OPPOSITION Nо B 2 655 317

 

Gionas Georgios, Leoforos syggrou 36-38, 11742 Athens, Greece (opponent), represented by Maria Kontou, Asklipiou 26, 10680 Athens, Greece (professional representative) 

 

a g a i n s t

 

GGY Intellectual Property, LLC, 450 N. Bedford Dr., Suite 206, 90210 Beverly Hills, CA, United States of America (applicant), represented by Evangelia Christoforakou, 125 Solonos Street, 106 78 Athens, Greece (professional representative).

On 16/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 655 317 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 14 788 401 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 650.

 

REASONS

 

On 15/02/2016, the opponent filed an opposition against all the goods and services of European Union trade mark application No 14 788 401 (figurative mark), namely against all the goods and services in Classes 29, 35 and 43. The opposition is based on European Union trade mark registrations No 10 437 011 and No 13 062 047, both for (figurative mark). The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 8(5) 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.

a) The goods and services

 

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

European Union trade mark registration No 10 437 011 (hereinafter earlier mark 1), following a partial revocation (decision of 26/02/2020 in Cancellation No 21 428 C):

Class 21: Mugs.

Class 29: Edible oils.

European Union trade mark registration No 13 062 047 (hereinafter earlier mark 2):

 

Class 32: Flavoured carbonated beverages; Non-dairy milk; Waters; Juices; Aperitifs, non-alcoholic; Sherbets [beverages]; Sorbets in the nature of beverages; Part frozen slush drinks; Energy drinks [not for medical purposes]; Cocktails, non-alcoholic; Non-alcoholic honey-based beverages; Cider, non-alcoholic; Quinine water; Energy drinks; Beer and brewery products; Beers; Non-alcoholic beer; Shandy; Beer-based cocktails; Low alcohol beer.

Class 33: Alcoholic beverages (except beer); Alcoholic essences; Alcoholic extracts; Wine; Spirits and liquors; Pre-mixed beverages; Aperitifs; Cider; Bitters; Low alcoholic drinks.

Class 43: Provision of food and drink.

A re-examination of the classification of the goods and services of the contested mark in June 2021 showed that it did not entirely comply with Article 33 EUTMR, so the Office invited the applicant to amend the classification of the services in Class 35. Following this amendment, which had no material impact on the scope of the contested goods and services, the contested goods and services are the following:

 

Class 29: Yogurt; Greek yogurt.

Class 35: Retail stores selling food products; Retail store services being food.

Class 43: Catering services; Restaurant services; Take-out restaurant services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 goods in Class 29

The contested yogurt; Greek yogurt are complementary to the opponent’s provision of food and drink in Class 43 of earlier mark 2. Indeed, such goods are used and offered in the context of restaurant, catering, bar, café, cafeteria, canteen and snack bar services. Numerous business models not only provide for the sale of foodstuffs produced by them as goods, but also for the provision of catering services, be it within their own business establishments or in the field of outside catering, as well as vice versa, with providers of catering services diversifying their offer with, for instance, (homemade) yoghurt. Those goods therefore may also coincide in their producers and distribution channels. Therefore these goods and services are, contrary to the applicant’s arguments, similar to a low degree.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because 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.

 

Therefore, the contested retail grocery stores; retail store services featuring food are, contrary to the applicant’s arguments, similar to the opponent’s edible oils in Class 29 of earlier mark 1.

Contested services in Class 43

The contested catering services; restaurant services; take-out restaurant services are included in the broad category of the opponent’s provision of food and drink in Class 43 of earlier mark 2. Therefore, they are identical.

 

 

b) 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 varying degrees are directed at the public at large, whose degree of attention is average.

 

c) The signs

 

Earlier marks 1 and 2
Earlier trade marks	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.

All the words included in the signs in question, namely ‘GO’, ‘GREEK’, ‘authentic’ and ‘yogurteria’ are English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking public in the European Union as the semantic content conveyed by the signs will have an impact on the conceptual similarity between the signs.

The signs in question include the verbal element ‘GO GREEK’. The word ‘GO’ will be understood as referring to ‘to intend to do or be something’ (information extracted from Cambridge Dictionary on 28/06/2021 at https://dictionary.cambridge.org/dictionary/english/go) with the result that the verbal element ‘GO GREEK’ as a whole will be seen as an exhortation. Although this verbal element, for certain demographic segments, could be understood as a conceptual unit with a sexual connotation (information extracted from Urban Dictionary online on 28/06/2021 at https://www.urbandictionary.com/define.php?term=go%20greek) which is distinctive for the goods and services in question, it is likely that at least part of the English-speaking public, most probably even the majority, will not perceive this specific meaning. They will rather perceive ‘GO GREEK’ as an exhortation to do something Greek or, in the present case, buy or eat Greek food. As it is allusive for the goods and services in question for this part of the public under analysis, it is distinctive to a low degree. In any case, the degree of distinctiveness of the common element ‘GO GREEK’ — although allusive for a sizeable part of the public under analysis — is on an equal footing and has no impact on the comparison because the differentiating elements do not play a more distinctive or dominant role within either sign, as will become apparent below.

