OPPOSITION No B 2 626 292

Haudecoeur, Rue Emile Zola, 60/62, 93120 La Courneuve, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Yelena Reier, Neuendorferstraße 73a, 13585 Berlin, Germany (applicant).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 626 292 is partially upheld, namely for the following contested goods and services:

Class 30:         Iced tea; iced tea (non-medicated -); tea; tea bags; tea cakes; crumpets; tea leaves; tea-based beverages; tea extracts; tea mixtures; tea substitutes; mate [tea]; tea essences; black tea; oolong tea; chai tea; tea substitutes; darjeeling tea; green tea; black tea [English tea]; rosemary tea; oolong tea; theine-free tea sweetened with sweeteners; Japanese green tea; ginseng tea [insamcha]; tea for infusions; lapsang souchong tea; yerba mate; flavourings of tea; earl grey tea; herbal infusions; fruited scones; milk chocolate teacakes; tea bags (non-medicated -); tea-based beverages; tea extracts (non-medicated -); tea extracts (non-medicated -); artificial coffee; white lotus tea (baengnyeoncha); herbal infusions; teas (non-medicated -) containing lemon; tea (non-medicated -) sold loose; tea-based beverages; tea of salty kelp powder (kombu-cha); teas (non-medicated -) flavoured with lemon; tea bags (non-medicated -); tea-based beverages; flowers or leaves for use as tea substitutes; tea substitutes; packaged tea [other than for medicinal use]; tea (non-medicated -) consisting of cranberry extracts; tea (non-medicated -) consisting of cranberry extracts; tea (non-medicated -) consisting of cranberry leaves; tea (non-medicated -) consisting of cranberry leaves; coffee, teas and cocoa and substitutes therefor; tea-based beverages; aromatic teas [other than for medicinal use]; tea of parched powder of barley with husk (mugi-cha); orange flavoured tea [other than for medicinal use]; apple flavoured tea [other than for medicinal use]; fruit flavoured tea [other than medicinal]; tea-based beverages with fruit flavoring; preparations for making beverages [tea based]; instant tea [other than for medicinal purposes]; instant tea [other than for medicinal purposes]; cocoa; cocoa-based beverages; cocoa powder; cocoa-based beverages; cocoa products; cocoa mixes; cocoa products; cocoa-based beverages; candy with cocoa; foods with a cocoa base; ice beverages with a cocoa base; preparations based on cocoa; prepared cocoa and cocoa-based beverages; drinks in powder form containing cocoa; cocoa-based beverages; aerated beverages [with coffee, cocoa or chocolate base]; mixtures of malt coffee with cocoa; cocoa-based beverages; cocoa extracts for human consumption; aerated beverages [with coffee, cocoa or chocolate base]; cocoa [roasted, powdered, granulated, or in drinks]; cocoa based creams in the form of spreads; extracts of cocoa for use as flavours in foodstuffs; extracts of cocoa for use as flavours in beverages; cocoa for use in making beverages; preparations for making beverages [cocoa based]; powdered preparations containing cocoa for use in making beverages; cocoa preparations for use in making beverages; coffee; coffee oils; artificial coffee; coffee in whole-bean form; coffee flavorings [flavourings]; coffee essences; coffee essences; coffee extracts; coffee-based beverages; mixtures of coffee; coffee concentrates; artificial coffee; mixtures of coffee; artificial coffee; decaffeinated coffee; coffee essences; coffee essences; ground coffee; flavoured coffee; freeze-dried coffee; chocolate coffee; instant coffee; artificial coffee; decaffeinated coffee; prepared coffee and coffee-based beverages; ground coffee beans; roasted coffee beans; sugar-coated coffee beans; coffee-based beverage containing milk; coffee-based beverages; chicory [coffee substitute]; mixtures of coffee essences and coffee extracts; coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; coffee based fillings; ice beverages with a coffee base; chicory mixtures, all for use as substitutes for coffee; chicory mixtures, all for use as substitutes for coffee; coffee extracts for use as substitutes for coffee; ground coffee; filters in the form of paper bags filled with coffee; coffee in brewed form; coffee-based beverages; coffee whitener with a plant base; chocolate bark containing ground coffee beans; coffee-based beverages containing ice cream (affogato); vegetable based coffee substitutes; mixtures of malt coffee extracts with coffee; mixtures of malt coffee with coffee; mixtures of coffee and malt; coffee-based beverages; vegetal preparations for use as coffee substitutes; mixtures of coffee and chicory; chicory based coffee substitute; preparations of chicory for use as a substitute for coffee; coffee substitutes [grain or chicory based]; chicory mixtures, all for use as substitutes for coffee; chicory extracts for use as substitutes for coffee; coffee in whole-bean form; preparations for making beverages [coffee based]; vegetal preparations for use as coffee substitutes; chicory for use as substitutes for coffee; coffee [roasted, powdered, granulated, or in drinks]; extracts of coffee for use as flavours in foodstuffs; chicory mixtures, all for use as substitutes for coffee; roasted barley and malt for use as substitute for coffee; extracts of coffee for use as flavours in beverages; chicory and chicory mixtures, all for use as substitutes for coffee; drinking cocoa paste; cappuccino; chrysanthemum tea (gukhwacha); iced coffee; espresso; frappes; fruit teas; barley-leaf tea; chocolate-based beverages with milk; drinks flavoured with chocolate; ginseng tea; hot chocolate; instant cocoa powder; instant tea; instant tea [other than for medicinal purposes]; jasmine tea; jasmine tea bags, other than for medicinal purposes; burdock root tea (wooungcha); herbal preparations for making beverages; infusions, not medicinal; lime tea; carbohydrate-based nutritional drink mix for use as a meal replacement; malt coffee; malt coffee extracts; coffee beverages with milk; cocoa beverages with milk; milk chocolates; chocolate beverages with milk; chocolate flavoured beverage making preparations; preparations for making beverages [chocolate based]; coffee (unroasted -); rooibos tea; sage tea; drinking chocolate; chocolate extracts for the preparation of beverages; chocolate extracts; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with orange; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with toffee; chocolate food beverages not being dairy-based or vegetable based; chocolate powder; chocolate syrups for the preparation of chocolate based beverages; chocolate drink preparations; coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; flavored ices; ice cream (binding agents for -); sherbet mixes; ice lollies containing milk; ice lollies being milk flavoured; ice confectionery; yoghurt-based ice cream (consisting primarily of ice cream); ice creams containing chocolate; ice creams flavoured with chocolate; non-dairy ice cream; ice cream desserts; ice cream substitute; soy-based ice cream substitute; soya based ice cream products; ice cream drinks; ice cream confectionery; ice-cream cakes; ice cream mixes; ice cream stick bars; ice cream sandwiches; ice cream gateaux; ice beverages with a coffee base; ice beverages with a cocoa base; ice beverages with a chocolate base; ice milk [ice cream]; ice cubes; edible ice powder for use in icing machines; fruit ices; ice cream with fruit; frozen yoghurts; frozen yogurt confections; frozen lollipops; confectionery ices; frozen custards; frosting mixes; instant ice cream mixes; yoghurt (frozen -) [confectionery ices]; ice; ices and ice; cooling ice; dairy ice cream; mixtures for making ice cream products; mixtures for making ice cream confections; mixtures for making water ices; mixtures for making frozen confections; iced confectionery (non-medicated -); organic binding agents for ice cream; parfaits; ice, natural or artificial; sherbets [ices]; sorbets [water ices]; edible fruit ices; powders for ice cream; ice lollies; water ice; fruit flavoured water ices in the form of lollipops; ice cream; iced coffee; iced cakes; ice confectionery; ice confectionery; ice desserts; cones for ice cream; cones for ice cream; powders for ice cream; ice cream cone mixes; ice; ice cream substitute; fruit ices; ice lollies; ice cubes; ice cubes; ice; ices; ice; iced tea (non-medicated -); ice cream stick bars; sauces for ice cream; ice cream with fruit; ice cream with fruit; edible ices and ice creams; aromatic preparations for ice-creams; frozen confectionery containing ice cream; ice cream (binding agents for -); coffee-based beverages containing ice cream (affogato); ice cream (binding agents for -); ice confectionery in the form of lollipops; powders for ice cream; mixtures for making water ices; natural flavourings for use in ice cream [other than etheric essences or essential oils].

