DECISION

of the Fifth Board of Appeal

of 20 December 2016

In Case R 1112/2015-5

CELONA GASTRO GmbH
Ammerländer Heerstr. 255 26129 Oldenburg Germany	Cancellation Applicant / Appellant

represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft Mbb, Widenmayerstr. 23, 80538 München, Germany

v

Ian Chircop Beck
5, Eris Triq il-Qamh, Attard ATD 1763 Malta	EUTM Proprietor / Respondent

APPEAL relating to Cancellation Proceedings No 10 037 C (European Union trade mark registration No 9 996 621)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), A. Szanyi Felkl (Member) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 27 June 2011, Ian Chircop Beck (‘the EUTM proprietor’) sought to register the figurative declared the invalidity of

for the following list of goods and services:

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks & fruit juices; syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages;

Class 41 - Providing of training, entertainment;

Class 43 - Services for providing food and drink; temporary accommodation.

2. The application was published on 27 July 2011 and the mark was registered on 3 November 2011.

3. On 12 November 2014, CELONA GASTRO GmbH (‘the cancellation applicant’) filed a request for declared the invalidity of of the registered mark against part of the goods and services, namely:

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks & fruit juices; syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages;

Class 43 - Services for providing food and drink; temporary accommodation.

4. The grounds of the request for declared the invalidity of were those laid down in Article 53(1)(a) in conjunction with Article 8(1)(b) EUTMR.

5. The invalidity request was based on the following earlier rights:

• European Union trade mark registration No 4 645 503 ‘Café & Bar Celona’ (word mark), filed on 21 September 2005 and registered on 12 September 2006. The application is based on part of the earlier goods and services, namely ‘catering for guests’ in Class 43.

• German trade mark registration No 300 287 07 , filed on 13 April 2000 and registered on 27 June 2000. The application is based on part of the earlier goods and services, namely ‘catering for guests’ in Class 43.

• European Union trade mark registration No 4 284 642 , filed on 19 April 2005 and registered on 26 April 2006. The application is based on part of the earlier goods and services, namely ‘catering for guests’ in Class 43.

• German trade mark registration No 30 028 709 ‘BAR CELONA’ (word mark), filed on 13 April 2000 and registered on 6 June 2000. The application is based on part of the earlier goods and services, namely ‘catering for guests’ in Class 43.

6. By decision of 17 April 2015 (‘the contested decision’), the Cancellation Division declared the invalidity of the contested EUTM only for ‘services for providing food and drink; temporary accommodation’ in Class 43. The request for a declaration of invalidity was dismissed in respect of the remaining contested goods.

7. It gave, in particular, the following grounds for its decision:

• The contested goods in Classes 32 and 33 were found to be dissimilar to the services covered by the earlier rights. The mere fact that food and drinks are consumed in a restaurant is not enough reason to find similarity between them. As a result, the contested goods in Classes 32 and 33 have to be considered dissimilar to the services covered by the earlier rights.

• The contested ‘services for providing food and drink’ in Class 43 include, as a broader category, the earlier ‘catering for guests’. Since the Cancellation Division cannot dissect ex officio the broad category of the EUTM proprietor’s services, they are considered identical.

• In addition, the contested ‘temporary accommodation’ services in Class 43 are similar to the earlier ‘catering for guests’, since the latter are also provided not only by bars and restaurants but also by temporary accommodation establishments such as hotels that generally have restaurants and bars. Thus, consumers may well expect that both kinds of services may be provided by the same undertaking or by economically linked undertakings.

• The application is based on more than one earlier trade mark. For reasons of procedural economy, the Cancellation Division will focus the comparison of the signs on earlier German trade mark No 300 287 07 and, accordingly, the relevant territory is Germany.

• Visually, the signs are similar to the extent that they share the same words ‘CAFÉ’, ‘BAR’ and ‘CELONA’. They differ in their stylization, figurative elements, the ampersand of the earlier mark and in the position of their word elements.

