BASILUR | Decision 2360264 - BASILUR TEA COMPANY (PRIVATE) LIMITED v. Jerzy Marian Sosiński
Date Published: Oct 11, 2017
OPPOSITION No B 2 360 264
Basilur Tea Company (Private) Limited, No. 7 C, 'Barnes Residence', Barnes Place, Colombo 7, Sri Lanka (opponent), represented by Wardyński & Partners, Aleje Ujazdowskie 10, 00-478 Warsaw, Poland (professional representative)
a g a i n s t
Jerzy Marian Sosiński, ul. Rosy Bailly 7/7, 01-494 Warszawa, Poland (applicant).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 360 264 is partially upheld, namely for the following contested goods and services:
Class 30: Coffee; Tea.
Class 43: Management of bars, tea rooms, cafés and restaurants.
2. European Union trade mark application No 12 403 275 is rejected for all the above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 403 275. The opposition is based on Polish trade mark registration No 237 666 and the company name ‘BASILUR’ in Belgium, Bulgaria, the Czech Republic, France, Germany, Ireland, Lithuania, Poland and the United Kingdom. The opponent invoked Articles 8(1)(b) and 8(4) 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 goods and services
The goods on which the opposition is based are the following:
Class 30: Teas and coffees.
The contested goods and services are the following:
Class 30: Coffee; Tea.
Class 35: Advertising; Business management; Business administration; Office functions.
Class 43: Management of bars, tea rooms, cafés and restaurants.
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
Coffee; tea are identically contained in both lists of goods, despite minor differences in wordings.
Contested services in Class 35
The contested services in this class are aimed at supporting other businesses to do or improve their business.
In particular, 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 the client’s position in the market and acquiring competitive advantage through publicity. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.
Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.
Business administration services are intended to help companies with the performance of business operations. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They are rendered by inter alia employment agencies, auditors and outsourcing companies.
Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’.
On the other hand, the opponent’s goods in Class 30 are beverages. They have no commonalities with the contested services. Above all, goods and services are fundamentally different by nature. They serve clearly different purposes and move through different distribution channels. They are not complementary or in competition either. The mere fact that the manufacturers of tea or coffee may use business support services for improving their business operations, promoting their products or expanding their market share does not lead to the finding that these goods and services are similar. In the same vein, the fact that the opponent’s goods may appear in advertisements is insufficient for a finding of similarity.
Therefore, the contested advertising; business management; business administration; office functions are dissimilar to the opponent’s goods.
Contested services in Class 43
The contested services in this class, albeit specified as ‘management’, have to be interpreted as the activity of ‘running’ of the establishments providing food and drink.
From the point of view of the public, the opponent’s goods in Class 30 are complementary to gastronomic services and such goods are often necessary elements on menus in restaurants and cafés. Numerous business models not only provide for the sale of foodstuffs produced by them as goods, but also for the provision of catering services, be it in their own business or in the field of outside catering, as well as vice versa, with providers of catering services diversifying their offer with ready-to-serve meals. These include, for instance, bakeries or ice-cream parlours restaurants with meals to take away or for delivery, and many others. These always appear under the same trade mark. Dissimilarity can only be assumed if the consumer would assume that goods from the foodstuffs sector and the field of catering services did not have the same commercial origin, even if they are offered under the same or highly similar trade marks. However, this does not correspond with the market conditions. This means that these goods and services are similar to a certain degree (decision of 12/02/2014, R 886/2013-2 - ‘CREMERIA TOSCANA (fig.) / la Cremeria (fig)’ et al., § 32, and the case-law cited therein).
The foregoing clearly applies to the present case. It is common practice for coffee and tea shops to offer beverages that are ready for consumption on the premises or for take-away. Besides the ready-made beverages, these establishments offer for sale packaged tea leaves, tea-bags, coffee beans or ground coffee etc. under the same trade mark. Such business model can be run by bars, tea rooms, cafés or even restaurants. Therefore, the contested services and the opponent’s goods are complementary and they coincide in their distribution channels and commercial origin.
All in all, the contested management of bars, tea rooms, cafés and restaurants is similar to a low degree to the opponent’s goods.
- 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 a low degree are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is Poland.
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).