Class 35:        Retail services relating to food; retail services in relation to foodstuffs; retail services in relation to ice creams; retail services in relation to desserts; retail services in relation to sorbets; retail services in relation to coffee; retail services in relation to confectionery; retail services in relation to chocolate; retail services in relation to cocoa; retail services in relation to teas; wholesale services in relation to confectionery; wholesale services in relation to sorbets; wholesale services in relation to chocolate; wholesale services in relation to desserts; wholesale services in relation to ice creams; wholesale services in relation to coffee; wholesale services in relation to cocoa; wholesale services in relation to dairy products; wholesale services in relation to teas; wholesale services in relation to foodstuffs; retail services in relation to dairy products.

Class 43:        Providing food and drink; catering for the provision of food and beverages; banqueting services; bar services; pizza parlors; bistro services; cocktail lounge services; pubs; restaurant services provided by hotels; hookah bar services; wine bar services; ice cream parlour services; hotel restaurant services; salad bars; services for the preparation of food and drink; snack-bars; hospitality services [food and drink]; corporate hospitality (provision of food and drink); personal chef services; mobile catering services; arranging of meals in hotels; arranging of wedding receptions [food and drink]; catering in fast-food cafeterias; providing of food and drink via a mobile truck; club services for the provision of food and drink; grill restaurants; food preparation services; food preparation services; contract food services; takeaway services; tea rooms; self-service restaurants; snack-bars; restaurant services incorporating licensed bar facilities; carvery restaurant services; take-out restaurant services; restaurant services; night club services [provision of food]; canteens; delicatessens [restaurants]; cafeterias.

2.        European Union trade mark application No 14 121 131 is rejected for all the above goods and services. It may proceed for the remaining 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 14 121 131. The opposition is based on, inter alia, French trade mark registration No 63 435 833. 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 French trade mark registration No 63 435 833.

1. The goods and services

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

Class 29: Preserved, dried and cooked fruit and vegetables, jellies, jams, eggs, milk and dairy products; halal prepared and cooked dishes for human consumption made with the aforementioned products, and with meat, fish, poultry and game or with mixtures of the aforementioned products.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour (excepting flour of animal origin) and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; prepared and cooked dishes made with the aforementioned products or with mixtures of the abovementioned products.

The contested goods and services are, after the final decision rendered on 03/10/2016 in opposition No B 2 622 796, the following:

Class 30: Iced tea; Iced tea (Non-medicated -); Tea; Tea bags; Tea cakes; Crumpets; Tea leaves; Tea-based beverages; Tea extracts; Tea mixtures; Tea substitutes; Mate [tea]; Tea essences; Black tea; Oolong tea; Chai tea; Tea substitutes; Darjeeling tea; Green tea; Black tea [English tea]; Rosemary tea; Oolong tea; Theine-free tea sweetened with sweeteners; Japanese green tea; Ginseng tea [insamcha]; Tea for infusions; Lapsang souchong tea; Yerba mate; Flavourings of tea; Earl grey tea; Herbal infusions; Fruited scones; Milk chocolate teacakes; Tea bags (Non-medicated -); Tea-based beverages; Tea extracts (Non-medicated -); Tea extracts (Non-medicated -); Artificial coffee; White lotus tea (Baengnyeoncha); Herbal infusions; Teas (Non-medicated -) containing lemon; Tea (Non-medicated -) sold loose; Tea-based beverages; Tea of salty kelp powder (kombu-cha); Teas (Non-medicated -) flavoured with lemon; Tea bags (Non-medicated -); Tea-based beverages; Flowers or leaves for use as tea substitutes; Tea substitutes; Packaged tea [other than for medicinal use]; Tea (Non-medicated -) consisting of cranberry extracts; Tea (Non-medicated -) consisting of cranberry extracts; Tea (Non-medicated -) consisting of cranberry leaves; Tea (Non-medicated -) consisting of cranberry leaves; Coffee, teas and cocoa and substitutes therefor; Tea-based beverages; Aromatic teas [other than for medicinal use]; Tea of parched powder of barley with husk (mugi-cha); Orange flavoured tea [other than for medicinal use]; Apple flavoured tea [other than for medicinal use]; Fruit flavoured tea [other than medicinal]; Tea-based beverages with fruit flavoring; Preparations for making beverages [tea based]; Instant tea [other than for medicinal purposes]; Instant tea [other than for medicinal purposes]; Cocoa; Cocoa-based beverages; Cocoa powder; Cocoa-based beverages; Cocoa products; Cocoa mixes; Cocoa products; Cocoa-based beverages; Candy with cocoa; Foods with a cocoa base; Ice beverages with a cocoa base; Preparations based on cocoa; Prepared cocoa and cocoa-based beverages; Drinks in powder form containing cocoa; Cocoa-based beverages; Aerated beverages [with coffee, cocoa or chocolate base]; Mixtures of malt coffee with cocoa; Cocoa-based beverages; Cocoa extracts for human consumption; Aerated beverages [with coffee, cocoa or chocolate base]; Cocoa [roasted, powdered, granulated, or in drinks]; Cocoa based creams in the form of spreads; Extracts of cocoa for use as flavours in foodstuffs; Extracts of cocoa for use as flavours in beverages; Cocoa for use in making beverages; Preparations for making beverages [cocoa based]; Powdered preparations containing cocoa for use in making beverages; Cocoa preparations for use in making beverages; Coffee; Coffee oils; Artificial coffee; Coffee in whole-bean form; Coffee flavorings [flavourings]; Coffee essences; Coffee essences; Coffee extracts; Coffee-based beverages; Mixtures of coffee; Coffee concentrates; Artificial coffee; Mixtures of coffee; Artificial coffee; Decaffeinated coffee; Coffee essences; Coffee essences; Ground coffee; Flavoured coffee; Freeze-dried coffee; Chocolate coffee; Instant coffee; Artificial coffee; Decaffeinated coffee; Prepared coffee and coffee-based beverages; Ground coffee beans; Roasted coffee beans; Sugar-coated coffee beans; Coffee-based beverage containing milk; Coffee-based beverages; Chicory [coffee substitute]; Mixtures of coffee essences and coffee extracts; Coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; Coffee based fillings; Ice beverages with a coffee base; Chicory mixtures, all for use as substitutes for coffee; Chicory mixtures, all for use as substitutes for coffee; Coffee extracts for use as substitutes for coffee; Ground coffee; Filters in the form of paper bags filled with coffee; Coffee in brewed form; Coffee-based beverages; Coffee whitener with a plant base; Chocolate bark containing ground coffee beans; Coffee-based beverages containing ice cream (affogato); Vegetable based coffee substitutes; Mixtures of malt coffee extracts with coffee; Mixtures of malt coffee with coffee; Mixtures of coffee and malt; Coffee-based beverages; Vegetal preparations for use as coffee substitutes; Mixtures of coffee and chicory; Chicory based coffee substitute; Preparations of chicory for use as a substitute for coffee; Coffee substitutes [grain or chicory based]; Chicory mixtures, all for use as substitutes for coffee; Chicory extracts for use as substitutes for coffee; Coffee in whole-bean form; Preparations for making beverages [coffee based]; Vegetal preparations for use as coffee substitutes; Chicory for use as substitutes for coffee; Coffee [roasted, powdered, granulated, or in drinks]; Extracts of coffee for use as flavours in foodstuffs; Chicory mixtures, all for use as substitutes for coffee; Roasted barley and malt for use as substitute for coffee; Extracts of coffee for use as flavours in beverages; Chicory and chicory mixtures, all for use as substitutes for coffee; Drinking cocoa paste; Cappuccino; Chrysanthemum tea (Gukhwacha); Iced coffee; Espresso; Frappes; Fruit teas; Barley-leaf tea; Chocolate-based beverages with milk; Drinks flavoured with chocolate; Ginseng tea; Hot chocolate; Instant cocoa powder; Instant tea; Instant tea [other than for medicinal purposes]; Jasmine tea; Jasmine tea bags, other than for medicinal purposes; Burdock root tea (Wooungcha); Herbal preparations for making beverages; Infusions, not medicinal; Lime tea; Carbohydrate-based nutritional drink mix for use as a meal replacement; Malt coffee; Malt coffee extracts; Coffee beverages with milk; Cocoa beverages with milk; Milk chocolates; Chocolate beverages with milk; Chocolate flavoured beverage making preparations; Preparations for making beverages [chocolate based]; Coffee (Unroasted -); Rooibos tea; Sage tea; Drinking chocolate; Chocolate extracts for the preparation of beverages; Chocolate extracts; Chocolate drink preparations flavoured with banana; Chocolate drink preparations flavoured with mocha; Chocolate drink preparations flavoured with nuts; Chocolate drink preparations flavoured with orange; Chocolate drink preparations flavoured with mint; Chocolate drink preparations flavoured with toffee; Chocolate food beverages not being dairy-based or vegetable based; Chocolate powder; Chocolate syrups for the preparation of chocolate based beverages; Chocolate drink preparations; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams, frozen yogurts and sorbets; Flavored ices; Ice cream (Binding agents for -); Sherbet mixes; Ice lollies containing milk; Ice lollies being milk flavoured; Ice confectionery; Yoghurt-based ice cream (consisting primarily of ice cream); Ice creams containing chocolate; Ice creams flavoured with chocolate; Non-dairy ice cream; Ice cream desserts; Ice cream substitute; Soy-based ice cream substitute; Soya based ice cream products; Ice cream drinks; Ice cream confectionery; Ice-cream cakes; Ice cream mixes; Ice cream stick bars; Ice cream sandwiches; Ice cream gateaux; Ice beverages with a coffee base; Ice beverages with a cocoa base; Ice beverages with a chocolate base; Ice milk [ice cream]; Ice cubes; Edible ice powder for use in icing machines; Fruit ices; Ice cream with fruit; Frozen yoghurts; Frozen yogurt confections; Frozen lollipops; Confectionery ices; Frozen custards; Frosting mixes; Instant ice cream mixes; Yoghurt (Frozen -) [confectionery ices]; Ice; Ices and ice; Cooling ice; Dairy ice cream; Mixtures for making ice cream products; Mixtures for making ice cream confections; Mixtures for making water ices; Mixtures for making frozen confections; Iced confectionery (Non-medicated -); Organic binding agents for ice cream; Parfaits; Ice, natural or artificial; Sherbets [ices]; Sorbets [water ices]; Edible fruit ices; Powders for ice cream; Ice lollies; Water ice; Fruit flavoured water ices in the form of lollipops; Ice cream; Iced coffee; Iced cakes; Ice confectionery; Ice confectionery; Ice desserts; Cones for ice cream; Cones for ice cream; Powders for ice cream; Ice cream cone mixes; Ice; Ice cream substitute; Fruit ices; Ice lollies; Ice cubes; Ice cubes; Ice; Ices; Ice; Iced tea (Non-medicated -); Ice cream stick bars; Sauces for ice cream; Ice cream with fruit; Ice cream with fruit; Edible ices and ice creams; Aromatic preparations for ice-creams; Frozen confectionery containing ice cream; Ice cream (Binding agents for -); Coffee-based beverages containing ice cream (affogato); Ice cream (Binding agents for -); Ice confectionery in the form of lollipops; Powders for ice cream; Mixtures for making water ices; Natural flavourings for use in ice cream [other than etheric essences or essential oils].

