OPPOSITION No B 2 515 198

Aktiebolaget Anders Löfberg, Box 1501, 65121 Karlstad, Sweden (opponent), represented by Von Lode Advokat AB, Årstaängsvägen 21 C, 100 74 Stockholm, Sweden (professional representative)

a g a i n s t

Firas Kamourieh, 120 New Cavendish Street, London W1W 6XX, United Kingdom (applicant), represented by The Trademark Helpline, Peter House, Oxford Street, Manchester, Manchester M1 5AN, United Kingdom (professional representative).

On 27/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 515 198 is partially upheld, namely for the following contested goods and services:

Class 30: Cakes; Chocolate cake; Cream cakes; Fruit cakes; Iced cakes; Sponge cakes; Pastries; Fruit pastries; Tarts; Sandwiches; Prepared meals; Ready meals; Chilled ready meals and snacks; Chocolate; Confectionery.

Class 43: Services for providing food and drink; Restaurants; Restaurant reservation services; Carry-out restaurants; Fast-food restaurants; Bar services; Café services; Catering; Takeaway services; Information advisory and consultancy relating to all aforesaid services.

2. Community trade mark application No 13 627 302 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 627 302. The opposition is based on Community trade mark registration No 4 923 819. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

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

Class 21: Tea strainers, not of precious metal, tea mugs, tea cups, tea services not of precious metal, teapots not of precious metal, tea infusers not of precious metal.

Class 30: Coffee, coffee-based beverages, tea, iced tea, tea-based beverages.

Class 43: Services providing food and drink, self-service restaurants, restaurants, cafés, canteens.

The contested goods and services are the following:

Class 30: Cakes; Chocolate cake; Cake preparations; Cream cakes; Fruit cakes; Iced cakes; Sponge cakes; Candy cake decorations; Flavourings for cakes; Pastries; Fruit pastries; Tarts; Sandwiches; Prepared meals; Ready meals; Chilled ready meals and snacks; Chocolate; Confectionery.

Class 43: Services for providing food and drink; Restaurants; Restaurant reservation services; Carry-out restaurants; Fast-food restaurants; Bar services; Café services; Catering; Takeaway services; Information advisory and consultancy relating to all aforesaid services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 goods in Class 30

The contested cakes; chocolate cake; cream cakes; fruit cakes; iced cakes; sponge cakes; pastries; fruit pastries; tarts; sandwiches; prepared meals; ready meals; chilled ready meals and snacks; chocolate; confectionery are similar to a low degree to the opponent’s services providing food and drink in Class 43. The market reality shows that some producers of foodstuffs and/or drinks also provide restaurant services under their brand (e.g. coffee and the producers’ coffee shops). Therefore, it is not unusual that the same producer of the applicant’s goods in Class 30 also provide the opponent’s services in Class 43 (04/06/2015, T‑562/14, YOO/YO, EU:T:2015:363, § 25, 26, 27). These goods and services are complementary, have the same distribution channels and could also be provided or manufactured by the same kind of undertakings.

The contested cake preparations; candy cake decorations; flavourings for cakes have nothing in common with the opponent’s goods in Class 30. They have different natures and commercial origins, they serve different purposes and are aimed at different end users. The applicant’s goods also have nothing in common with the opponent’s goods in Class 21, as they have different commercial origins, purposes and methods of use. They do not have the same distribution channels and they are neither in competition nor complementary. In addition, the contested goods are clearly dissimilar to all the opponent’s services in Class 43 as they differ in nature, purpose and distribution channels/producers and are not in competition. Therefore, the applicant’s goods are dissimilar to all the opponent’s goods and services.

Contested services in Class 43

Services for providing food and drink; restaurants; café services are identically contained in both lists of goods and services (including synonyms).

The contested carry-out restaurants; fast-food restaurants; bar services; catering; takeaway services are included in the broad category of the opponent’s services providing food and drink. Therefore, they are identical.

The contested restaurant reservation services; information advisory and consultancy relating to all aforesaid services (namely services for providing food and drink; restaurants; restaurant reservation services; carry-out restaurants; fast-food restaurants; bar services; café services; catering; takeaway services) are carried out by the same undertakings as the opponent’s restaurants. The providers, distribution channels and relevant public coincide and the services in question are frequently rendered in combination with each other. Therefore, they are similar to a high degree.

2. The signs

Time for T	T-Time by T
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, both signs are word marks. The earlier mark consists of the expression ‘Time for T’. The contested sign consists of the expression ‘T-Time by T’ with a hyphen between the first letter ‘T’ and the word ‘Time’. The signs are similar to the extent that they coincide in the word ‘Time’ and in their last letter, ‘T’. However, they differ in the additional first letter ‘T’ and in the hyphen in the contested sign. They also differ in the prepositions placed between the word ‘Time’ and the last letter ‘T’ in each mark, namely ‘for’ in the earlier mark and ‘by’ in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the verbal element ‛Time’ and the last letter ‘T’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the first additional letter ‘T’ and the preposition ‘by’ in the contested sign and in the sound of the preposition ‘for’ in the earlier mark. The hyphen in the contested sign will not be pronounced.