• Aurally, the pronunciation of the marks coincides in the sequence of syllables ‛BAR’ and ‘CE/LO/NA’, present identically in both signs, and to that extent the marks are aurally similar. In addition, the pronunciation of the signs coincides in the sound of the word ‘CAFÉ’, although differently positioned. On the other hand, the pronunciation of the signs differs in the symbol ‛&’ in the earlier mark, which will be pronounced as ‘and’.

• Conceptually, the coinciding element ‘BAR’ is a word of foreign origin which has been incorporated into the German language and will be understood as referring to an establishment providing a particular range of food and alcoholic and non-alcoholic drinks. A very similar definition applies to the term ‘café’, common to both signs at issue, which is also commonly used by the German public to indicate a place selling light meals and drinks. It follows that the signs are conceptually linked insofar as they share the same meaning in relation to the concept of a place where consumers can order meals and drinks. The element ‘CELONA’ in both signs has no meaning in the German language.

• Moreover, it cannot be excluded that the sequence of the words ‘BAR’ and ‘CELONA’ might lead a part of the relevant public to perceive the marks under comparison as referring to the Spanish city of Barcelona. Therefore, in this case, both the signs will be linked to the concept of ‘Barcelona’.

• According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more of the visual, aural and conceptual aspects. This condition is fulfilled in the case at issue. On account of their visual, aural and conceptual similarities, the signs must be considered highly similar overall.

• The earlier mark has no element which could be considered more dominant (visually eye-catching) than other elements. In the contested EUTM, the word element ‘CELONA’ is the most eye catching element.

• As stated above, the terms ‘bar’ and ‘café’ will be understood as referring to places providing food and drink. Taking into account the nature of the relevant services in Class 43, these elements are devoid of distinctive character. Consequently, these non-distinctive elements play a secondary role when assessing the likelihood of confusion between the marks at issue.

• In addition, the combination of the elements ‘BAR’ and ‘CELONA’ could evoke a ‘café’ located in Barcelona. For the part of the public perceiving this association, the combination of the words ‘BAR’ and ‘CELONA’ will be considered weak in connection with the services at issue.

• However, since the figurative stylization of the signs provides for a clear division of the components ‘BAR’ and ‘CELONA’, it is likely that another part of the public will perceive ‘CELONA’ as an individual and independent element. In this case, in both signs, this denominative element will be considered more distinctive than the other verbal and figurative components.

• The cancellation applicant claimed that the earlier trade mark enjoys enhanced distinctiveness in light of the fact the sign has been genuinely used for catering services in the German territory since 2000. However, besides listing the opening years and location of several restaurants bearing the earlier mark, the cancellation applicant did not file any evidence to prove this claim. Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

• As stated above, the particular combination of the word elements included in the earlier sign can lead a part of the relevant public to understand the mark as referring to ‘a café or a bar in Barcelona’. For the part of the public perceiving this association, the mark is considered to be weakly distinctive for the services ‘catering for guests’.

• In any case, it must be noted that the assessment of the distinctive character of the earlier mark does not put into question its validity, but it is only necessary for taking into consideration all relevant factors for the global assessment of likelihood of confusion.

• Finally, in relation to the part of the public who will give more importance to the visual appearance of the sign and, consequently, perceive the element ‘CELONA’ as an individual and independent component, the inherent distinctiveness of the earlier mark must be seen as normal since ‘CELONA’ has no direct relation to the services at stake.

• In the present case, the services found to be identical and similar in Class 43 are directed at the average, reasonably well-informed and observant and circumspect consumer who, considering the everyday nature of the services involved, will pay an average level of attention when making use of these services.

• The contested goods and services were found to be partly identical, partly similar and partly dissimilar to the services covered by the earlier marks. No likelihood of confusion within the meaning of Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR can arise where the goods and services at issue are not at least similar to some degree. Therefore, the request for invalidity must be rejected for the contested goods in Classes 32 and 33 found to be dissimilar to the earlier services (see above).