Class 35: Commercial trading and consumer information services; Advertising, marketing and promotional services; Auctioneering services; Rental of vending machines; Rental of card-operated vending machines; Rental of coin-operated vending machines; Auctioneering provided on the internet; On-line auctioneering services via the Internet; Providing on-line auction services; On-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; Retail services relating to food; Retail services in relation to foodstuffs; Retail services in relation to ice creams; Retail services in relation to desserts; Retail services in relation to sorbets; Retail services in relation to coffee; Retail services in relation to confectionery; Retail services in relation to chocolate; Retail services in relation to cocoa; Retail services in relation to teas; Wholesale services in relation to confectionery; Wholesale services in relation to sorbets; Wholesale services in relation to chocolate; Wholesale services in relation to desserts; Wholesale services in relation to ice creams; Wholesale services in relation to coffee; Wholesale services in relation to cocoa; Wholesale services in relation to dairy products; Wholesale services in relation to teas; Wholesale services in relation to foodstuffs; Wholesale services in relation to water supply equipment; Retail services in relation to dairy products; Provision of an on-line marketplace for buyers and sellers of goods and services; Procurement services for others [purchasing goods and services for other businesses]; Ordering services for third parties; Export agency services; Clerical services for the taking of sales orders; Computerised stock ordering; Import and export services; Import agency services; Bidding quotation; Consumers (Commercial information and advice for -) [consumer advice shop]; Commercial administration of the licensing of the goods and services of others; Arranging business introductions relating to the buying and selling of products; Price comparison services; Telephone order-taking services for others; Negotiation and conclusion of commercial transactions for third parties; Export promotion services; Sales management services; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Arranging of contractual [trade]services with third parties; Arranging of buying and selling contracts for third parties; Mediation of trade business for third parties; Arranging of commercial and business contacts; Arranging of trading transactions and commercial contracts; Business intermediary and advisory services in the field of selling products and rendering services; Arranging of collective buying; Procurement of contracts [for others]; Procuring of contracts for the purchase and sale of goods; Mediation of agreements regarding the sale and purchase of goods; Mediation of contracts for purchase and sale of products; Arranging the buying of goods for others; Arranging newspaper subscriptions for others; Administrative order processing; Trade show and exhibition services; Loyalty, incentive and bonus program services; Product demonstrations and product display services; Distribution of advertising, marketing and promotional material; Promotion services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Production of advertising matter; Preparing advertisements for others; Sales promotion; Advertising services provided via the internet; Marketing services; Online advertisements; On-line promotion of computer networks and websites; Advertising; Advertisement for others on the Internet; Advertising services for the promotion of e-commerce; Advertising services to promote the sale of beverages; Arranging of exhibitions for business purposes; Arranging of exhibitions for advertising purposes; Exhibitions (Conducting -) for advertising purposes; Exhibitions (Conducting -) for business purposes; Conducting of trade shows; Shows (Conducting business -); Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Organisation and holding of fairs for commercial or advertising purposes; Arranging and conducting of exhibitions for business purposes; Arranging and conducting of fairs and exhibitions for advertising purposes; Organisation of exhibitions for business or commerce; Organisation of exhibitions and events for commercial or advertising purposes; Exhibitions for commercial or advertising purposes; Organisation of exhibitions and trade fairs for business and promotional purposes; Arranging of trade fairs; Organisation of events for commercial and advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Arranging and conducting of fairs and exhibitions for business purposes; Promotion of fairs for trade purposes; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; Arranging of displays for commercial purposes; Display services for merchandise; Arranging of displays for advertising purposes; Window dressing services for advertising purposes; Organisation and conducting of product presentations; Retail shop window display arrangement services; Shop window dressing; Arranging of demonstrations for advertising purposes; Demonstration of goods; Demonstration of goods for promotional purposes; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; Demonstration of photographic equipment [for advertising purposes]; Advertising services by means of balloon displays; Business merchandising display services; Presentation of goods on communication media, for retail purposes; Sales demonstration [for others]; Direct mail advertising; Arranging the distribution of advertising samples in response to telephone enquiries; Distribution of advertisements and commercial announcements; Dissemination of advertising matter; Distribution of advertising material by post; Dissemination of advertising for others; Dissemination of advertising for others via the Internet; Dissemination of advertising for others via an on-line communications network on the internet; Distribution of printed promotional material by post; Dissemination services of advertisement matter; Promoting the sale of goods and services of others through the distribution of printed material and promotional contests; Promoting the goods and services of others through the distribution of discount cards; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Advertising by mail order; Distribution of prospectuses and samples; Distribution of products for advertising purposes; Sample distribution; Distribution of advertising announcements; Arranging the distribution of advertising literature in response to telephone enquiries; Dissemination of advertising material [leaflets, brochure and printed matter]; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of advertising mail and of advertising supplements attached to regular editions; Distribution of publicity texts; Handbill distribution; Arranging the distribution of advertising samples; Distribution of promotional matter; Bill-posting; Issuing of publicity leaflets; Banner advertising; Provision of advertising space, time and media; Public relations services; Provision of computerised advertising services; Provision of space on web-sites for advertising goods and services; Providing and rental of advertising space on the internet; Provision of advertising space by electronic means and global information networks; Rental of advertising space on the internet; Advisory services relating to sales promotion; Advertising and marketing consultancy; Consultations relating to business advertising; Advertising, marketing and promotional consultancy, advisory and assistance services.

