OPPOSITION No B 2 733 965

LA PIZZA + 1 S.P.A., Via Galileo Galilei 11/13, 29027 Gariga di Podenzano PC, Italy (opponent), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

BBP PIZZA, Al. Solidarności 36, 25-323 Kielce, Poland (applicant), represented by Porębski i Wspólnicy Spółka Komandytowa, ul. Bagatela 11 app. 14, 00-585 Warsaw, Poland (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 733 965 is partially upheld, namely for the following contested goods:

Class 30:        Confectionery, chocolate, desserts.

2.        European Union trade mark application No 14 719 661 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 719 661 . The opposition is based on European Union trade mark registration No 6 213 847 , international trade mark registration No 1 024 537 designating the European Union ‘LA PIZZA + 1’ and Italian trade mark registration No 1 252 107 ‘LA PIZZA + 1’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK REGISTRATION No 1 024 537

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards one of the earlier trade marks on which the opposition is based, that is, international trade mark registration No 1 024 537 designating the European Union.

On 26/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 08/12/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 1 024 537 designating the European Union.

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 6 213 847.

1. The goods and services

The goods on which the opposition is based are the following:

Class 30:        Pizzas, Bread, Pasta, Flat loafs, Stuffed pizzas, Panzerotti, Flour; farinaceous food pastes; preparations made of cereals and flours, both stuffed and not.

The contested goods and services are the following:

Class 30:        Baked goods, confectionery, chocolate and desserts; pizza bases; pizza crust; pizzas; pizzas [prepared].

Class 35:        Advertising, marketing and promotional services; business assistance, management and administrative services; commercial trading and consumer information services.

Class 43:         Provision of food and drink; services for providing food and drink; restaurants; self-service restaurants; services for the preparation of food and drink; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; serving food and drinks; serving of alcoholic beverages; snack-bars; take-out restaurant services; takeaway services; providing food and drink for guests in restaurants; pizza parlors; preparation and provision of food and drink for immediate consumption.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 30

Pizzas are identically contained in both lists of goods.

The contested pizza bases; pizza crust; pizzas [prepared] are included in the broad category of, or overlap with, the opponent’s pizzas. Therefore, they are identical.

The contested baked goods include, as a broader category, the opponent’s bread. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested confectionery, chocolate, desserts are similar to the opponent’s preparations made from cereals. They have the same purpose. They can coincide in end users and distribution channels. Furthermore, they are in competition. In addition, confectionery can have the same producer as preparations made from cereals

Contested goods in Class 35

The contested advertising, marketing and promotional services; business assistance, management and administrative services; commercial trading and consumer information services are dissimilar to the opponent’s goods. These goods and services differ in their nature, as goods are tangible whereas services are intangible. They also differ in their ultimate purpose; they are neither complementary nor in competition. They do not target the same consumers and do not originate from the same companies.

Contested goods in Class 43

The contested provision of food and drink; services for providing food and drink; restaurants; self-service restaurants; services for the preparation of food and drink; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; serving food and drinks; serving of alcoholic beverages; snack-bars; take-out restaurant services; takeaway services; providing food and drink for guests in restaurants; preparation and provision of food and drink for immediate consumption are similar to a low degree to the opponent’s pizzas.

The contested services in Class 43 are for serving food and drinks for immediate consumption. The mere fact that food and drinks are consumed in a 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).

These goods of the opponent (i.e. pizzas) are commonly served by specialised restaurants and pizza parlours and also distributed by these restaurants independently as goods (as take-away), and not merely as an ancillary part of their restaurant services.

Indeed, it is a common market practice that these goods are offered for the customers as take-away portions, which are often delivered in packages carrying as identifiers the marks and logos of the restaurants providing these goods. Furthermore, when these goods (pizza) are purchased as take-away portions the price of the goods (pizza) can often be lower than when they are served inside the restaurant. This market reality is an indication that the customer who purchases these goods as take-away portions is primarily purchasing these goods and not receiving them merely as an ancillary part of restaurant services. Therefore, the market reality is that the providers of restaurant and pizza parlour services also provide pizza under their brands.

In addition to the facts regarding the market reality explained above, there are other factors supporting the finding of similarity to a low degree. In particular, these goods and services may be in competition with each other and they aim partly to fulfil the same purpose (namely to satisfy hunger), even if restaurant services have other purposes as well (e.g. offering the act of preparing the food and premises for the food to be eaten).

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 (to various degrees) are directed at the public at large. The degree of attention may vary from below average to average, as some of the goods (e.g. bread, confectionery) are inexpensive and purchased on a daily basis.

