OPPOSITION No B 2 442 799

Europastry S.A., Plaza Xavier Cugat, 2 Edificio C, planta 4 Parc. S. Cugat, 08190 Sant Cugat del Vallés (Barcelona), Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Bernard Ehret Design (société à responsabilité limitée), 18 rue de Dachstein, 67120 Molsheim, France (applicant), represented by Cabinet Meyer & Partenaires, Espace Européen de l’Entreprise, 2 rue de Dublin, 67300 Schiltigheim, France (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 442 799 is partially upheld, namely for the following contested services:

Class 35: Business management and organization consultancy; business administration; business management; franchising, namely providing of technical assistance in the establishment and/or operation of restaurants, cafés, cafeterias, snack-bars and hotels; retailing of coffee, tea, cocoa, ices, beers, mineral and aerated waters, fruit juices, syrups, alcoholic beverages (except beers); retailing of prepared and cooked foodstuffs based on meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, fresh fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products; administration of a customer loyalty reward program; shop window dressing; rental of advertising space.

Class 43: Services for providing food and drink; bar services; cafeterias; cafeterias; canteens; hotel services; self-service restaurants; snack-bars; catering; preparing and serving food and drink.

2. European Union trade mark application No 13 246 004 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 246 004. The opposition is based on European Union trade mark registrations No 10 768 992 and No 12 884 656. 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 10 768 992.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 30: Bread, bakery and pastry products and frozen bread, bakery and pastry products, not including cocoa and ice cream.

Class 35: Wholesaling and retailing in shops of bread, pastry and confectionery, not including cocoa and ice cream; commercial management assistance in relation to franchises; advertising, marketing and publicity promotions; advertising statements or announcements to the public, by any means of dissemination, advertising information and dissemination; import-export agencies; wholesaling and retailing in shops, via sales catalogues, by mail order or by electronic media, including via websites, of bread, pastry and confectionery, not including cocoa and ice cream.

Class 43: Cafeterias offering tasting facilities.

The contested services, after a limitation, are the following:

Class 35: Business management and organization consultancy; business administration; business management; franchising, namely providing of technical assistance in the establishment and/or operation of restaurants, cafés, cafeterias, snack-bars and hotels; retailing of coffee, tea, cocoa, ices, beers, mineral and aerated waters, fruit juices, syrups, alcoholic beverages (except beers); retailing of prepared and cooked foodstuffs based on meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, fresh fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products; administration of a customer loyalty reward program; shop window dressing; rental of advertising space.

Class 43: Services for providing food and drink; bar services; cafeterias; cafeterias; canteens; hotel services; hotel reservations; self-service restaurants; snack-bars; catering; preparing and serving food and drink.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested business management and organization consultancy; business management include as a broader category the opponent’s commercial management assistance in relation to franchises. Since the Opposition Division cannot dissect ex officio the broader category of the contested services, they are considered identical.

The contested franchising, namely providing of technical assistance in the establishment and/or operation of restaurants, cafés, cafeterias, snack-bars and hotels overlap with the opponent’s commercial management assistance in relation to franchises. Since the Opposition Division cannot clearly differentiate the two categories, they are considered identical.

The contested shop window dressing; rental of advertising space are included in the broad category of the opponent’s advertising, marketing and publicity promotions. Therefore, they are identical.

The contested business administration; administration of a customer loyalty reward program have some connection with the opponent’s import-export agencies. This is because they are likely to be performed by the same service providers and through the same distribution channels. In addition, they may target the same relevant public. Therefore, they are similar.

The contested retailing of coffee, tea, cocoa, ices, beers, mineral and aerated waters, fruit juices, syrups, alcoholic beverages (except beers); retailing of prepared and cooked foodstuffs based on meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, fresh fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products have strong similarities with the opponent’s wholesaling and retailing in shops of bread, pastry and confectionery, not including cocoa and ice cream. This is because retail services relating to specific goods are considered similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison have the same nature, since both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use. Furthermore, the goods in question are commonly retailed in the same outlets, namely shops and supermarkets, and they may coincide in relevant public. Therefore, they are considered similar.

Contested services in Class 43

The contested cafeterias (listed twice) include as a broader category the opponent’s cafeterias offering tasting facilities. Since the Opposition Division cannot dissect ex officio the broader category of the contested services, they are considered identical.

The contested services for providing food and drink; preparing and serving food and drink include, as broader categories, the opponent’s cafeterias offering tasting facilities. Since the Opposition Division cannot dissect ex officio the broader categories of the contested services, they are considered identical.

The contested bar services; canteens; self-service restaurants; snack-bars; catering overlap with the opponent’s cafeterias offering tasting facilities. These categories of services cannot be clearly separated, as each of the contested categories may also include cafeteria facilities. Therefore, they are considered identical.

The contested hotel reservations are dissimilar to all of the goods and services of the earlier mark. The goods and services are of a different nature and have a different purpose. Hotel reservations are services for providing temporary accommodation and are provided by specialised agencies, whereas the opponent’s services in Class 43 consist of the provision of food and drinks in cafeterias. The opponent’s goods in Class 30 are foodstuffs prepared for consumption or conservation. They are often provided by different undertakings and through different distribution channels (cafeterias, bakeries). The opponent’s services in Class 35 are retail, advertising and business management services, which have nothing in common with the contested hotel services. They are services that provide assistance to others in the sale of their goods and services by promoting their launch. Hotel reservation services are often rendered by travel agencies or booking websites. Moreover, the goods and services are neither complementary nor in competition.