Class 43: Providing temporary accommodation; Providing food and drink; Catering for the provision of food and beverages; Banqueting services; Consultancy services relating to food; Provision of information relating to the preparation of food and drink; Providing personalized meal planning services via a website; Bar services; Pizza parlors; Consultancy services relating to food preparation; Consultancy services relating to baking techniques; Consulting services in the field of culinary arts; Bistro services; Cocktail lounge services; Pubs; Restaurant services provided by hotels; Hookah bar services; Wine bar services; Reservation services for booking meals; Ice cream parlour services; Hotel restaurant services; Salad bars; Services for the preparation of food and drink; Snack-bars; Wine tasting services (provision of beverages); Provision of information relating to bars; Provision of information relating to restaurants; Hospitality services [food and drink]; Corporate hospitality (provision of food and drink); Personal chef services; Restaurant information services; Cookery advice; Food sculpting; Mobile catering services; Arranging of meals in hotels; Accommodation reservation services [time share]; Making reservations and bookings for restaurants and meals; Restaurant reservation services; Booking of restaurant seats; Arranging of wedding receptions [food and drink]; Rental of bar equipment; Rental of water dispensers; Rental of cooking equipment for industrial purposes; Rental of cooking apparatus; Rental of kitchen worktops; Rental of drinking water dispensers; Providing accommodation for functions; Catering in fast-food cafeterias; Providing of food and drink via a mobile truck; Club services for the provision of food and drink; Grill restaurants; Food preparation services; Food preparation services; Contract food services; Drink dispensing machines (rental of); Takeaway services; Tea rooms; Self-service restaurants; Snack-bars; Restaurant services incorporating licensed bar facilities; Carvery restaurant services; Take-out restaurant services; Restaurant services; Night club services [provision of food]; Canteens; Delicatessens [restaurants]; Cafeterias; Providing reviews of restaurants; Hotels, hostels and boarding houses, holiday and tourist accommodation; Event facilities and temporary office and meeting facilities; Nurseries, day-care and elderly care facilities; Charitable services, namely providing temporary accommodation; Accommodation exchange services [time share]; Hospitality services [accommodation]; Accommodation services for meetings; Room rental for exhibitions; Providing convention facilities; Arranging of wedding receptions [venues]; Provision of conference facilities; Provision of trade show facilities [accommodation]; Provision of facilities for board meetings; Hiring of rooms for social functions; Hire of temporary office space; Rental of conference facilities; Providing conference rooms; Provision of facilities for exhibitions; Rental of meeting rooms; Provision of temporary work accommodation; Providing accommodation for meetings.

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 ‘namely’, used in the applicant’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.

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

The contested iced tea; iced tea (non-medicated -); tea; tea bags; tea leaves; tea-based beverages; tea mixtures; mate [tea]; black tea; oolong tea; chai tea; darjeeling tea; green tea; black tea [English tea]; rosemary tea; oolong tea; theine-free tea sweetened with sweeteners; Japanese green tea; ginseng tea [insamcha]; tea for infusions; lapsang souchong tea; yerba mate; earl grey tea; herbal infusions; tea bags (non-medicated -); tea-based beverages; white lotus tea (baengnyeoncha); herbal infusions; teas (non-medicated -) containing lemon; tea (non-medicated -) sold loose; tea-based beverages; tea of salty kelp powder (kombu-cha); teas (non-medicated -) flavoured with lemon; tea bags (non-medicated -); tea-based beverages; packaged tea [other than for medicinal use]; tea (non-medicated -) consisting of cranberry extracts; tea (non-medicated -) consisting of cranberry extracts; tea (non-medicated -) consisting of cranberry leaves; tea (non-medicated -) consisting of cranberry leaves; teas; tea-based beverages; aromatic teas [other than for medicinal use]; tea of parched powder of barley with husk (mugi-cha); orange flavoured tea [other than for medicinal use]; apple flavoured tea [other than for medicinal use]; fruit flavoured tea [other than medicinal]; tea-based beverages with fruit flavoring; preparations for making beverages [tea based]; instant tea [other than for medicinal purposes]; instant tea [other than for medicinal purposes]; chrysanthemum tea (gukhwacha); fruit teas; barley-leaf tea; ginseng tea; instant tea; instant tea [other than for medicinal purposes]; jasmine tea; jasmine tea bags, other than for medicinal purposes; burdock root tea (wooungcha); herbal preparations for making beverages; infusions, not medicinal; lime tea; rooibos tea; sage tea; teas; iced tea (non-medicated -) are identical to the opponent’s tea either because they are identically contained in the opponent’s list of goods or because they are included in, or overlap with, the broad category of the opponent’s tea.

The contested cocoa; cocoa; cocoa-based beverages; cocoa powder; cocoa-based beverages; cocoa products; cocoa mixes; cocoa products; cocoa-based beverages; ice beverages with a cocoa base; prepared cocoa and cocoa-based beverages; drinks in powder form containing cocoa; cocoa-based beverages; aerated beverages [with cocoa or chocolate base] (listed twice); cocoa-based beverages; cocoa [roasted, powdered, granulated, or in drinks]; cocoa for use in making beverages; preparations for making beverages [cocoa based]; powdered preparations containing cocoa for use in making beverages; cocoa preparations for use in making beverages; drinking cocoa paste; chocolate-based beverages with milk; drinks flavoured with chocolate; hot chocolate; instant cocoa powder; cocoa beverages with milk; chocolate beverages with milk; chocolate flavoured beverage making preparations; preparations for making beverages [chocolate based]; drinking chocolate; chocolate extracts for the preparation of beverages; chocolate extracts; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with orange; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with toffee; chocolate food beverages not being dairy-based or vegetable based; chocolate powder; chocolate syrups for the preparation of chocolate based beverages; chocolate drink preparations; cocoa; ice beverages with a cocoa base; ice beverages with a chocolate base are identical to the opponent’s cocoa either because they are identically contained in the opponent’s list of goods or because they are included in the broad category of the opponent’s cocoa.

