OPPOSITION No B 2 694 399

Schloß Schönbrunn Kultur- und Betriebsgesellschaft m.b.H., Schloß Schönbrunn, Schönbrunner Schloßstraße 47 1130 Wien, Austria (opponent), represented by Manuela M. Pacher, Brucknerstr. 6, 1040 Wien, Austria (professional representative)

a g a i n s t

Cinq Filles Budapest KFT, Budapest, Rumbach Sebestyén utca 15. A ép. 1., 1075 Hungary (applicant), represented by András Krajnyák ABK – Dr. Krajnyák & Partner Law and Patent Office, Budapest, Logodi u. 5-7., 1012, Hungary (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 399 is partially upheld, namely for the following contested goods

Class 16:        Decoration and art materials and media; works of art and figurines of paper and cardboard; paper and cardboard.

Class 30:        Sugars, natural sweeteners, sweet coatings and fillings, bee products; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; brioches; crumble; chocolate-based ready-to-eat food bars; grain-based chips; crackers flavoured with spices; crackers flavoured with herbs; snack food products made from cereal starch; snack food products made from cereal flour; snack food products consisting of cereal products; crisps made of cereals; pies; pies [sweet or savoury]; snack foods made from corn; snack foods prepared from maize; snacks manufactured from muesli; pretzels; puffed corn snacks; savory pastries.

2.        European Union trade mark application No 15 066 996 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 066 996. The opposition is based on European Union trade mark registration No 9 379 959. The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

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

Class 35:        Presentation of goods on communications media; online or catalogue mail order services in relation to clocks and watches and jewellery, stationery, office requisites, bags and saddlery, furnishings and decorative articles, toys, foodstuffs and beverages, cosmetics.

 

The contested goods and services are the following:

Class 16:        Decoration and art materials and media; disposable paper products; works of art and figurines of paper and cardboard; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; printed matter; paper and cardboard.

Class 30:        Sugars, natural sweeteners, sweet coatings and fillings, bee products; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; brioches; crumble; chocolate-based ready-to-eat food bars; grain-based chips; crackers flavoured with spices; crackers flavoured with herbs; snack food products made from cereal starch; snack food products made from cereal flour; snack food products consisting of cereal products; crisps made of cereals; pies; pies [sweet or savoury]; snack foods made from corn; snack foods prepared from maize; snacks manufactured from muesli; pretzels; puffed corn snacks; savory pastries.

Class 39:        Gift-wrapping.

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.

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.

Contested goods in Class 16

As a general rule, retail 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. The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as internet shopping, catalogue or mail order services.

The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as the present opponent’s online or catalogue mail order services in relation to clocks and watches and jewellery, stationery, office requisites, bags and saddlery, furnishings and decorative articles, toys, foodstuffs and beverages, cosmetics.

The applicant’s paper and cardboard are included in the broad category of stationery.

Therefore, these contested goods are similar to a low degree to the opponent’s online or catalogue mail order services in relation to stationery in Class 35.

Since the contested decoration and art materials and media; works of art and figurines of paper and cardboard overlap with the broad category of decorative articles, these contested goods are similar to a low degree to the opponent’s online or catalogue mail order services in relation to decorative articles in Class 35.

The opponent’s services and the remaining goods in Class 16, namely disposable paper products; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; printed matter are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent’s 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 in question have different methods of use and are neither in competition nor complementary.

Similarity between retail 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 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 dissimilar.

Contested goods in Class 30

As mentioned above similarity between retail 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 services and the specific goods covered by the other mark are identical. These principles also apply to services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as internet shopping, catalogue or mail order services. All the contested goods in this class are included in the broad category of foodstuffs, which are subject to the opponent’s online or catalogue mail order services and, therefore, all the applicant’s goods in Class 30, namely sugars, natural sweeteners, sweet coatings and fillings, bee products; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; brioches; crumble; chocolate-based ready-to-eat food bars; grain-based chips; crackers flavoured with spices; crackers flavoured with herbs; snack food products made from cereal starch; snack food products made from cereal flour; snack food products consisting of cereal products; crisps made of cereals; pies; pies [sweet or savoury]; snack foods made from corn; snack foods prepared from maize; snacks manufactured from muesli; pretzels; puffed corn snacks; savory pastries are similar to a low degree to the opponent’s online or catalogue mail order services in relation to foodstuffs in Class 35.