3. The signs

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 earlier mark is a figurative mark composed of the words ‘LA’ and ‘PIZZA’, the mathematical symbol ‘+’ and the digit ‘1’. They are written in rather standard white upper case letters on a red circular background with a yellow border and a yellow figurative element resembling a pizza.

The contested sign is a figurative mark made of the word ‘PIZZA’ and the digit ‘1’. They are written in standard upper case characters in black (the word) and red (the digit). The digit ‘1’ is larger than the word ‘PIZZA’ and there is no gap between them.

The word ‘PIZZA’ (contained in both signs) 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 and to that extent it is descriptive. This kind of food and its name (i.e. pizza) are known worldwide. Although it is an Italian word, it is commonly used in the European Union Member States by pizza producers and providers (e.g. restaurants).

The term ‘pizza’ (originating from Italian) is spelled identically or very similarly in a number of languages of the European Union: for example in Czech, Danish, Dutch, English, Finnish, French, German, Polish, Hungarian, Romanian, Slovak, Slovenian and Swedish. It is also very similar to equivalent words in other languages, such as ‘pitsa’ in Estonian and ‘pica’ in Lithuanian. Its transcription in Bulgarian is ‘пица’ and in Greek is ‘πίτσα’, but those languages also use the Latin characters ‘pizza’. In Bulgarian and Greek, the words for pizza are pronounced as ‘pica’/‘piza’.

Bearing in mind that the relevant goods are food related, it is considered that this element is weak for some of the opponent’s goods, namely pasta, panzerotti, flour. It is also weak for some of the contested goods, that is, baked goods, and all of the contested services, namely provision of food and drink; services for providing food and drink; restaurants; self-service restaurants; services for the preparation of food and drink; serving food and drink for guests; serving food and drink for guests in restaurants; serving food and drink in restaurants and bars; serving food and drinks; serving of alcoholic beverages; snack-bars; take-out restaurant services; takeaway services; providing food and drink for guests in restaurants; pizza parlors; preparation and provision of food and drink for immediate consumption. For the provision of food, the verbal element ‘PIZZA’ is non-distinctive, as it indicates only that these providers of food provide pizzas. Regarding the rest of the opponent’s goods, namely pizzas, stuffed pizzas, bread, flat loafs, farinaceous food pastes; preparations made of cereals and fours, both stuffed and not, and the rest of the contested goods, that is, pizza bases; pizza crust; pizzas; pizzas [prepared], the word ‘PIZZA’ is non-distinctive, as it describes these goods. Some of these goods are pizzas or could  taste like pizza, be preparations to make pizza or be used on a pizza. It is distinctive for only some of the goods of the contested signs, namely confectionery, chocolate and desserts.

The public understands the meaning of the element and will not pay as much attention to this weak/non-distinctive element. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The majority of the public will associate the word ‘LA’ of the earlier mark, which appears before the word ‘PIZZA’, with an Italian article (it can also be an article in French, Portuguese and Spanish). Therefore, for this part of the public it will be non-distinctive (it will be perceived as the article of the word ‘PIZZA’). The words ‘LA’ and ‘PIZZA’ will be seen as one expression, ‘LA PIZZA’. For the rest of the public, which does not know the above concept, the word ‘LA’ will be distinctive. This part of the public will most likely perceive these words as separate verbal elements.

The digit ‘1’ present in both signs conveys the concept of the number it signifies. In the contested sign, it cannot be ruled out that the majority of the public will perceive the digit ‘1’ as designating pizza No 1, the best of its kind. It stands just after the word ‘PIZZA’. In the earlier mark, the mathematical sign ‘+’ stands before the digit ‘1’ so it will be perceived by the majority of consumers as a mathematical formula, ‘+1’, meaning ‘one more’. It is very unlikely that the public will divide the expression ‘+1’ into two separate elements, namely ‘+’ and ‘1’. In both scenarios, these elements (i.e. ‘+1’ of the earlier mark and ‘1’ of the contested sign) are weak for all the goods and services in question and their impact on the comparison of the signs is limited.

The figurative elements of both signs are decorative and their distinctiveness is rather low.

The signs under comparison have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘PIZZA’ and the digit ‘1’. However, they differ in the verbal element ‘LA’ and the mathematical sign ‘+’ of the earlier mark as well as in the figurative elements present in both signs.

Therefore, the signs are visually similar to a low degree.

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 letters ‛PIZZ-A’ and the digit ‛1’ (if pronounced), present identically in both signs. The pronunciation differs in the sound of the letters ‛LA’ and the mathematical sign ‛+’ of the earlier sign, which have no counterparts in the contested mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the signs are dissimilar because they overlap in a non-distinctive element and the differentiating elements convey different distinctive concepts. Therefore, the overlap has no impact.