Whether perceived together or separated, the words ‘authentic’ and ‘yogurteria’, included in the contested sign, are descriptive as they refer to the quality of the goods and services (being ‘authentic’) and/or their origin (stemming from a ‘yogurteria’ or yogurt shop).

The earlier marks are composed of the word ‘gogreek’ in blue and white lowercase, and three blue figures marching and holding a spoon, a fork and a knife in their hands which are distinctive. All of these elements are placed within a less distinctive figurative element of a purely decorative nature, namely a black rectangular background. The Opposition Division disagrees with the applicant’s argument that the blue figures, ‘being so funny and memorable’, are dominant. Even though, according to the established case-law of the Court, aspects other than the visual one (such as a possible semantic meaning of part of a one-word sign) may come into play when defining the notion of the dominant element of a sign, it is the practice of the Office to restrict the notion of dominant element to the visual impact of the elements of a sign, that is, to use it exclusively to mean ‘visually outstanding’ and to leave any other considerations for the overall assessment. As a result, the Office’s practice is that the dominant character of a component of a sign is mainly determined by its position, size, dimensions and/or use of colours, to the extent that they affect its visual impact. Therefore, contrary to the applicant’s arguments, the earlier marks have no element that could be considered clearly more dominant than other elements.

The contested sign also includes the word ‘Go Greek’ written in white upper-case letters, one placed above the other, above an image of a bowl which may be perceived as containing some white liquid such as milk or yogurt, and which is placed between two horizontal lines. This figurative element is smaller in size and will be perceived as alluding to the relevant goods and services. All these word and device elements are placed on a black circular background with a white circle within, which is of a purely decorative nature. The words ‘authentic’ and ‘yogurteria’, written in much smaller letters than the element ‘GO GREEK’ and separated by two dots, are separated from the element ‘Go Greek’ and the image of a bowl by this inner white circle. Of all these elements, it is the combination of the element ‘Go Greek’ and the image of a bowl that is dominant, given its size and central position.

 

Visually, the signs coincide in the verbal element ‘GO GREEK’, which is the only verbal element of the earlier marks and the co-dominant element of the contested sign. They differ in their figurative aspects, and in the contested sign’s additional words ‘authentic’ and ‘yogurteria’.

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).

Therefore, and taking into account that the elements ‘authentic’ and ‘yogurteria’ are non-distinctive, the signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the element ‘GO GREEK’ present identically in both signs. A substantial part of the relevant public will not pronounce the elements ‘authentic’ and ‘yogurteria’ of the contested sign, as elements with reduced distinctiveness tend to be omitted especially when pronouncing long signs (11/01/2013, T‑568/11, interdit de me grander IDMG, EU:T:2013:5, § 44). Therefore, these elements do not affect the aural comparison for this part of the public. If they are pronounced, their impact is limited, because they are non-distinctive and in a secondary position in significantly smaller lettering.

Therefore, the signs are aurally identical for the part of the relevant public that does not pronounce ‘authentic’ and ‘yogurteria’, as explained above, and aurally similar to a high degree for the part of that public that does pronounce them.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of ‘GO GREEK’, and differ in the concepts conveyed by their respective other elements, namely the marching figures in the earlier marks and the non-distinctive words and the allusive device in the contested sign.

Therefore, the signs are conceptually similar at least to an average degree for the relevant public.

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

 

 

d) Distinctiveness of the earlier marks

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of an allusive and lowly distinctive element in the marks, as stated above in section c) of this decision.

 

 

e) Global assessment, other arguments and conclusion

 

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.

The goods and services in question are identical or similar to varying degrees, and target the general public who has an average degree of attention. The earlier marks enjoy an average degree of inherent distinctiveness. The signs are visually similar to an average degree, aurally similar at least to a high degree and conceptually similar at least to an average degree.

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). Account is also taken of the fact that, in general terms, 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 relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The difference caused by the differing elements are outweighed by the fact that the signs share the element ‘GO GREEK’ as independent and clearly perceivable elements. The contested sign’s figurative elements and its additional verbal elements do not alter this outcome as these are non-distinctive, or have a very limited impact in the overall appearance of the sign.

Therefore, taking into account the identity and similarity (to varying degrees) of the contested goods and services and the relevant public’s imperfect recollection, it cannot be excluded that the relevant consumers, even for goods and services similar to a low degree only, will perceive the contested mark as a variation of the earlier marks (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), and they will therefore assume that the goods and services covered are from the same or economically linked undertakings.

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 registrations No 10 437 011 and No 13 062 047. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.

 

COSTS

 

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

 

 

Helen Louise MOSBACK

Christophe DU JARDIN

Martin MITURA

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.