The contested coffee; aerated beverages [with coffee base] (listed twice); mixtures of malt coffee with cocoa; coffee in whole-bean form; coffee-based beverages; mixtures of coffee; mixtures of coffee; decaffeinated coffee; ground coffee; flavoured coffee; freeze-dried coffee; chocolate coffee; instant coffee; decaffeinated coffee; prepared coffee and coffee-based beverages; ground coffee beans; roasted coffee beans; sugar-coated coffee beans; coffee-based beverage containing milk; coffee-based beverages; ice beverages with a coffee base; ground coffee; filters in the form of paper bags filled with coffee; coffee in brewed form; coffee-based beverages; coffee whitener with a plant base; chocolate bark containing ground coffee beans; coffee-based beverages containing ice cream (affogato); mixtures of malt coffee extracts with coffee; mixtures of malt coffee with coffee; mixtures of coffee and malt; coffee-based beverages; mixtures of coffee and chicory; coffee in whole-bean form; preparations for making beverages [coffee based]; coffee [roasted, powdered, granulated, or in drinks]; cappuccino; iced coffee; espresso; frappes; malt coffee; malt coffee extracts; coffee beverages with milk; coffee (unroasted -); ice beverages with a coffee base; iced coffee; coffee-based beverages containing ice cream (affogato) are identical to the opponent’s coffee either because they are identically contained in the opponent’s list of goods or because they are included in the broad category of the opponent’s coffee.

Artificial coffee (mentioned numerous times in the list of contested goods) is identically contained in both lists of goods.

The contested coffee substitutes (listed twice); coffee substitutes [artificial coffee or vegetable preparations for use as coffee]; chicory [coffee substitute]; chicory mixtures, all for use as substitutes for coffee; chicory mixtures, all for use as substitutes for coffee; coffee extracts for use as substitutes for coffee; vegetable based coffee substitutes; vegetal preparations for use as coffee substitutes; chicory based coffee substitute; preparations of chicory for use as a substitute for coffee; coffee substitutes [grain or chicory based]; chicory mixtures, all for use as substitutes for coffee; chicory extracts for use as substitutes for coffee; vegetal preparations for use as coffee substitutes; chicory for use as substitutes for coffee; chicory mixtures, all for use as substitutes for coffee; roasted barley and malt for use as substitute for coffee; extracts of coffee for use as flavours in beverages; chicory and chicory mixtures, all for use as substitutes for coffee are included in the broad category of, or overlap with, the opponent’s artificial coffee. Therefore, they are identical.

The contested candy with cocoa is included in the broad category of the opponent’s confectionery. Therefore, they are identical.

The contested foods with a cocoa base; preparations based on cocoa; carbohydrate-based nutritional drink mix for use as a meal replacement are included in the broad category of, or overlap with, the opponent’s prepared and cooked dishes made with the aforementioned products (i.e. cocoa) or with mixtures of the abovementioned products. Therefore, they are identical.

The contested tea cakes; crumpets; fruited scones; milk chocolate teacakes; cocoa based creams in the form of spreads; coffee based fillings; iced cakes are included in the broad category of the opponent’s pastry. Therefore, they are identical.

The contested ice (listed six times), ice cubes (listed three times); cooling ice; ice, natural or artificial are either identically contained in the opponent’s list of goods or included in the broad category of, or overlap with, the opponent’s ice. Therefore, they are identical.

The contested ice creams, frozen yogurts and sorbets; flavored ices; ice cream (binding agents for -); sherbet mixes; ice lollies containing milk; ice lollies being milk flavoured; ice confectionery; yoghurt-based ice cream (consisting primarily of ice cream); ice creams containing chocolate; ice creams flavoured with chocolate; non-dairy ice cream; ice cream desserts; ice cream substitute; soy-based ice cream substitute; soya based ice cream products; ice cream drinks; ice cream confectionery; ice-cream cakes; ice cream mixes; ice cream stick bars; ice cream sandwiches; ice cream gateaux; ice milk [ice cream]; edible ice powder for use in icing machines; fruit ices; ice cream with fruit; frozen yoghurts; frozen yogurt confections; frozen lollipops; confectionery ices; frozen custards; frosting mixes; instant ice cream mixes; yoghurt (frozen -) [confectionery ices]; ices; dairy ice cream; mixtures for making ice cream products; mixtures for making ice cream confections; mixtures for making water ices; mixtures for making frozen confections; iced confectionery (non-medicated -); organic binding agents for ice cream; parfaits; sherbets [ices]; sorbets [water ices]; edible fruit ices; powders for ice cream; ice lollies; water ice; fruit flavoured water ices in the form of lollipops; ice cream; ice confectionery; ice confectionery; ice desserts; cones for ice cream; cones for ice cream; powders for ice cream; ice cream cone mixes; ice cream substitute; fruit ices; ice lollies; ices; ice cream stick bars; sauces for ice cream; ice cream with fruit; ice cream with fruit; edible ices and ice creams; aromatic preparations for ice-creams; frozen confectionery containing ice cream; ice cream (binding agents for -); ice cream (binding agents for -); ice confectionery in the form of lollipops; powders for ice cream; mixtures for making water ices; natural flavourings for use in ice cream [other than etheric essences or essential oils] are identical or at least similar to the opponent’s ices, as these goods have the same purpose and distribution channels and they target the same relevant public; moreover, they are in competition.

The contested tea substitutes (listed three times); flowers or leaves for use as tea substitutes; teas substitutes (listed twice) are similar to a high degree to the opponent’s tea, as these goods can coincide in their producer, end users, distribution channels and method of use. Furthermore, they are in competition.