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 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 trade marks ‛have acquired awareness in relation to the relevant consumer in Italy and also within the European Union as a consequence of the use made by the opponent’. The opponent does not specify the goods that have acquired this recognition.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

– a printout from the opponent’s website entitled ‛The company and its mission’. According to this document, ‛today our products are present on the shelves of the most important mass distribution chains, as well as in the kitchens of the main Italian catering companies’ (Exhibit 1);

– a document prepared by the opponent and concerning its expansion within the European Union (Exhibit 2);

– a printout from the opponent’s website entitled ‛La pizza pio lunga del Mondo – The longest pizza in the world’. According to this document, ‛last Saturday, June 20th, inside the Universal Exhibition Expo Milano 2015, with the help of a staff of over 200 people, we have officially conquered the record proclaimed by Guinness World Records. Thanks to our pizza … Italy is back in possession of the record for the longest pizza in the world surpassing the previous official record that belonged to Spain …’ (Exhibit 3).

The opponent did not submit any other documents such as surveys of the mark’s recognition, invoices, price lists, affidavits, turnover and sales figures, press cuttings, samples of products and advertisements.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question, namely pizzas, bread, pasta, flat loafs, stuffed pizzas, panzerotti, flour; farinaceous food pastes; preparations made of cereals and fours, both stuffed and not in Class 30.

5. Global assessment, other arguments and conclusion

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.

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.

As concluded above, the contested goods are partly identical and partly similar, and the contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods (i.e. services in Class 35). The signs are visually similar to a low degree and aurally similar to an average degree. Conceptually, they are dissimilar. The earlier mark has a weak degree of distinctiveness. Furthermore, the public in question includes the public at large, whose degree of attention will vary from below average to average.

For some of the contested goods, namely confectionery, chocolate, desserts, the word ‘PIZZA’ (also in conjunction with the digit ‘1’ in the contested sign and the mathematical formula ‘+1’ in the earlier mark) is distinctive. For the rest of the contested goods and services that are identical or similar to various degrees to the opponent’s goods, the abovementioned word is either non-distinctive or weak.

There is a likelihood of confusion because the signs coincide in a distinctive element with regard to these goods, which are the only verbal elements in both signs.

As a consequence, the contested trade mark must be rejected for some of the contested goods, namely confectionery, chocolate, desserts, that are similar to those of the earlier trade mark.

With respect to the other goods and services of the contested sign, the signs cannot be confused with each other by the relevant public. There is no reason why consumers would believe that goods such as pizza, or services such as those of pizza parlours, sold under the sign  originate from the same undertaking, or an economically linked one, as pizza sold under the sign . The word ‘PIZZA’, even in combination with an additional element such as ‘+1’ or ‘1’, is so commonly used that it cannot serve as a badge of origin for the goods such as pizza or services such as those of pizza parlours.

The low degree of distinctiveness of the coinciding elements of the signs, and even of the whole earlier mark, whose distinctiveness derives only from the fact that it is figurative, is sufficient to exclude a likelihood of confusion between them, even taking into account the degree of attention of the relevant public indicated above (i.e. from below average to average).

Although the signs have a word and a digit in common, the relevant public will immediately be able to distinguish the signs on the basis of the verbal and numerical elements of the signs in question (where the word ‘PIZZA’ or the expressions ‘PIZZA+1’/‘PIZZA1’ are either weak or non-distinctive). Therefore, considering all the above, there is no likelihood of confusion on the part of the public in the relevant territory with regard to these goods and services.

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.

The opponent has also based its opposition on the following earlier trade mark:

•        Italian trade mark registration No 1 252 107.

This other earlier right invoked by the opponent covers part of the same territory and has the same verbal content as the earlier mark described under point c) of this decision (i.e. it is the word mark ‘LA PIZZA + 1’). This trade mark covers the following goods: 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.

Flour and preparations made from cereals, bread are also covered by European Union trade mark registration No 6 213 847 (the comparison has been made above with regard to these goods). Therefore, the comparison should concern only coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice of the earlier mark, that is, Italian trade mark registration No 1 252 107. The contested services in Class 35 that are dissimilar to the goods of European Union trade mark registration No 6 213 847 are also dissimilar to the aforesaid goods of Italian trade mark registration No 1 252 107. These goods and services differ in their natures, as goods are tangible whereas services are intangible. They also differ in their ultimate purposes; they are neither complementary nor in competition. They do not target the same consumers and do not originate from the same companies.

As a result, no likelihood of confusion exists with respect to this earlier trade mark invoked either.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Janja FELC

Michal KRUK

Loreto URRACA LUQUE

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.