Contested services in Class 39

The opponent’s presentation of goods on communications media; online or catalogue mail order services in relation to clocks and watches and jewellery, stationery, office requisites, bags and saddlery, furnishings and decorative articles, toys, foodstuffs and beverages, cosmetics refer on the one hand to the presentation of goods on communications media and on the other hand to the sale of goods via non-shop retailing (online or catalogue mail order) services.

The contested gift-wrapping refers to services consisting of enclosing a gift in some sort of material.

The mere fact that the opponent’s services may be accompanied by the contested ones is not sufficient to find similarity between them. Although, it might be recommended from the consumers’ point of view to wrap the opponent’s goods for gift-giving purposes when ordering them online, the consumers usually do not expect to see both kinds of services together. They usually first buy the goods and then proceed to wrap them. Likewise, the consumers do not expect to encounter gift-wrapping services when providing the opponent’s presentation of goods on communications media. Consequently, these services are not offered by the same companies. For the reasons explained above, no relationship can be established between these services, which are considered 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 found to be similar to a low degree are directed at the public at large. The degree of attention varies from average to higher than average, depending on the price, specialised nature, or terms and conditions of the purchased goods or services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The 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). This applies by analogy to international registrations designating the European Union. 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 German-speaking part of the relevant public for which the common verbal element ‘SISI’ is meaningful.

Both signs are figurative.

The earlier mark consists of a colourful picture (portrait) of the Austrian Empress Elisabeth (1837-1898). This element is separated beneath with a black thin line from the word elements ‘SHOP’, written in title standard letters in bold and the word ‘SISI’, written in standard, title letters in italic type. The verbal element ‘SISI’ appears slightly beneath and is placed left sided from the word ‘SHOP’.

The contested sign is composed of the prominent verbal element ‘SISI’, written in stylised, title letters in italic type (handwritten type) and the much smaller verbal elements ‘CINQ FILLES’, written in uppercase, standard letters.

The substantial part of the relevant German-speaking public will perceive in the earlier mark the portrait of the Austrian Empress Elisabeth. This statement is reinforced by her nickname ‘SISI’ also present in the earlier mark. Likewise, the relevant public will recognize the same concept behind the word element ‘SISI’ in the contested sign. These verbal elements have no meaning in relation to the goods and services at issue and, therefore, they enjoy an average degree of distinctiveness.

Although, in principle the verbal elements usually have a stronger impact on the consumer than the figurative components, in the present case, the figurative element representing the portrait of the Austrian Empress Elisabeth within the earlier mark reinforces the concept lying behind the word ‘SISI’.

The English word ‘Shop’ has been included in the German language (Duden Online, 15/05/2017, http://www.duden.de/rechtschreibung/Shop). It refers to a building for the retail sale of goods and services. The fact that nowadays the sale takes also place online and bearing in mind the opponent’s online or catalogue mail order services in relation to stationery, decorative articles, foodstuffs, it is considered, that this element is non-distinctive in relation to these services.

The verbal elements ‘CINQ FILLES’ of the contested sign are of French origin and mean ‘five girls/daughters’, in German ‘fünf Mädchen/Töchter’. They will not be understood by the relevant public in the relevant territory. These verbal elements have no meaning for the examined relevant public in relation to the relevant goods and, therefore, their inherent distinctiveness is normal.

The black thin line below the figurative element in the earlier mark represents a banal shape and, therefore, will perform purely a decorative function in the earlier mark. The relevant public is accustomed to such decorative elements accompanying commercial brands and, therefore, this element will not attach the attention of the relevant public.

The earlier mark has no elements that could be clearly considered more dominant (visually aye-catching) than other elements.