2. 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, some of the services found to be identical or similar are directed at the public at large (e.g. services for providing food and drink and cafeterias) while some of them are specialised services directed at business customers with specific professional knowledge (e.g. business management and organization consultancy; business management). The degree of attention may vary from average to high.

3. The signs

	DOT-DROPS CAFÉ
Earlier trade mark	Contested sign

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 figurative mark, consisting of the words ‘dots Original’, written in stylised typefaces, with the word ‘dots’ in red. The first word of the earlier mark, ‘dots’, will be associated by the relevant public with ‘a small round mark or spot’ (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com), having no meaning with regard to the relevant services. Therefore, its distinctiveness will be seen as normal. The word ‘Original’ of the earlier sign will be perceived as ‘present or existing from the beginning’ or ‘inventive or novel’ (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com). As it may be associated with either the origin or the qualitative characteristics of the services in question its distinctiveness is weak. Therefore, the more distinctive element of the earlier sign is the word ‘dots’.

The contested sign is a word mark, consisting of the words ‘DOT-DROPS CAFÉ’. As mentioned above, the word ‘DOT’ (which will be perceived by the relevant public as the singular of ‘dots’ of the earlier mark) lacks meaning in relation to the services in question and has a normal degree of distinctiveness. The word ‘drops’ will be associated with, inter alia, ‘a small, round sweet or lozenge’ (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com). Bearing in mind the relevant services (cafeterias; bar services; provision of food; canteens; business management; business administration; rental of advertising space; shop window dressing), the distinctiveness of this element with regard to these services is normal. Moreover, the fact that this element is joined by a hyphen to the ‘DOT’ element of the contested sign will not go unnoticed by the relevant public, as hyphens are commonly used in English. However, even if the element ‘DOT-DROPS’ is perceived as being combined in this way, it has no meaning in relation to the services in question and, therefore, its distinctiveness will be seen as normal.

The word ‘CAFÉ’ of the contested sign will be perceived as ‘a small restaurant selling light meals and drinks’ (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com). For the majority of the relevant services (cafeterias; bar services; provision of food; canteens; hotel services; self-service restaurants; snack-bars; catering; services for providing food and drink) this element is non-distinctive, as it describes their nature, that is places for providing food and drinks. For the remaining services, for which it has no meaning, its distinctiveness is normal.

The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the element ‘DOT’. They differ in the additional letter, ‘s’, at the end of this element of the earlier sign. However, the elements ‘dot’ and ‘dots’ will be perceived as the same word in its plural and singular forms. The signs also differ in the additional word ‘Original’ of the earlier sign, but the distinctiveness of this element is weak for all the services in question. The signs also differ in the presence of the other two verbal elements, ‘DROPS’, which has a normal degree of distinctiveness for the relevant services, and ‘CAFÉ’, which is non-distinctive for some services. The signs also differ in the presence of the hyphen in ‘dot-drops’ of the contested sign. However, it will be perceived as only a fanciful element, as ‘dot-drops’ does not have any meaning for the relevant public.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DOT’, present identically in both signs. The pronunciation differs in the sound of the letter ‘s’ at the end of the word ‘dots’ of the earlier sign and in the words ‘Original’ of the earlier mark and ‘DROPS’ and ‘CAFÉ’ of the contested mark.

Therefore, the signs are similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘DOT’ and ‘dots’ will be associated with ‘a small round mark or spot’, as explained above. The distinctiveness of these elements in relation to the services in question is normal. The element ‘DROPS’ has a normal degree of distinctiveness for the services regardless of whether it is perceived as an independent verbal element or joined to the first verbal element ‘DOT’ of the contested sign.

The remaining elements of the signs – ‘Original’ of the earlier sign and ‘café’ of the contested one – have weak distinctiveness, or are non-distinctive, for either all or some of the services in question. As these elements have different concepts and the signs coincide in their most distinctive elements, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services are partly identical and similar and partly dissimilar.

The signs are visually and conceptually similar to an average degree and aurally similar to a low degree.

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods covered. Accordingly, a lesser degree of similarity between these 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). In the present case, the majority of the services are identical.

It has been established that the earlier mark has normal distinctiveness in relation to the services in question.

For the purpose of the global appreciation, the average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

The relevant public for the services in question includes the public at large and the professional public. The degree of attention may vary from average to high.

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 services covered are from the same undertaking or economically linked undertakings, and in the present case the contested sign could be perceived by the public as a variant of the earlier mark intended for a specific range of services. The visual, aural and conceptual similarity between the signs is triggered by the distinctive words ‘dots’ and ‘DOT’, which play an independent distinctive role in both signs. Moreover, the element the signs have in common is placed at the beginning of the signs. Furthermore, the additional verbal element of the earlier mark, ‘Original’, is weak in relation to the services in question. Therefore, the only distinctive element of the earlier mark is the element the signs have in common, ‘dot’/‘dots’.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘dot’. In support of its argument, the applicant refers to several trade mark registrations in France, Germany, Italy and Greece.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. In addition, the majority of the services for which the trade marks are registered are different from the ones in the present case and some of the marks have already expired. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘dot’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking part of the public. Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 768 992. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 12 884 656 for the figurative mark . However, since this mark covers the same scope of goods and services, the outcome cannot be different with respect to the services for which the opposition has already been rejected in Class 43. Therefore, no likelihood of confusion exists with respect to those dissimilar services.

COSTS

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Liliya YORDANOVA

Gueorgui IVANOV

Richard WASLEY

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.