Yellow FOOD MADE BETTER | Decision 2563826 - Yello Strom GmbH v. YELLOW RESTAURANT SRL
Date Published: May 1, 2018
OPPOSITION No B 2 563 826
Yello Strom GmbH, Siegburger Straße 229 (Torhaus), 50679 Cologne, Germany (opponent), represented by Lichtenstein, Körner & Partner mbB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)
a g a i n s t
Yellow Restaurant Srl, Str. Oltetului, Nr. 11-13, Bucharest, Romania (applicant), represented by Elena Grecu, 1 Piata Pache Protopopescu, Ap. 6, 2nd floor, Sector 2, 021023 Bucharest, Romania (professional representative).
On 12/01/2017, the Opposition Division takes the following
1. Opposition No B 2 563 826 is upheld for all the contested services.
2. European Union trade mark application No 13 917 521 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the services of European Union trade mark application No 13 917 521. The opposition is based on, inter alia, European Union trade mark registration No 2 782 944. 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 European Union trade mark registration No 2 782 944.
- The goods and services
The goods and services on which the opposition is based are, among others, the following:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Class 39: Transport and logistics in the transport sector; removal services, in particular rental of removal vehicles, providing furniture packers, assembly and disassembly of furniture; logistics services with regard to removals; delivery of goods of all kinds; collection and repair of mobile phones.
Class 43: Services for providing food and drink, temporary accommodation.
After a limitation the contested services are the following:
Class 35: Retail services relating to food; retail services in relation to foodstuffs.
Class 39: Delivery of food and drink prepared for consumption.
Class 43: Hotel catering services; Outside catering services; Catering services for the provision of food.
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 services in Class 35
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.
While the term ‘foodstuffs’ is defined as ‘a particular substance suitable for consumption as food’, the term ‘food’ relates to ‘any nutritious substance that people or animals eat or drink in order to maintain life and growth’ (see Oxford English Dictionary Online).
Therefore, the contested retail services relating to food are similar to a low degree to the opponent’s bread (which is a processed food product) and the contested retail services in relation to foodstuffs are similar to a low degree to the opponent’s milk (which is an unprocessed foodstuff).
Contested services in Class 39
The contested delivery of food and drink prepared for consumption is included in the broad category of the opponent’s delivery of goods of all kinds. Therefore, they are identical.
Contested services in Class 43
The contested hotel catering services; outside catering services; catering services for the provision of food are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.
- 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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark and has no elements that could be considered more distinctive or more dominant (visually eye-catching) than other elements. In the case of a word mark it is the word as such that is protected and not its written form. Therefore, it is immaterial if its letters appear in upper- or lower-case.
The contested sign is a figurative mark. It consists of the verbal elements ‘Yellow’ and ‘FOOD MADE BETTER’ in yellow and spread over two lines. The letters of the first verbal element ‘Yellow’ are significantly bigger in size and their graphical representation is fanciful: the shapes of the letters are irregular (as if written by hand) and the letters ‘ll’ are a stylised fork and spoon. Finally, the spaces inside of the letters ‘e’ and ‘o’ are in mauve and red colour respectively.
The verbal elements ‘FOOD MADE BETTER’ of the contested sign will be associated with a laudatory slogan for a ‘higher quality of nourishment’. The stylised representation of a fork and a spoon will also be associated with food. Bearing in mind that the relevant services are closely related to food, these elements are weak for these services.
The element ‘Yellow’ in the contested sign is the dominant element as it is the most eye-catching.
Visually, the signs coincide in the string of letters ‘yello(*)’. However, they differ in the additional letters ‘w’ and ‘FOOD MADE BETTER’ of the contested sign. As explained above, the verbal elements ‘FOOD MADE BETTER’ are weak and not dominant.
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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the graphic elements of the contested sign have a limited impact.
The first parts of the conflicting marks are 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 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.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛yello(w)’, present identically in both signs and this coinciding element is the dominant and more distinctive element of the contested sign. The pronunciation differs in the sound of the letters ‛FOOD MADE BETTER’ of the contested mark, which are, however, weak and not dominant.
Therefore, the signs are highly similar.
Conceptually, the components ‘yello’ of the earlier mark and ‘yellow’ of the contested sign are pronounced identically and therefore convey the same meaning when perceived aurally, namely the colour between green and orange in the spectrum of visible light. In addition, the public in the relevant territory will perceive the elements ‘FOOD MADE BETTER’ of the contested mark as a laudatory slogan for a ‘higher quality of nourishment’. Finally, the public will perceive a fork and a spoon in the contested sign as a reference to food. As these meanings and the slogan are weak for the relevant services, the signs are conceptually highly similar as far as the meaning of the colour ‘yellow’ is concerned.
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 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.
- 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 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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 contested services are identical or similar to a low degree to the opponent’s goods and services. The level of attention is average for the relevant goods and services.
For the English-speaking public the differences between the signs are confined to weak elements such as ‘FOOD MADE BETTER’ or secondary aspects such as the graphic representation of the first verbal element ‘Yellow’ in the contested sign. As to the additional letter ‘w’ at the end of this element, this difference is also of secondary importance, because visually it does not catch the attention of the reader due to its position at the end of the sign. Furthermore, it has no aural impact and does not introduce a conceptual difference either.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 2 782 944. It follows that the contested trade mark must be rejected for all the contested services.
As the European Union trade mark registration No 2 782 944 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier mark invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
The applicant refers to search reports. However, search reports are computer-generated and they do not make any claim to be complete or correct.
Moreover, the applicant claims that the opponent’s actual activity is providing electricity and files evidence to support this claim. The Opposition Division points out that the comparison of goods and services has to be based on the goods and services protected by the opponent’s trade mark registration.
Finally, the applicant’s speculation as to the extent that genuine use could be provided by the opponent if its mark were subject to proof of use is irrelevant, since the earlier European Union trade mark registration No 2 782 944 is not subject to proof of use.
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.
The Opposition Division
Francesca CANGERI SERRANO
Begoña URIARTE VALIENTE
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.