OPPOSITION No B 2 719 477
Font Salem Portugal S.A., Quinta da Mafarra, Várzea, Santarém, Portugal (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha, 28001 Madrid, Spain (professional representative)
a g a i n s t
Deco, Via Colli Euganei, 47, 35030 Saccolongo (PD), Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 719 477 is partially upheld, namely for the following contested goods and services:
Class 32: Non-alcoholic beverages flavoured with coffee; coffee-flavoured beer.
Class 33: Alcoholic coffee-based beverage; coffee-based liqueurs.
Class 43: Cafés; self-service restaurants; catering services for company cafeterias.
2. European Union trade mark application No 15 215 701 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of goods and services of European Union trade mark application No 15 215 701, namely against all the goods and services in Classes 32, 33 and 43. The opposition is based on, inter alia, Portuguese trade mark registration No 358 701. 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 Portuguese trade mark registration No 358 701.
- The goods and services
The goods on which the opposition is based are the following:
Class 32: Beers.
The contested goods and services are the following:
Class 32: Non-alcoholic beverages flavoured with coffee; coffee-flavoured beer.
Class 33: Alcoholic coffee-based beverage; coffee-based liqueurs.
Class 43: Cafés; self-service restaurants; catering services for company cafeterias; coffee supply services for offices [provision of beverages].
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 32
The contested coffee-flavoured beer is included in the broad category of the opponent’s beers. Therefore, they are identical.
The contested non-alcoholic beverages flavoured with coffee are similar to a high degree to the opponent’s beers because these goods have the same purpose and coincide in producers, end users and distribution channels. Moreover, they are in competition.
Contested goods in Class 33
The contested alcoholic coffee-based beverage and coffee-based liqueurs are similar to the opponent’s beers because these goods have the same nature and coincide in end users and distribution channels.
Contested services in Class 43
The contested cafés, self-service restaurants and catering services for company cafeterias are related to the provision of food and drinks to others. Notwithstanding their different nature (goods vs. services), they are closely related to the earlier goods. There is evident complementarity between beers of the earlier mark and the contested services which involve the provision of the earlier goods. Moreover, the practice exists nowadays for producers of beers to offer the applicant’s services under the same brand and/or to offer their drinks in such establishments. To that end, the relevant public, which is the same for the competing goods and services, would expect that in some cases the commercial origin of said goods and services also coincide. In view of these factors, the contested services are similar to a low degree to the earlier mark’s goods.
The contested coffee supply services for offices [provision of beverages] are dissimilar to the opponent’s beers because the mere fact that the opponent’s goods are drinks and the contested services are related to the provision of beverages does not in itself lead consumers to think that responsibility for the production of beers and provision of coffee for offices lies with the same undertaking. These goods and services have a different nature, purpose and method of use. They do not coincide in end users and distribution channels. Moreover, they are neither complementary nor in competition.
- 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 different degrees are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention is considered average.
- The signs
| PRIMA
|
PRIMA MUSA
|
|
Earlier trade mark |
Contested sign |
The relevant territory is Portugal.
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).
In Portuguese, the most common meanings of the word ‘PRIMA’ are ‘female cousin’ or a conjugation form of the verb ‘premir’ meaning ‘to press’. The word ‘MUSA’ of the contested sign may be perceived by the relevant public as ‘an imaginary being, person, or force that gives someone ideas and helps them to write, paint, or make music’ or ‘each of the goddesses who presided over sciences, letters and liberal arts in Greek mythology’. As these terms are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.
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 the reader.
Visually and aurally, the signs coincide in the fact that the earlier mark is totally incorporated in the initial part of the contested sign. Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a coinciding meaning, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
A category of the contested services has been considered dissimilar to the opponent’s goods. The remaining goods and services, found to be identical or similar to different degrees, are directed at the public at large and business customers whose degree of attention is considered average.
The signs are similar to an average degree in each of the three aspects examined in their comparison, namely from the visual, aural and conceptual points of view. Moreover, the distinctiveness per se of the earlier trade mark must be seen as normal.
Account is also 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). Finally, 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 and services covered are from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 358 701.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to the opponent’s goods. The degree of similarity of the signs is sufficient to reject the contested trade mark also for the applicant’s services found only lowly similar.
The remaining 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 earlier EUTM registration No 11 414 646 for the figurative mark and for beers in Class 32.
This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘Cerveja’ and further figurative elements which are not present in the contested trade mark. Moreover, it covers the same scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
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 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
| Begoña URIARTE VALIENTE | Benoit VLEMINCQ | Martina GALLE |
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.