on the same core element.

Bearing in mind the foregoing, it is considered that the dissimilarities between the signs are not enough to counteract the significant and evident similarities perceived by the consumers.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s earlier trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(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.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Zuzanna STOJKOWICZ

Erkki MÜNTER

Irina SOTIROVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be 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 Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.