• The comparison of the signs has shown that the marks share visual, aural and conceptual similarities. The differences between the signs are not likely to influence the consumer’s perception and do not put into question the overall similarity between the marks.

• Accordingly, the identity and similarity between the conflicting services and the high degree of similarity between the marks themselves, considered cumulatively, justify the conclusion that there is a likelihood of confusion.

• Given the visual, aural and conceptual similarity between the signs, the relevant public might believe that the services at issue come from the same undertaking or, as the case may be, from economically-linked undertakings.

• The Cancellation Division therefore considers that a likelihood of confusion exists for the relevant public with regard to the identical and similar services.

• As the remaining earlier rights invoked by the cancellation applicant cover the same scope of services as the German registration No 300 287 070, the outcome cannot be different for the goods for which the cancellation application has already been rejected based on their dissimilarity. Therefore, there is neither likelihood of confusion for those goods with regard to the remaining earlier marks.

8. On 9 June 2015, the cancellation applicant filed an appeal against the contested decision, requesting that the decision be partially set aside, as far as the goods in Classes 32 and 33 are concerned. The corresponding statement of grounds of the appeal was received on 10 July 2015.

9. No observations from the EUTM holder were received by the Office.

Submissions and arguments of the appellant

10. The arguments raised in the statement of grounds may be summarised as follows:

• The Cancellation Division erred in finding that the contested goods in Classes 32 and 33 are dissimilar to the earlier service ‘catering for guests’, whereas it is quite the opposite.

• The cancellation applicant submits several pictures exemplifying ‘the well-known market reality that producers of drinks also run catering establishments’. This reality is even more present in Germany, which is home to countless breweries. German consumers are thus familiar with establishments which provide food and drink.

• Highly similar signs for ‘beers’ and ‘catering for guests’ constitute a typical reason for the public to assume ‘economically-linked undertakings’; this might cause a likelihood of confusion.

• The same conclusion must be drawn for all the other contested goods in Classes 32 and 33.

Reasons

11. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 to 49 CTMIR. It is, therefore, admissible.

12. The appeal is also well founded. The Board’s reasons are outlined hereunder.

Preliminary remarks

13. For the sake of consistency, the Board will follow the Cancellation Division’s approach by first taking into account the earlier German trade mark registration No 300 287 07 (‘the earlier mark considered’).

14. Furthermore, the Board will, to the extent necessary, assess the other earlier rights.

Article 53(1)(a) in conjunction with Article 8(1)(b) EUTMR

15. Under Article 53(1)(a) EUTMR, an EU trade mark is to be declared invalid on application to Office where there is an earlier trade mark as referred to in Article 8(2) of that Regulation and, inter alia, the conditions set out in Article 8(1)(b) of that Regulation are fulfilled. Under that latter provision, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) EUTMR, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

16. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited).

The relevant public

17. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

18. Given that the earlier mark considered is a German registration, there is no dispute that in the present case the relevant consumers include average members of the general public in Germany, who are ‘reasonably well informed, reasonably observant and circumspect’ (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited).

Comparison of the signs

19. The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, ‘Limoncello’, EU:C:2007:333, § 35 and the case-law cited).

20. It is undisputed by the parties that the signs, taken as a whole, are visually, aurally and also conceptually similar since they share the same letter sequence ‘B-A-R-C-E-L-O-N-A’ and the expression ‘CAFÉ’.

21. In that regard, the Board, in order to avoid unnecessary repetition, refers to the comparison and analysis contained in the contested decision with which it fully concurs.

Comparison of the goods and services

22. In assessing the similarity of the opposing goods and services, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, the nature, the intended purpose and the method of use of the goods or services in question and whether they are in competition with each other or are complementary (29/9/1998, C-39/97, Canon, EU:C:1998:442, § 23). It comes down to whether the relevant public may perceive the relevant products and services as having a common commercial origin (4/11/2003, T-85/02, Castillo, EU:T:2003:288, § 32, 38) and whether the consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11/7/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

23. The appeal concerns the following contested goods:

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks & fruit juices; syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages.