As regards the contested sign the verbal elements ‘CINQ FILLES’ are much smaller in size and in a subordinate position as compared to the size and position of the word ‘SISI’, which is more visually eye-catching and, therefore, dominant.

Visually, the signs coincide in that they both contain the distinctive verbal element ‘SISI’, which is the first and visually eye-catching element of the contested sign. Although, the verbal element ‘SiSi’ is placed in a lower part within the earlier mark, it plays an independent distinctive role in it. Furthermore, its left-sided position within the sign in comparison to the word ‘SHOP’ suggests that this word can be the one that will catch the attention of the relevant public at first. This is because the public reads from left to right, which makes the part placed at the left of the sign the one that catches the attention of the reader. The signs differ in the less important (black thin line), the non-distinctive verbal element ‘SHOP’, as well as in the figurative element of the earlier mark and the non-dominant verbal element ‘CINQ FILLES’ of the contested sign.

Therefore, considering all the above and the coincidence in the normally distinctive and independent element ‘SISI’, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘SISI’ and differs in the sound of the verbal elements ‘SHOP’ of the earlier mark and ‘CINQ FILLES’ of the contested sign. As regards the difference in the verbal element ‘SHOP’, its impact will be reduced due to its non-distinctive character. In view of the non-dominant position and small size of the element ‘‘CINQ FILLES’ of the contested sign, it will probably be not pronounced by the German relevant public. Therefore, considering the limited impact of the differing component ‘SHOP’, the non-dominant position of the verbal elements’ CINQ FILLES’ and the fact that the dominant element of the contested sign ‘SISI’ is reproduced identically in the earlier mark, the signs are aurally similar to an average degree.

 

Conceptually, the public in the relevant territory will immediately perceive the word ‘SISI’ contained in both signs, especially, because this word in the earlier mark is accompanied by a colourful picture of the Austrian Empress Elisabeth, known commonly as ‘SISI’. As indicated above, the element ‘CINQ FILLES’ has no meaning for the relevant public and territory. The element ‘SHOP’ of the earlier mark will be associated with a meaning. However, in spite of the fact that ‘SHOP’ evokes a concept that is not present in the contested sign and constitutes a certain conceptual difference between the signs, the impact of this conceptual difference is limited as this is a non-distinctive element within the earlier mark.

Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘SISI’, which is inherently distinctive in relation to all the goods and services at issue and plays an independent role in both signs.

As the signs have been found similar in at least one of the comparison, the examination of the 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 mark as a whole has no clear meaning for any of the goods and services in question from the perspective of the German-sparking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as explained above in section c).  

5. Global assessment, other arguments and conclusion

The contested goods and services are partially similar to a low degree and partially dissimilar. The earlier mark enjoys a normal degree of distinctiveness.

The signs under comparison are visually, aurally and conceptually similar to an average degree. The signs have certain differences, albeit with a rather limited impact, as explained above. The similarities between the signs are on account of their common and normally distinctive verbal element ‘SISI’, which is also the only distinctive verbal element of the earlier mark and constitutes a dominant element of the contested sign. As mentioned above, the picture of the Austrian Empress Elisabeth in the earlier mark, known by the relevant public as ‘SISI’ reinforces the impact of this common verbal element on the relevant consumers.

Regarding the difference in the element ‘SHOP’ of the earlier mark, its impact as trade identifier is limited due to its non-distinctive character. Likewise, the remaining different elements are either purely figurative (the thin black line in the earlier mark) or non-dominant (the verbal elements ‘CINQ FILLES’ in the contested sign) and their role as indicators of origin of the goods and services in question is less important than that of the common verbal element ‘SISI’.

Account is taken also of the imperfect recollection factor stipulating that the 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public, and, therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 9 379 959. 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.

In the present case, the differences between the signs are not sufficient to counteract the similarity resulting from their common and distinctive element ‘SISI’ and, therefore, there is also a likelihood of confusion for the goods and services found similar to a low degree.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar (including to a low degree) to those of the earlier mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Patricia LOPEZ FERNANDEZ DE CORRES

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

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.