Both signs comprise the word ‘BASILUR’. In the perception of the relevant public this word is fanciful and enjoys an average degree of distinctiveness. The verbal element ‘BASILUR’ is depicted in a stylised manner in the earlier mark. Nevertheless, the stylisation is very simple, consisting of a fairly standard typeface, in beige, against a brown rectangle with a beige border. Such figurative elements lack any distinguishing capacity.
There are some additional elements in the earlier mark. Firstly, it contains the stylised grapheme ‘B’ which will be perceived as an embellished first letter of the word ‘BASILUR’. Although the distinctiveness of this element must be seen as average, it is less relevant than the word ‘BASILUR’, 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).
Secondly, the mark contains a stylised representation of the words ‘EXCLUSIVE PREMIUM QUALITY’ appearing in a substantially smaller size than the other elements. Owing to the wide usage of these English words in trade, a substantial part of the relevant public will understand them as laudatory references to a unique selection (of products) of the highest standard. Therefore, this element is devoid of distinctive character. The subordinate position of this element in relation to the other, visually more eye-catching elements of the mark, even further diminishes its impact.
Visually, the signs coincide in the word ‘BASILUR’. Although the earlier mark contains additional elements, they are non-distinctive or have a lesser weight in the overall impression produced by the mark, for reasons set out above. Therefore, the signs are highly similar.
Aurally, the pronunciations of the signs coincide in the pronunciation of the word ‘BASILUR’. It can be reasonably assumed that the embellished letter ‘B’ will not be pronounced when referring to the earlier mark. Furthermore, the words ‘EXCLUSIVE PREMIUM QUALITY’ may be omitted from the pronunciation of the earlier mark, in view of the size and position of this element. In any event, since the differentiating element is non-distinctive, the signs are identical.
Conceptually, the common element of the signs has no meaning. The additional components in the earlier mark, being non-distinctive or lacking any relevant concept, are incapable of introducing a conceptual difference between the signs. Therefore, a conceptual comparison between the signs is not possible, and 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.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The obvious similarity between the signs results from the element ‘BASILUR’. The earlier mark contains some additional components. Nevertheless, these differences are clearly insufficient to counteract the similarity established between the signs and to enable the average consumer to safely distinguish between them.
In that regard, it has to be pointed out that it is common practice, on the relevant market, for producers/service providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.
The strong similarity between the signs can lead the public to reasonably believe that the earlier composite mark is a graphical representation of the contested word mark. Consequently, the public may attribute the same (or economically linked) commercial origin to the goods and services that are identical or similar to a low degree.
As regards the contested services found to be similar to a low degree to the opponent’s goods, account must be taken of the well-established principle that 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 services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the strong similarity between the signs outweighs the low similarity between the opponent’s goods and the contested services in Class 43, and a risk of confusion exists also in relation to those.
Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the public.
Therefore, the opposition is partly well-founded on the basis of the opponent’s Polish trade mark registration No 237 666.
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 a low degree to those of the earlier trade mark.
The rest of the contested services, namely services in Class 35, 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 services cannot be successful.
The examination of the opponent’s claims continues in relation to Article 8(4) EUTMR with respect to the remaining contested services.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opponent invokes the company name ‘BASILUR’ in Belgium, Bulgaria, the Czech Republic, France, Germany, Ireland, Lithuania, Poland and the United Kingdom, used for tea and coffee.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.
On 03/07/2014, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Following the request of both parties to extend the cooling-off period, the time limit for the opponent to submit evidence in support of the opposition expired on 15/09/2016.
The opponent did not submit any evidence of use of the earlier sign on which the opposition is based.
In its observations, the opponent claims that ‘BASILUR TEA EXPORT (PVT) LTD’ is a premier tea trading company exporting the finest of Ceylon Tea to a world-wide clientele since 2007, and that it has been using the brand ‘BASILUR’ for its business in relation to advertising, business management, business administration and office functions. In addition, it is stated that, attached to the opponent’s letter, is information about ‘BASILUR TEA EXPORT (PVT) LTD’. However, aside from the TMView database printout in relation to earlier Polish trade mark registration No 237 666, the opponent’s submissions do not contain any evidence showing the existence or use of the company name at issue.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, insofar as these grounds are concerned.
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
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.