OPPOSITION No B 2 602 103

Mas Xarcuters, S.L., Av. Diagonal, Núm. 445-447, 6è 2ª, 08036 Barcelona, Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Falcamar - Com.Mariscos LDA, Rua do Convívio, Nº 42 Mindelo, 4485 518 Vila do Conde, Portugal (applicant), represented by Álvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative).

On 31/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 602 103 is partially upheld, namely for the following contested goods and services:

Class 29: Short-necked clams [not live]; clams, not live; abalones [not live]; ark-shells [not live]; prawns, not live; shrimps, not live; escargots; cooked snails; prepared snails [escargot]; crab; shellfish, not live; frozen shellfish; squid [prepared]; lobsters, not live; crayfish, not live; spiny lobsters, not live; spiny lobsters; shelled prawns; dried prawns; crustaceans, not live; prepared entrees consisting primarily of seafood; crabs [not live]; oysters, not live; oysters [not live, for human consumption]; non-living molluscs; mussels, not live; blue mussels [not live]; sea foods; processed seafood; seafood [not live]; seafood products; octopuses [not live].

Class 35: Retail services relating to food; wholesale services in relation to seafood.

Class 43: Restaurant services.

2. European Union trade mark application No 14 104 103 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 35: Advertising; radio and television advertising; procurement services for others [purchasing goods and services for other businesses]; provision of an on-line marketplace for buyers and sellers of goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 104 103. The opposition is based on Spanish trade mark registration No 2 778 479. 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.

1. The goods and services

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

Class 29: Meat, fish, poultry and game; meat extracts; canned fruits and vegetables, dried and cooked; jellies, jams, compotes; sausages; eggs, milk and milk products; edible oils and fats.

The contested goods and services are the following:

Class 29: Short-necked clams [not live]; clams, not live; abalones [not live]; ark-shells [not live]; prawns, not live; shrimps, not live; escargots; cooked snails; prepared snails [escargot]; crab; shellfish, not live; frozen shellfish; squid [prepared]; lobsters, not live; crayfish, not live; spiny lobsters, not live; spiny lobsters; shelled prawns; dried prawns; crustaceans, not live; prepared entrees consisting primarily of seafood; crabs [not live]; oysters, not live; oysters [not live, for human consumption]; non-living molluscs; mussels, not live; blue mussels [not live]; sea foods; processed seafood; seafood [not live]; seafood products; octopuses [not live].

Class 35: Retail services relating to food; wholesale services in relation to seafood; advertising; radio and television advertising; procurement services for others [purchasing goods and services for other businesses]; provision of an on-line marketplace for buyers and sellers of goods and services.

Class 43: Restaurant services.

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 29

The contested short-necked clams [not live]; clams, not live; abalones [not live]; ark-shells [not live]; prawns, not live; shrimps, not live; crab; shellfish, not live; frozen shellfish; squid [prepared]; lobsters, not live; crayfish, not live; spiny lobsters, not live; spiny lobsters; shelled prawns; dried prawns; crustaceans, not live; prepared entrees consisting primarily of seafood; crabs [not live]; oysters, not live; oysters [not live, for human consumption]; mussels, not live; blue mussels [not live]; sea foods; processed seafood; seafood [not live]; seafood products; octopuses [not live] are all crustaceans or water molluscs included in the broad category of the opponent’s fish. Therefore, they are considered identical.

The contested escargots; cooked snails; prepared snails [escargot]; non-living molluscs are all molluscs that may live in the water. As such, they overlap with the broad category of the opponent’s fish. Therefore, they are deemed to be identical.

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. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35. Therefore, the contested retail services relating to food; wholesale services in relation to seafood are similar to a low degree to the opponent’s fish, which is the general category.

The contested advertising; radio and television advertising consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. The contested procurement services for others [purchasing goods and services for other businesses] consist in providing others with assistance in the purchasing of their goods and services. The contested provision of an on-line marketplace for buyers and sellers of goods and services consist in providing sale facilities for others. Therefore, the aforementioned services are dissimilar to the opponent’s food products in Class 29. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. They have different origins and are distributed or provided through different channels to different customers. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Contested services in Class 43

The contested restaurant services are essentially intended to serve food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not enough reason to find similarity between them. Nevertheless, in certain situations, these goods and services can be complementary (17/03/2015, T‑611/11 Manea Spa EU:T:2015:152, § 52; 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. This is the case when the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark. In such cases, there is a low degree of similarity.

In the present case, there are certain connections between the contested restaurant services and the opponent’s goods in Class 29. Indeed, the market reality shows that some manufacturers of foodstuffs and/or drinks also offer services for providing food and drinks under their trade marks, such as coffee and the producers’ coffee shops or ice cream and the makers’ ice cream parlours. The same principle applies to the contested restaurant services and the opponent’s fish in Class 29, as some fishmongers offer their customers a selection of fish or other seafood either to take away or to be cooked and eaten on the premises. Therefore, the goods and services in question coincide in their distribution channels and must be regarded as complementary. Furthermore, they originate from the same producers/providers. Therefore, they are considered similar to a low degree.