24. The services covered by the earlier mark considered are ‘catering for guests’ in Class 43.

25. The contested goods are either alcoholic or soft drinks or preparations necessarily used in the mixing of drinks. The earlier ‘catering’ services involve providing paying guests with food and drink, with the result that the contested goods are complementary to the earlier services. Furthermore, drinks may be offered for sale in places in which food and drink are served. Such goods are therefore used and offered in restaurants, pubs, cafés and are also part of catering services. The goods and services are consequently closely connected (see, by analogy, 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46; 13/04/2011, T-345/09, Puerta de Labastida, EU:T:2011:173, § 52).

26. Nowadays it is very common that restaurants not only sell but also produce their own beverages, as, for instance, beers (in-house micro-breweries) or freshly-squeezed juices, smoothies and cocktails.

27. Therefore, there is a certain degree of similarity between the goods under appeal and the services relating, amongst others, to the serving of drinks covered by the earlier mark considered (see, by analogy, 18/02/2016, T-711/13 and T-716/13, HARRY´S BAR / PUB CASINO Harrys RESTAURANT, EU:T:2016:82,
    § 59 60).

28. As a result, the cancellation applicant’s line of argument as regards a certain degree of similarity between those goods and services must be endorsed.

Overall assessment

29. A likelihood of confusion on the part of the public must be assessed globally, and that global assessment implies some interdependence between the factors taken into account and in particular similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

30. The more distinctive the earlier trade mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

31. The distinctiveness of the earlier mark considered, taken as a whole, is not particularly high in connection with ‘catering for guests’. Despite this circumstance, the Board finds that the marks are confusingly similar within the meaning of Article 8(1)(b) EUTMR also for the goods in conflict.

32. Indeed, in addition to recognising a minimum distinctive character of the earlier mark considered, the Board, in contrast to the Cancellation Division’s opinion, has found that, pursuant to the recent case-law of the Court (18/02/2016, T‑711/13 and T-716/13, HARRY´S BAR / PUB CASINO Harrys RESTAURANT, EU:T:2016:82), the conflicting goods are similar to a certain degree to the earlier services. Furthermore, the finding of the Cancellation Division that the marks compared are highly similar in view of their visual, aural and conceptual similarities, has not been put in issue in the appeal proceedings. Nevertheless, for the sake of completeness, the Board confirms the findings of the contested decision in this regard.

33. Considering all the above, and given the average level of attention of the relevant public a likelihood of confusion exists in relation to the goods under appeal. This may be all the more probable if the consumer, as will often be the case, is not able to compare the marks side-by-side but must instead rely upon his or her imperfect recollection. Thus, the request for declared the invalidity of is well founded for those contested goods.

34. It follows that the appeal is upheld.

Costs

35. Since the EUTM proprietor is the losing party within the meaning of Article 85(1) EUTMR, it must bear the fees and representation costs pursuant to Article 85(6) EUTMR. It follows that it must bear the appeal fee of EUR 800, the cancellation fee of EUR 700, the cancellation applicant’s representation costs in the appeal proceedings and in the cancellation proceedings of the amount of EUR 550 and EUR 450, respectively, as specified in Rule 94(7)(d) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Upholds the appeal;

2. Partially annuls the contested decision to the extent that it rejected the invalidity request for:

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks & fruit juices; syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages;

3. Declares the EUTM invalid for all the contested goods and services, namely:

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks & fruit juices; syrups and other preparations for making beverages;

Class 33 - Alcoholic beverages;

Class 43 - Services for providing food and drink; temporary accommodation;

4. Orders the EUTM proprietor to bear EUR 2 500 in respect of the cancellation applicant’s fees and costs in the appeal and cancellation proceedings.

Signed G. Humphreys

Signed A. Szanyi Felkl

Signed A. Pohlmann

Registrar: Signed H. Dijkema