OPPOSITION No B 2 491 242

Qbo Coffee GmbH, Birkenweg 4, 8304 Wallisellen, Switzerland (opponent), represented by Freischem & Partner Patentanwälte Mbb, Salierring 47 – 53, 50677 Köln, Germany (professional representative)

a g a i n s t

Gianluca Montanari, Corso Garibaldi 227, 47100 Forli', Italy and Gianluca Mondardini,  Via Navicella 5- Frazione,  Pieveacquedotto, 47100 Forli', Italy  (applicants), represented by Innova & Partners S.R.L., Via Giacomo Leopardi 2, 60122 Ancona, Italy (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 491 242 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 441 282. The opposition is based on, inter alia, international trade mark registration No 1 190 197 designating the European Union. 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 international trade mark registration No 1 190 197  designating the European Union.

1. The goods and services

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

Class 30:         Coffee; coffee extracts; beverages and preparations for making coffee-based beverages; edible ices; tea, cocoa and artificial coffee; artificial coffee extracts; beverages and preparations for making same based on artificial coffee; tea; tea extracts; beverages and preparations for making tea-based beverages; malt-based preparations for human consumption; beverages and preparations for making cocoa-based beverages; chocolate and chocolate-based products; beverages and preparations for making chocolate-based beverages; cereal preparations; bread, pastry and confectionary; sugar, honey, treacle; cakes, pies, biscuits; tarts; sugar confectionery; muesli and cereals, also in the form of bars.

Class 35:         Retailing and retail sales via the Internet; presentation and bringing together of various goods and services via global computer networks (Internet) enabling customers to view, compare and purchase; advertising; marketing; business management; business administration; commercial sponsoring (advertising); e-commerce services, namely provision of Information on goods via telecommunication networks for advertising and commercial purposes; a-commerce services, namely billing of consumers or end users.

Class 43:         Services for providing food and beverages in hotels, motels, boarding houses, cafés, cafeterias, restaurants and bars; hotel, motel, boarding house, restaurant, cafe, cafeteria and bar services; accommodation for guests; room reservations in hotels, motels and boarding houses; accommodation agencies (hotels, boarding houses and motels); booking of seats and tables in hotels, motels, boarding houses, cafes, cafeterias, restaurants and bars.

The contested goods and services are the following:

Class 30:         Ice.

Class 35:         Business consultancy, advertising, advertising on the Internet; Presentation of goods and services on the Internet; Business management; Marketing services;  Marketing services provided via the Internet; Auctioneering provided on the Internet; Business administration; Business advice relating to franchising; Commercial management assistance in relation to franchises; Merchandising; Office functions.

Class 43:         Services for providing food and drink; Self-service restaurants; Providing of food and drink, cafés; Catering services for private households; Services for providing organic food and drink; Take-out restaurant services; Catering specialising in pizzas served in restaurants and to take away; Pizza parlors; Restaurant services incorporating licensed bar facilities; Bar services; Restaurant services; Restaurants with organic menus; Temporary accommodation; Accommodation bureau services; Room hire services.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

3. The signs

QBO
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 word mark. It is a short mark of three letters.  The mark has no meaning for the relevant public and is, therefore, distinctive.

The contested mark is a figurative mark. It contains letters QBIO in upper case, whereas the letter Q is in darker colour than the rest. Due to the stylisation, the letters BIO are immediately perceived and understood as referring to ‘biological’, this term being present or clearly understood in all the relevant languages.  Bearing in mind that the relevant goods and services are business management,  restauration and temporary accommodation services,   this element is weak for part of these services, namely for all restauration services, as it may indicate that biological, healthy food/drinks are being prepared and served in these establishments.

The mark has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in that they contain letters QB in their beginnings and O at their ends, these letters being. The marks differ in stylisation and, furthermore, in the letter I of the contested sign, which is not present in the earlier mark. The level of distinctiveness, of the letters BIO of the contested mark is also noted.

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 Q and B and O present identically in both signs. The pronunciation differs in the sound of the letter I of the contested mark, which has no counterpart in the earlier sign.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the element BIO of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services have been assumed identical. The similarities and dissimilarities between the marks have been established.

The signs are visually and aurally similar only to the extent that they have in common the letters QB in their beginnings and O at their ends. These similarities,  in coinciding letters alone, are not sufficient for a likelihood of confusion to exist, contrary to the arguments of the opponent.. The stylisation of these letters, the additional letter I, and the clearly perceivable element BIO in the contested mark, will be clearly perceived. Although BIO is weak for some services, it remains distinctive for others. In both cases, it creates a clear difference between the marks. In addition, the earlier mark has three letters and is a short mark. It is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The differences between the marks are sufficiently marked to allow the relevant public to distinguish between them. The opponent has not claimed higher distinctiveness for its mark.

The marks as a whole give a different impression as a result of these clear differences listed above. Besides, 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. These differences, considering the marks presently examined, are considered to be sufficient to counteract the fact that the some of the goods and services have been assumed identical. The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the abovementioned imperfect recollection principle. Therefore, consumers are unlikely to assume that the goods and services labelled with the earlier mark and goods and services of the contested sign come from the same or economically-linked undertakings.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the earlier international registration No 1 192 507 designating the European Union.

Since this mark is less similar to the one which has been compared, due to its elaborate stylisation,  and as it covers the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DINU

Erkki MÜNTER

Francesca CANGERI SERRANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.