OPPOSITION DIVISION

OPPOSITION No B 2 732 249

Rotkäppchen-Mumm Sektkellereien GmbH, Sektkellereistr. 5, 06632 Freyburg,

Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343

Eltville am Rhein, Germany (employee representative).

a g a i n s t

Kofola CS a.s., Nad Porubkou 2278/31A, 708 00 Ostrava, Czech Republic

(applicant), represented by Čermák a Spol., Elišky Peškové 15, 150 00 Praha 5,

containing [principally] rice; foodstuffs made from cereals;

farinaceous foods; bakery goods; bread; bread rolls; buns;

croissants; baguettes; bread rolls; bagels; flat bread; sandwiches;

filled bread rolls; filled baguettes; tea; iced tea; drinking chocolate;

tarts; cocoa-based beverages; coffee; coffee-based beverages;

cereal-based snack food; cake dough; ices; frozen yoghurt; tea-

based beverages.

Class 32: Non-alcoholic beverages; fruit juice beverages (non-alcoholic –);

vegetable drinks; non-alcoholic fruit extracts; fruit nectars, non-

alcoholic; juices; vegetable juices (beverages); vegetable juices

services; rental of chairs, tables, table linen, glassware; rental of

cooking apparatus; bar services; salad bars.

2. European Union trade mark application No 15 164 916 is rejected for all the

above goods and services. It may proceed for the remaining goods.

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 15 164 916, namely against all the goods

Decision on Opposition No B 2 732 249 page: 2 of 8

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.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

preparations for making beverages.

Class 43: Services for providing food and drink; services for temporary

accommodation.

The contested goods and services are the following:

Class 30: Prepared meals containing [principally] pasta; prepared meals containing

[principally] rice; foodstuffs made from cereals; farinaceous foods; dressings for

salad; candy; bakery goods; bread; bread rolls; buns; croissants; baguettes; bread

rolls; bagels; flat bread; sandwiches; filled bread rolls; filled baguettes; tea; Iced tea;

drinking chocolate; tarts; cocoa-based beverages; coffee; coffee-based beverages;

cereal-based snack food; cake dough; ices; frozen yoghurt; tea-based beverages.

catering for the provision of food and beverages; restaurant services; cafeterias; self-

service restaurants; contract food services; rental of chairs, tables, table linen,

glassware; rental of cooking apparatus; bar services; salad bars.

Decision on Opposition No B 2 732 249 page: 3 of 8

Classification.

alia, the nature and purpose of the goods or services, the distribution channels, the

Contested goods in Class 30

The contested tea; iced tea; drinking chocolate; cocoa-based beverages; coffee;

coffee-based beverages tea-based beverages are similar to the opponent’s non-

alcoholic beverages in Class 32. These products are in competition and have the

same public, distribution channels and producers.

In accordance with the latest practice of the Office (based on the recent case-law of

the Court; 04/06/2015, T-562/14, YOO, EU:T:2015:962, § 25 et seq.), the contested

prepared meals containing [principally] pasta; prepared meals containing [principally]

bread rolls; filled baguettes; tarts; cereal-based snack food; cake dough; ices; frozen

yoghurt and the opponent’s services for providing food and drink in Class 43 are

complementary and can be offered/provided by the same companies through the

sufficient to find similarity between them. The consumer will be aware that these are

20/10/2011, R 1976/2010-4, THAI SPA/SPA et al., § 24-26). Moreover, the opponent

did not submit convincing arguments and evidence to support a different conclusion.

to provision of food or temporary accommodation in Class 43. These contested

have the same nature or purpose. They are neither in competition nor

complementary. The producers are also different.

Contested goods in Class 32

Non-alcoholic beverages; preparations for making beverages are identically

category of the opponent’s fruit beverages. Therefore, they are identical.

The contested vegetable drinks; vegetable juices (beverages) (twice in the contested

list of goods and services); cocktails, non-alcoholic; mineral water [beverages]; must

are included in the broad category of the opponent’s non-alcoholic beverages.

Therefore, they are identical.

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Contested services in Class 43

The contested food preparation services; snack-bars; delicatessens [restaurants];

the broad category of the opponent’s services for providing food and drink. Therefore,

they are identical.

The contested rental of chairs, tables, table linen, glassware is similar to the

opponent’s providing temporary accommodation, as these services may have the

same providers and end users. Furthermore, they are complementary.

The contested rental of cooking apparatus is a service consisting of the leasing of

cooking apparatus. The opponent’s services for providing food and drink also consist

of services that aim to provide food and drink, such as catering and restaurants. It is

not uncommon for establishments providing food and drink to rent some of their food

services have the same providers and end users. They are, moreover, if not strictly

complementary, at least provided in combination. Therefore, they are similar.

be borne in mind that the average consumer’s degree of attention is likely to vary

In the present case, the contested goods in Class 30 and 32, as well as some of the

of attention.