The contested cocoa substitutes (listed twice) are similar to a high degree to the opponent’s cocoa, as these goods can coincide in their producer, end users, distribution channels and method of use. Furthermore, they are in competition.

The contested milk chocolates are similar to the opponent’s cocoa. These goods have the same nature, are normally produced by the same undertakings, are distributed through the same channels and target the same relevant public.

The contested tea extracts; tea essences; flavourings of tea; tea extracts (non-medicated -) (listed twice) are similar to a low degree to the opponent’s tea. These goods have the same purpose and method of use.

The contested cocoa extracts for human consumption; extracts of cocoa for use as flavours in foodstuffs; extracts of cocoa for use as flavours in beverages are similar to a low degree to the opponent’s cocoa. These goods have the same purpose and method of use.

The contested coffee oils; coffee flavorings [flavourings]; coffee essences (listed four times); coffee extracts; coffee concentrates; mixtures of coffee essences and coffee extracts; extracts of coffee for use as flavours in foodstuffs are similar to a low degree to the opponent’s coffee. These goods have the same purpose and method of use.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services relating to food; retail services in relation to foodstuffs; retail services in relation to ice creams; retail services in relation to desserts; retail services in relation to sorbets; retail services in relation to coffee; retail services in relation to confectionery; retail services in relation to chocolate; retail services in relation to cocoa; retail services in relation to teas; wholesale services in relation to confectionery; wholesale services in relation to sorbets; wholesale services in relation to chocolate; wholesale services in relation to desserts; wholesale services in relation to ice creams; wholesale services in relation to coffee; wholesale services in relation to cocoa; wholesale services in relation to dairy products; wholesale services in relation to teas; wholesale services in relation to foodstuffs; retail services in relation to dairy products are similar to a low degree to the opponent’s goods in Classes 29 and 30.

The contested wholesale services in relation to water supply equipment and the opponent’s goods in Classes 29 and 30 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail (or wholesale) services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail (or wholesale) services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

The contested commercial trading and consumer information services; advertising, marketing and promotional services; auctioneering services; rental of vending machines; rental of card-operated vending machines; rental of coin-operated vending machines; auctioneering provided on the internet; on-line auctioneering services via the internet; providing on-line auction services; on-line trading services in which seller posts products to be auctioned and bidding is done via the internet; provision of an on-line marketplace for buyers and sellers of goods and services; procurement services for others [purchasing goods and services for other businesses]; ordering services for third parties; export agency services; clerical services for the taking of sales orders; computerised stock ordering; import and export services; import agency services; bidding quotation; consumers (commercial information and advice for -) [consumer advice shop]; commercial administration of the licensing of the goods and services of others; arranging business introductions relating to the buying and selling of products; price comparison services; telephone order-taking services for others; negotiation and conclusion of commercial transactions for third parties; export promotion services; sales management services; negotiation and conclusion of commercial transactions for third parties via telecommunication systems; arranging of contractual [trade]services with third parties; arranging of buying and selling contracts for third parties; mediation of trade business for third parties; arranging of commercial and business contacts; arranging of trading transactions and commercial contracts; business intermediary and advisory services in the field of selling products and rendering services; arranging of collective buying; procurement of contracts [for others]; procuring of contracts for the purchase and sale of goods; mediation of agreements regarding the sale and purchase of goods; mediation of contracts for purchase and sale of products; arranging the buying of goods for others; arranging newspaper subscriptions for others; administrative order processing; trade show and exhibition services; loyalty, incentive and bonus program services; product demonstrations and product display services; distribution of advertising, marketing and promotional material; promotion services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; production of advertising matter; preparing advertisements for others; sales promotion; advertising services provided via the internet; marketing services; online advertisements; on-line promotion of computer networks and websites; advertising; advertisement for others on the internet; advertising services for the promotion of e-commerce; advertising services to promote the sale of beverages; arranging of exhibitions for business purposes; arranging of exhibitions for advertising purposes; exhibitions (conducting -) for advertising purposes; exhibitions (conducting -) for business purposes; conducting of trade shows; shows (conducting business -); conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; organisation and holding of fairs for commercial or advertising purposes; arranging and conducting of exhibitions for business purposes; arranging and conducting of fairs and exhibitions for advertising purposes; organisation of exhibitions for business or commerce; organisation of exhibitions and events for commercial or advertising purposes; exhibitions for commercial or advertising purposes; organisation of exhibitions and trade fairs for business and promotional purposes; arranging of trade fairs; organisation of events for commercial and advertising purposes; organisation of trade fairs for commercial or advertising purposes; arranging and conducting of fairs and exhibitions for business purposes; promotion of fairs for trade purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; arranging of displays for commercial purposes; display services for merchandise; arranging of displays for advertising purposes; window dressing services for advertising purposes; organisation and conducting of product presentations; retail shop window display arrangement services; shop window dressing; arranging of demonstrations for advertising purposes; demonstration of goods; demonstration of goods for promotional purposes; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; demonstration of photographic equipment [for advertising purposes]; advertising services by means of balloon displays; business merchandising display services; presentation of goods on communication media, for retail purposes; sales demonstration [for others]; direct mail advertising; arranging the distribution of advertising samples in response to telephone enquiries; distribution of advertisements and commercial announcements; dissemination of advertising matter; distribution of advertising material by post; dissemination of advertising for others; dissemination of advertising for others via the internet; dissemination of advertising for others via an on-line communications network on the internet; distribution of printed promotional material by post; dissemination services of advertisement matter; promoting the sale of goods and services of others through the distribution of printed material and promotional contests; promoting the goods and services of others through the distribution of discount cards; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; advertising by mail order; distribution of prospectuses and samples; distribution of products for advertising purposes; sample distribution; distribution of advertising announcements; arranging the distribution of advertising literature in response to telephone enquiries; dissemination of advertising material [leaflets, brochure and printed matter]; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; distribution of advertising mail and of advertising supplements attached to regular editions; distribution of publicity texts; handbill distribution; arranging the distribution of advertising samples; distribution of promotional matter; bill-posting; issuing of publicity leaflets; banner advertising; provision of advertising space, time and media; public relations services; provision of computerised advertising services; provision of space on web-sites for advertising goods and services; providing and rental of advertising space on the internet; provision of advertising space by electronic means and global information networks; rental of advertising space on the internet; advisory services relating to sales promotion; advertising and marketing consultancy; consultations relating to business advertising; advertising, marketing and promotional consultancy, advisory and assistance services are various advertising, business management, business administration, office function, auctioneering and rental of vending machine services. These services have nothing relevant in common with the opponent’s goods in Classes 29 and 30. The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested advertising services are dissimilar to the goods or services being advertised. The remaining contested services also have a different nature (goods versus services), a different purpose and a different method of use from the opponent’s goods. These goods and services are not complementary to or in competition with each other. They are provided/sold by different undertakings through different distribution channels and they target different relevant publics. Therefore, they are dissimilar.

