OPPOSITION No B 2 773 722

Lactalis (UK) Limited, Thames House, Portsmouth Road, Esher, Surrey KT10 9AD, United Kingdom (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Raquel Paula Zamora Mariño, Urb. Rocío de Nagüeles, C/ Alora, 192, 29602 Marbella, Spain (applicant), represented by Molero Patentes y Marcas S.L., Paseo de la Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative).

On 04/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 722 is partially upheld, namely for the following contested services:

Class 43:        Providing of food and drink; Bar, cafe and restaurant services; Prepared take-out food services; Catering.        

2.        European Union trade mark application No 15 418 941 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 418 941. The opposition is based on European Union trade mark registrations No 1 222 876, for the word mark ‘RACHEL’S’, and No 8 282 147, for the word mark ‘RACHEL’S ORGANIC’. 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 European Union trade mark registration No 1 222 876.

1. The goods and services

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

Class 29:        Fresh and frozen products from organic farms and dairies in the nature of yogurt.

The contested services are the following:

Class 43:        Hotel services and the providing of food and drink; Bar, cafe and restaurant services; Prepared take-out food services; Catering.

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.

The contested providing of food and drink; bar, cafe and restaurant services; prepared take-out food services; catering 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 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 (e.g. coffee in coffee shops, ice cream in ice cream parlours and beer in pubs). In such cases, there is a low degree of similarity.

The contested providing of food and drink; bar, cafe and restaurant services; prepared take-out food services; catering are similar to a low degree to the opponent’s fresh and frozen products from organic farms in Class 29. A restaurant may cultivate vegetables and use those goods to make its dishes. It may also make some dishes to take away (e.g. cooked pear or apple). There are also country restaurants that make conserves (e.g. cooked peppers in olive oil, cooked pears preserved in alcohol), place them on shelves by the till and sell them to their customers. Therefore, it is considered that these goods and services are complementary. Moreover, they can be distributed through the same channels and originate from the same businesses.

However, the contested hotel services are not similar to the opponent’s goods in Class 29. They differ in nature, as goods are tangible while services are intangible. Contrary to the opponent’s argument, the main purpose of the contested hotel services is to provide temporary accommodation, while the opponent’s goods in Class 29 are fresh and frozen products ready to eat or to be used to prepare meals. Furthermore, the goods and services under comparison are neither complementary nor in competition, they differ in their methods of use and they do not have the same producers/providers. It follows that they are dissimilar.

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 similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

RACHEL’S
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which the marks are meaningful and, therefore, have an impact on the conceptual perception of the signs.

The earlier mark is the word mark ‘RACHEL’S’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are depicted in lower or upper case or in a combination of both.

The contested sign is a figurative mark that contains the expression ‘rachel’s eco love’ written in a stylised blue typeface.

Both marks contain the word ‘rachel’s’, which will be understood as indicating that something is produced or provided by Rachel, a female given name. Therefore, this element is distinctive in relation to the relevant goods and services.

The word ‘eco’, present in the contested sign, will be understood as the short form of ‘ecological’ and therefore will be understood as relating to concern for preserving the environment and/or perceived as describing the natural origin of the goods and services and is therefore non-distinctive in relation to the relevant services. The abbreviation in question is widely used in modern marketing to emphasise the environmental benefits of products or services (24/04/2012, T-328/11, EcoPerfect, EU:T:2012:197, § 25 and § 45). The word ‘love’ will be perceived as an indication of the care taken and special attention paid in relation to the preparation/provision of the goods and services. It is at best allusive and is therefore weak in relation to the services in question.

Contrary to the opponent’s argument, the contested sign has no dominant (more visually eye-catching) element, since it is an expression in which the words are the same size and colour and have the same stylisation.

Visually, the signs coincide in the distinctive element ‘RACHEL’S’ and differ in the colour, stylised typeface and final words, ‘eco love’, of the contested sign, which are, however, non-distinctive and weak. Importantly, the signs coincide in their beginnings, to which consumers tend to pay more attention and where the earlier mark is included in its entirety in the contested sign. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters that form the word ‘RACHEL’S’, present identically in both signs. However, they differ in the sound of the letters that form the additional words, ‘eco love’, of the contested sign, which are, however, non-distinctive and weak.

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

Conceptually, the public in the relevant territory will perceive the word ‘RACHEL’S’, contained in both signs, and the words ‘eco love’ of the contested sign in accordance with the meanings referred to above. As regards the contested sign as a whole, the expression ‘rachel’s eco love’ does not form a conceptual unit that differs from the mere sum of its parts.

Therefore, the signs are conceptually similar to a high degree, as they both convey the concept of ‘RACHEL’S’, which is inherently distinctive in relation to all the goods and services at issue and plays an independent role in both signs.

The applicant refers to a previous decision of the Office dated 21/04/2010, ruling on opposition No B 1 458 563, in the conflict between the earlier mark  and the mark applied for  to support its argument that the degree of visual similarity between the signs is low or non-existent. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the applicant is not relevant to the present proceedings, as the signs compared therein are both complex signs combining several words and figurative elements, unlike in the present case. Therefore, the applicant’s argument has to be set aside.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods; the degree of attention is average; and the earlier mark has an average degree of inherent distinctiveness. The signs in conflict are visually, aurally and conceptually similar to a high degree.

Having regard to the principle of interdependence – according to which a higher degree of similarity between the conflicting signs counteracts a lower degree of similarity between the services and vice versa – the Opposition Division considers that because the distinctive earlier mark, ‘rachel’s’, is entirely reproduced at the beginning of the contested sign, where consumers tend to pay more attention, and because the signs differ in the colour, slight stylisation and additional words ‘eco love’ of the contested sign, where the word ‘eco’ is descriptive and ‘love’ is allusive, the relevant public is likely to believe that the relevant goods and services that are similar to a low degree originate from the same provider or from economically-linked providers.

It is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line or to endow a trade mark with a new, fashionable image.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 1 222 876. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods of the earlier trade mark.

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 goods cannot be successful.

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

• European Union trade mark registration No 8 282 147, for the word mark ‘RACHEL’S ORGANIC’, registered for yoghurt and yoghurt products; low fat yoghurt in Class 29.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains an additional word, ‘ORGANICS’, that is not present in the contested trade mark. Furthermore, it covers goods that are clearly different from the applicant’s hotel services. The reasoning set out above applies fully here. In particular, the opponent’s goods and the contested services differ in nature, as goods are tangible while services are intangible. Furthermore, the goods and services under comparison are neither complementary nor in competition and they differ in their methods of use. They do not have the same producers. It follows that they are dissimilar.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Jorge ZARAGOZA GOMEZ

Richard BIANCHI

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.