Some of the services, namely rental of chairs, tables, table linen, glassware; rental of

cooking apparatus in Class 43, target professionals displaying an average degree of

attention.

c) The signs

The relevant territory is Austria.

The global appreciation of the visual, aural or conceptual similarity of the marks in

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The contested sign is a word mark composed of the verbal elements ‘UGO Salaterie’.

The element ‘UGO’ will be perceived as a male given name. The distinctiveness of

services. The word ‘Salaterie’ is, as such, meaningless. However, the relevant public

(butchery) and ‘Bäckerei’ (bakery), there are also many shops whose names end in

‘ie’, such as ‘Drogerie’, ‘Grosserie’, ‘Konfiserie’ and ‘Parfümerie’. Therefore, for the

relevant public, this element is non-distinctive, especially in relation to most of the

services in Class 43 (in particular food preparation services; snack-bars;

delicatessens [restaurants]; catering for the provision of food and beverages;

restaurant services; cafeterias; self-service restaurants; contract food services)

because the relevant public could think that these are salad-bars. In relation to the

other contested goods and services, the distinctiveness of this element is normal, as

it has no connection with these relevant goods and services.

Furthermore, the contested sign has no element that could be considered more

The earlier trade mark is a word mark composed of the verbal element ‘UGO’. As

explained above, this element will be perceived as a male given name and has a

identical. Consumers generally tend to focus on the first element of a sign when

being confronted with a trade mark. This is justified by the fact that the public reads

the one that first catches the attention of the reader.

As the signs coincide in the only element of the earlier mark and the first element of

the contested sign (which is the more distinctive element for part of the goods and

services), the signs are visually and aurally similar at least to an average degree.

Conceptually, the signs have a similar concept inasmuch as they both refer to the

male given name ‘Hugo’.

depending on the distinctive character of ‘Salaterie’.

As the signs have been found similar in at least one aspect of the comparison, the

Decision on Opposition No B 2 732 249 page: 6 of 8

in the global assessment of likelihood of confusion.

of intensive use or reputation.

distinctiveness per se. In the present case, the earlier trade mark as a whole has no

meaning for any of the goods and services in question from the perspective of the

public in the relevant territory. Therefore, the distinctiveness of the earlier mark must

be seen as normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the

relevant factors and, in particular, a similarity between the marks and between the

goods or services. Therefore, a lesser degree of similarity between goods and

The contested goods and services are partly identical, partly similar to various

The signs differ only in the second verbal element of the contested sign, namely

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered

similarity of the goods or services covered by the trade marks there exists a

trade mark is protected; the likelihood of confusion includes the likelihood of

association with the earlier trade mark. In the present case, consumers may

legitimately believe that the contested sign denotes a new brand line of goods and

services provided under the opponent’s mark.

Moreover, account is taken of the fact that average consumers rarely have the

As regards the applicant’s arguments that the applicant would enjoy priority within the

and that the contested application’s registration date is later than the registration date

of the opponent’s earlier right.

In its observations, the applicant argues that the earlier trade mark has a low degree

of distinctiveness given that there is a famous cocktail called ‘HUGO’. In support of

its argument, the applicant refers to one Wikipedia page and two printouts of articles

Decision on Opposition No B 2 732 249 page: 7 of 8

The Opposition Division notes that the existence of a couple of articles is not per se

particularly conclusive, as it does not necessarily reflect the situation in the market.

even though South Tyrol is bordered by Austria. It follows that the evidence submitted

services.

Moreover, account should be taken of the recent decision of the Board of Appeal

(22/02/2016, R 2707/2014-4, UGO / IL UGO!, § 19):

It is claimed by the appellant that the word ‘UGO’ is descriptive for an alcoholic

drink made of elderflower syrup. The Board does not concur with this

statement. Even the internet printouts submitted by the appellant do not show

that there is an alcoholic drink named ‘UGO’. The documents refer to a drink

named ‘HUGO’. The fact that ‘HUGO’ is pronounced in some languages as

‘UGO’ or ‘ÜGO’ does not mean that the drink is called ‘UGO’. At least for the

It follows from the above that the contested trade mark must be rejected for the

earlier trade mark.

COSTS

bear the fees and costs incurred by the other party. According to Article 109(3)

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.

Decision on Opposition No B 2 732 249 page: 8 of 8

Adriana VAN ROODEN

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 EUTMR, notice of appeal

must be filed in writing at the Office within two months of the date of notification of