Ôcuisine | Decision 2606112 - Gallagher & Hayes Ltd trading as La Cuisine v. INTERNATIONAL COOKWARE
Date Published: Oct 2, 2017
OPPOSITION No B 2 606 112
Gallagher & Hayes Ltd trading as La Cuisine, Unit 3 Ballykeeran, Kilmacrennan, Letterkenny, Co. Donegal, Ireland (opponent), represented by Gallagher & Hayes Ltd trading as La Cuisine,
a g a i n s t
International Cookware, 85 allée des Maisons Rouges, 36000 Châteauroux, France (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 606 112 is upheld for all the contested goods, namely
Class 21: Bake ware and kitchen utensils; dishes of glass for oven use, articles of ceramic, metal or frying pans and saucepans.
2. European Union trade mark application No 14 663 884 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 663 884, namely against all the goods in Class 21. The opposition is based on European Union trade mark registration No 13 624 192. 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.
- The goods
The goods on which the opposition is based are the following:
Class 21: Cookware; tableware, cookware and containers.
The contested goods are the following:
Class 21: Bake ware and kitchen utensils; dishes of glass for oven use, articles of ceramic, metal or frying pans and saucepans.
The contested kitchen utensils are ‘utensils intended for use in a kitchen, such as a chopping board, saucepan, or knife’ (definition extracted from Collins English dictionary online on 2/03/2017 at www.collinsdictionary.com). As such, these goods include, as a broader category, inter alia the opponent’s cookware (present twice in the opponent’s list of goods). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested bake ware (i.e ‘dishes and other cooking utensils used for baking; definition extracted from Collins English dictionary online on 2/03/2017 at www.collinsdictionary.com); dishes of glass for oven use as well as the contested frying pans and saucepans are included in the broad category of the opponent’s cookware (i.e. ‘the range of pans and pots which are used in cooking’ definition extracted from Collins English dictionary online on 2/03/2017 at www.collinsdictionary.com). Therefore, they are identical.
The contested articles of ceramic, metal overlap with the opponent’s cookware. Therefore, they are identical as well.
- 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 identical 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 the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘CUISINE’ is not meaningful in certain territories, for example, in Poland, Lithuania and Slovenia, where a significant part of the relevant public would not be familiar with this French term. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-, Lithuanian- and Slovenian- speaking part of the public.
The earlier mark is a figurative mark consisting of the verbal elements ‘LA CUISINE’ written in standard, bold, typeface, in upper case letters, with semi-elliptical bold lines above and underneath it. Below are placed the verbal elements ‘For Life’, in a very thin and small typeface; above is placed a figurative element representing a kind of coat of arms that includes the depiction of a lion and a crown. All elements in the earlier mark are represented in red colour.
A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the earlier mark, the verbal elements ‘For Life’ are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.
The verbal elements ‘LA’ and ‘CUISINE’ of the earlier mark have no meaning for the relevant public and are, therefore, distinctive. The figurative element of the coat of arms might denote, as a heraldic symbol, values such as tradition, nobility and respectability. It therefore conveys the perception that the product is of a particular standing and of good quality because of the knowledge acquired through the years. Consequently, the distinctiveness of this element is limited. The figurative element of the red semi-elliptical bold lines above and under the verbal elements ‘LA CUISINE’ and the red colour stylisation is of a purely decorative nature and thus less distinctive. The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
As regards the contested sign, it is a figurative mark composed of the distinctive verbal component ‘Ôcuisine’, in a slightly stylised typeface in lower case letters, except for the first letter ‘Ô’ - depicted in a bigger size -, placed on a black label device. In the lower part of this label is depicted a representation, in very small size, of the Eiffel tower; however, due to its size and position, the latter is barely perceptible and will not be noticeable at first sight. Therefore, this element is likely to be disregarded by the relevant public and is to be considered negligible; consequently, it will not be taken into consideration in the assessment of a likelihood of confusion.
The verbal component ‘Ôcuisine’ of the contested mark has no meaning for the relevant public and therefore it is distinctive. The figurative element of the device depicting a label and the stylisation will be perceived as a decorative element and aspect and is thus less distinctive. The contested mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the string of letters ‘CUISINE’. However, they differ in the string of letters ‘LA’ in the earlier mark and in the letter ‘Ô’ in the contested mark. They also differ in the figurative elements, red colour and stylisation detailed above. As already mentioned, the word ‘CUISINE’ is distinctive and so are the additional letters ‘LA’ and the letter ‘Ô’; while the figurative elements are considered weaker. For this reason, even though both marks are complex marks, consumers will tend to focus their attention on these more distinctive elements. Furthermore, the coinciding letters form eight out of ten letters of the more distinctive part in the earlier mark and eight out of nine letters of the more distinctive part of the contested mark.
Considering the above, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘CUISINE’, present identically in both signs and forming eight out of the ten letters of which the more distinctive component in the earlier mark is composed and eight out of the nine letters of which the contested mark’s more distinctive component is composed. The pronunciation differs in the sound of the initial letters ‛LA’ in the earlier sign and the begin letter ‘‘Ô’ in the contested mark. The marks coincide in their numbers of syllables, vowel structures, intonations and rhythms.
Therefore, the signs are aurally similar to an average degree.
Conceptually, only the weaker element of the coat of arms in the earlier mark will convey a message about the quality of the goods and to this extent the signs are not conceptually similar. However, the normally distinctive elements in both marks are meaningless for the public in the relevant territory: to this extent, a conceptual comparison 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, in its opposition notice has - albeit not explicitly – claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 weak (figurative) elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested goods are identical to the opponent’s goods.
The marks at issue are visually similar and aurally similar to at least an average degree on account of the sequence of letters ‘CUISINE’ that they have in common, as well as of the identical numbers of syllables, vowel structure and rhythms of their verbal elements which also form the major part of the most distinctive component in both signs.
In addition, account must be 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).
Given all the foregoing, the Opposition Division is of the opinion that the relevant public would believe that the goods come from the same undertaking or economically linked undertakings. The differences between the marks at issue are not sufficient to overcome their similarities.
In its observations, the applicant refers to the principle that generally consumers pay more attention to the beginning of signs – citing relevant case law in this regard – and emphasises that the beginnings of signs at issue are different. While it is true that the element ‘CUISINE’ does not appear at the beginning of the marks, it is readily identifiable as an independent component in both of the signs under comparison, also due to the fact that there is a space between ‘LA’ and ‘CUISINE’ in the earlier mark and that the letter ‘Ô’ in the contested mark is represented in a bigger size than the subsequent string of letters ‘CUISINE’. The diverging verbal elements in both marks are significantly shorter and occupy a smaller proportion of the marks than the eight-letter element ‘CUISINE’, which is where the coincidences reside. As regards the argument of the applicant that the letter ‘Ô’ would be particularly eye-catching since it is not common, it has to be noted that the circumflex is represented in a very thin typeface so as to be rather inconspicuous and barely perceptible, so that this argument must be set aside.
Bearing in mind all the above, the Opposition Division considers that there is a likelihood of confusion on the part of the Polish-, Lithuanian- and Slovenian- speaking part public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 624 192. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
VAN DEN EEDE
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.