Contested services in Class 43

The opponent’s goods in Class 30, such as coffee, tea, preparations made of cereals, pastry and ices, are similar to a low degree to the contested providing food and drink; catering for the provision of food and beverages; banqueting services; bar services; pizza parlors; bistro services; cocktail lounge services; pubs; restaurant services provided by hotels; hookah bar services; wine bar services; ice cream parlour services; hotel restaurant services; salad bars; services for the preparation of food and drink; snack-bars; hospitality services [food and drink]; corporate hospitality (provision of food and drink); personal chef services; mobile catering services; arranging of meals in hotels; arranging of wedding receptions [food and drink]; catering in fast-food cafeterias; providing of food and drink via a mobile truck; club services for the provision of food and drink; grill restaurants; food preparation services; food preparation services; contract food services; takeaway services; tea rooms; self-service restaurants; snack-bars; restaurant services incorporating licensed bar facilities; carvery restaurant services; take-out restaurant services; restaurant services; night club services [provision of food]; canteens; delicatessens [restaurants]; cafeterias. The opponent’s goods are complementary to the contested services, as such goods are used and offered in the context of restaurant, catering, bar, café, cafeteria, canteen and snack bar services. The opponent’s goods are, therefore, closely related to such services. It is common knowledge that providers of restaurant or catering services often make their own pastries or chocolate products. Moreover, bakers or pastry chefs have often developed catering services and snacks, which include, in particular, pastries and chocolate products. It is also clear that providers of fast food or tea and coffee shops sell pastries, chocolate products and non-alcoholic beverages under their own trade mark.

The remaining contested providing temporary accommodation; consultancy services relating to food; provision of information relating to the preparation of food and drink; providing personalized meal planning services via a website; consultancy services relating to food preparation; consultancy services relating to baking techniques; consulting services in the field of culinary arts; reservation services for booking meals; wine tasting services (provision of beverages); provision of information relating to bars; provision of information relating to restaurants; restaurant information services; cookery advice; food sculpting; accommodation reservation services [time share]; making reservations and bookings for restaurants and meals; restaurant reservation services; booking of restaurant seats; rental of bar equipment; rental of water dispensers; rental of cooking equipment for industrial purposes; rental of cooking apparatus; rental of kitchen worktops; rental of drinking water dispensers; providing accommodation for functions; drink dispensing machines (rental of); providing reviews of restaurants; hotels, hostels and boarding houses, holiday and tourist accommodation; event facilities and temporary office and meeting facilities; nurseries, day-care and elderly care facilities; charitable services, namely providing temporary accommodation; accommodation exchange services [time share]; hospitality services [accommodation]; accommodation services for meetings; room rental for exhibitions; providing convention facilities; arranging of wedding receptions [venues]; provision of conference facilities; provision of trade show facilities [accommodation]; provision of facilities for board meetings; hiring of rooms for social functions; hire of temporary office space; rental of conference facilities; providing conference rooms; provision of facilities for exhibitions; rental of meeting rooms; provision of temporary work accommodation; providing accommodation for meetings are dissimilar to the opponent’s goods in Classes 29 and 30. These goods and services have different natures (goods versus services), different purposes and different methods of use. These goods and services are not complementary to or in competition with each other. They are provided/sold by different undertakings through different distribution channels and they target different relevant publics.

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 varying degrees) are directed at the public at large and at a professional public with specific knowledge and experience. The degree of attention is average.

3. The signs

SAMIA
Earlier trade mark	Contested sign

The relevant territory is France.

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, ‘SAMIA’, and the contested sign, ‘SAMMI’, will be perceived as meaningless by a significant part of the relevant public. Therefore, these words have an average degree of distinctiveness in relation to the relevant goods and services.

The contested sign has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘SAM*’ at their beginnings and in the letter ‘I’, the latter albeit in different positions. 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. However, the signs differ in the final letter, ‘A’, of the earlier mark and the additional fourth letter, ‘M’, in the contested sign. Furthermore, the signs differ in the graphical depiction of the contested sign, namely the stylisation of the verbal element ‘SAMMI’, depicted in bold red upper case letters, in which the letter ‘A’ is incomplete and the letter ‘I’ has a green figurative element above it. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /SAMI*/ or /SAMMI/, present identically in both signs, as the use of a single or a double letter ‘M’ does not significantly influence the pronunciation. The pronunciation differs in the sound of the final letter, ‘A’, of the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for a significant part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and the professional public, whose degree of attention is average. Account is 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).

The conflicting goods and services are partly identical, partly similar to varying degrees and partly dissimilar.

The signs are visually similar to an average degree and aurally similar to a high degree on account of their coinciding beginnings, ‘SAM(M)I*’. The signs cannot be compared on a conceptual basis, as neither of the signs evokes a particular meaning for a significant part of the relevant public.

Taking into account the above, it is considered that the similarities between the marks outweigh their differences; therefore, the relevant public might be led to believe that the goods and services found to be identical and similar to varying degrees come from the same undertaking 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 French trade mark registration No 63 435 833.

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 varying degrees to those 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark application No 11 934 254 and French trade mark registration No 10 3 751 464, both for the figurative mark and both for goods in Classes 29 and 30.

These other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements that are not present in the contested trade mark. Moreover, they cover a similar scope of goods in Classes 29 and 30, which are clearly dissimilar to the remaining contested services in Classes 35 and 43 for the same reasons as explained in section a) of this decision. 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

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.