Conceptually, for a part of the relevant public, namely the non-English-speaking public, neither of the signs has a meaning. The letter ‘T’ stands alone in both marks and the hyphen in the contested sign will be perceived as such. For that part of the public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the English-speaking public the signs are similar to the extent that they coincide in the concept of ‘Time’, perceived, inter alia, as ‘the continuous passage of existence in which events pass from a state of potentiality in the future, through the present, to a state of finality in the past’ (information extracted from Collins English Dictionary on 14/01/2016 at http://www.collinsdictionary.com/dictionary/english/time). In addition, owing to the position and the pronunciation of the single letters ‘T’ (namely /tiː/) in the expressions ‘Time for T’ in the earlier mark and ‘T-Time’ in the contested sign, the English-speaking part of the public will perceive them as referring to ‘tea’ (which is also pronounced /tiː/). Therefore, the English-speaking public will perceive the expressions ‘Time for T’ in the earlier mark and ‘T-Time’ in the contested sign as ‘Time for tea’ and ‘Tea-Time’, both referring to the time for an evening meal but also, in the more general sense, a time for having a cup of tea. The word ‘by’ in the contested sign will be understood as an English preposition meaning the source of something, as it is considered a basic English word. Given the fact that this element is followed by the letter ‘T’, and assuming that the expression ‘T-Time by T’ is read as a whole, it will thus be understood as specification that the ‘T-Time’ originates/is made ‘by’ someone/something called ‘T’.

It follows from the above that the signs are conceptually similar to the extent that they both refer to the time for an evening meal but also, in the more general sense, a time for having a cup of tea for the part of the public that understands all the concepts. Since the signs will be associated with a similar meaning by part of the public, the signs are conceptually similar to that extent.

Taking into account the abovementioned visual, aural, and conceptual coincidences for a part of the public, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The elements ‘Time for T’ in the earlier mark and ‘T-Time’ in the contested sign will be perceived by the English-speaking part of the relevant public as referring to the time for an evening meal but also, in the more general sense, a time for having a cup of tea. Bearing in mind that some of the relevant services relate to the ‘providing of food and drink’, it is considered these elements are weak for some of these services, namely for ‛services providing food and drink, self-service restaurants, restaurants, cafés, canteens’ in Class 43 of the earlier mark and for ‘services for providing food and drink; restaurants; fast-food restaurants; bar services; café services; catering; takeaway services; information advisory and consultancy relating to all aforesaid services’ in Class 43 of the contested sign. The part of the relevant public that understands the meaning of these elements will not pay as much attention to these weak elements as to the other, more distinctive, elements of the marks (if any). Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue. However, for the remaining part of the public that does not understand the meaning of these elements, they are of normal distinctiveness.

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

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 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, despite the presence of some weak elements in the mark for a part of the relevant public as stated above in section c) of this decision.

5. 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 various degrees are directed at the public at large. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at dissimilar goods cannot be successful.

The marks are visually and aurally similar as they coincide in the word ‘Time’ and the last letter, ‘T’, which are two out of the three verbal elements of the earlier mark fully reproduced in the contested sign. Furthermore, since the word that the signs have in common, ‘Time’, is in both marks followed by a preposition and by the letter ‘T’, which stands alone at the end of the marks, the signs also have the same visual structure in the expressions ‘Time for T’ and ‘Time by T’. From a conceptual perspective, the signs lack any meaning for a part of the public that will not associate them with any concept. However, they are conceptually similar for an English-speaking part of the relevant public, which will associate them with a concept related to the time for an evening meal but also, in the more general sense, a time for having a cup of tea.

Consumers tend to remember similarities rather than differences between marks. Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Bearing in mind the above, owing to the overall similarity of the signs, there is a likelihood of confusion.

The fact that the marks differ in the additional first letter ‘T’ with a hyphen in the contested sign and in the prepositions ‘for’ of the earlier mark and ‘by’ of the contested sign is not sufficient to offset the overall similarity of the signs. Similarly, the marks contain elements that are weak for a part of the public and cannot dispel the similarity of signs, as they will still be perceived to be of normal distinctiveness by the remaining part of the relevant public, which will not perceive any meaning in them.

Since the differences between the signs are not capable of offsetting the clear similarity of the marks, and considering that a part of the public will not associate the signs with any concept that will assist them to distinguish between the marks, it is considered that the relevant public might believe that goods and services identical or similar to various degrees come from the same undertaking or economically-linked undertakings. This is more true when it is considered that the public displays an average degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

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 various degrees to those of the earlier trade mark.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 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

Konstantinos MITROU

Karin KUHL

Ewelina ŚLIWIŃSKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.