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, the goods and services found to be identical and similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

MAS GOURMETS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is the word mark ‘MAS GOURMETS’.

In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case.

The contested sign is a figurative mark composed of the verbal element ‘Mar Gourmet’ written in grey letters with various figurative elements above, namely two shells, a mussel, a purple starfish and three wavy blue lines.

The verbal element ‘Gourmet’ in the contested sign and its plural form ‘GOURMETS’ in the earlier mark will be perceived by the relevant public as referring to one or more connoisseurs of good food or drinks, or to the food or drinks suitable for such persons. Bearing in mind that the relevant goods in Class 29 and the relevant services in Classes 35 and 43 are all food products or food-related services, the aforementioned verbal elements are considered to have a low degree of distinctiveness in relation to the relevant goods and services for the Spanish-speaking public.

Moreover, the earlier mark, ‘MAS GOURMETS’, taken as a whole will be understood by the Spanish-speaking public as meaning ‘more gourmets’. As the opponent’s relevant goods are food products, the Spanish-speaking public will perceive the earlier mark as a slogan referring to the higher quality of the food that could be sold under the aforementioned sign. As a result, the earlier mark as a whole appears laudatory and possesses a low degree of distinctiveness.

The verbal element ‘Mar’ in the contested sign is the Spanish word for ‘sea’. Bearing in mind that the contested goods in Class 29 are all seafood products and that the contested services in Classes 35 and 43 are directly related to food or seafood, the aforementioned verbal element is considered to have a low degree of distinctiveness in relation to these goods and services for the relevant public.

Likewise, all the figurative elements in the contested sign relate to the marine world, namely three stylised waves, two shells, a mussel and a starfish. Therefore, the stylised waves and the starfish have a low degree of distinctiveness in relation to the relevant goods and services for the Spanish-speaking public. The two shells and the mussel are descriptive in relation to the contested goods and services, given that they themselves are edible seafood and they are mentioned in the list of the contested goods in Class 29.

Neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs each possess two verbal elements, each differing from its equivalent in the other sign by one letter placed at the end. As a result, the signs coincide in the sequence of letters ‘MA* GOURMET*’.

In this regard, the signs differ owing to the final consonant of their first word, namely ‘S’ in the earlier mark and ‘R’ in the contested sign. That being said, the first letters, ‘MA’, of the signs 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.

Moreover, although the signs differ due to the additional consonant ‘S’ at the end of the second verbal element in the earlier mark, this differing letter has only a low impact on the visual comparison. This is because of its position and the fact that it will only be seen as an indication that the word ‘gourmet’ is in its plural form.

The signs also differ due to the figurative elements in the contested sign, although some of them are distinctive to a low degree and some are descriptive for the relevant goods and services. Moreover, 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 figurative elements have less visual impact than the verbal element ‘MAR GOURMET’ in the contested sign.

In the light of the foregoing, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /M/A/*/G/O/U/R/M/E/T/.

The pronunciation of the signs differs in the sound of the final consonant of the first verbal element, namely ‘MAS’ in the earlier mark and ‘MAR’ in the contested sign. Although the signs also differ due to the additional consonant ‘S’ at the end of the second verbal element of the earlier mark, this differing letter has a limited impact on the aural comparison.

Consequently, because of the coincidence in the sequence and order of all the letters, except for the two placed at the end of each verbal element, the signs have a very similar rhythm and intonation, ‘MAS GOURMETS’ and ‘MAR GOURMET’. Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the verbal elements ‘GOURMETS’ in the earlier mark and ‘Gourmet’ in the contested sign as referring to one or more connoisseurs of good food or to the food suitable for such persons.

The verbal element ‘MAS’ in the earlier mark will be understood by the public as the Spanish equivalent for ‘more’. Therefore, the earlier mark as a whole will refer to the idea of ‘better food than elsewhere’.

As seen above, the verbal element ‘Mar’ in the contested sign is the Spanish word for ‘sea’. The figurative elements in the contested sign all evoke the marine world and some of them (the shells and the mussel) are descriptive of some of the relevant goods.

In view of the foregoing, the signs are conceptually similar to an average degree to the extent that they both refer to the concept of ‘gourmet’.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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).

In the present case, the relevant public is the Spanish-speaking general public with an average degree of attention.

The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the opponent’s goods.

As a preliminary remark, the earlier mark as a whole is laudatory and has a low degree of distinctiveness. Similarly, all of the verbal and figurative elements of the contested sign have a low degree of distinctiveness.

In this context, the coincidence between the signs in the sequence of letters ‘MA* GOURMET*’ leads to visual and conceptual similarities, as well as a high degree of aural similarity. As seen above, the differing letters (only two, placed at the end of each verbal element) and the figurative elements in the contested sign are not sufficient to counteract the abovementioned similarities.

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish 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 a low degree 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 services cannot be successful.

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 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

Loreto URRACA LUQUE

Marta GARCÍA COLLADOMarion GAILLARD

Vít MAHELKA

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.