OPPOSITION No B 2 627 936

Burgerista Operations GmbH, Wiener Bundesstraße 196, 4050 Traun, Austria (opponent), represented by Fieldfisher (Germany) LLP, Am Sandtorkai 68, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Burgista Bros Limited, 20/F. Champion Building, 287-291 Des Voeux Road Central, Sheung Wan, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Dehns, St Bride’s House, 10 Salisbury Square, London, EC4Y 8JD, United Kingdom (professional representative).

On 19/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 627 936 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 816 318 is rejected in its entirety.

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

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 816 318, for the word mark ‘BURGISTA BROS’, namely against all the goods and services in Classes 30 and 43. The opposition is based on European Union trade mark registration No 13 318 209, for the word mark ‘BURGERISTA’. 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 and services on which the opposition is based are, inter alia:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; tinned meat, fish and milk; prepared salads; pre-cut vegetables for salads; steaks; burgers; chicken wings; French fries, potato chips, fried potatoes; pickles; onion rings.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals, bread, in particular burger buns; pastry and confectionery; salt; mustard; vinegar, sauces (condiments), in particular dips in various flavours; spices; ketchup, mayonnaise; farinaceous food pastes, in particular wraps; salad dressings; cheeseburgers (sandwiches), hamburger sandwiches, burgers (sandwiches); sandwiches filled with meat; vegetarian burgers (sandwiches).

Class 43: Provision of food and drink; restaurants, canteens and bars.

The contested goods and services are the following:

Class 30: Coffee, tea, beverages made from tea, coffee, cocoa or chocolate; pizza, pasta, noodles, rice, dumplings, sandwiches, hamburgers, cheeseburgers, fishburgers, riceburgers, hot dogs, bread, buns, biscuits, pastries, cakes, confectionery, dessert mousses, dessert puddings, honey, candy, chocolate, cocoa, ice-cream, frozen yoghurt; prepared meals (chilled or frozen) consisting primarily or substantially of pasta, noodles, rice, maize, cereals, grains, bread and/or pastry; pies; quiches; prepared sauces; preparations for making sauces.

Class 43: Services for providing food and drink; café, cafeteria, coffee shop, takeaway food, fast food, snack bar, canteen, bar, catering and restaurant services; hotel and restaurant booking, reservation and information services; hotel, motel and temporary accommodation services.

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 ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 30

Bread; rice; hamburgers; cheeseburgers; cocoa; coffee, tea; pastry and confectionery are identically contained in both lists of goods (including synonyms).

The contested beverages made from tea, coffee, cocoa are included in the broad category of the opponent’s coffee, tea, cocoa. Therefore, they are identical.

The contested beverages made from chocolate are included in the broad category of the opponent’s cocoa. Therefore, they are identical.

The contested buns are included in the broader category of the opponent’s bread, in particular burger buns. Therefore, they are identical.

The contested sandwiches include, as a broader category, the opponent’s cheeseburgers (sandwiches). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested riceburgers; fishburgers are included in the broad category of the opponent’s burgers (sandwiches). Therefore, they are identical.

The contested hot dogs are included in or overlap with the opponent’s sandwiches filled with meat, as a hot dog is two pieces of bread with a sausage (meat) in it. Therefore, they are identical.

The contested pasta; noodles are included in the broad category of the opponent’s farinaceous food pastes. Therefore, they are identical.

The contested prepared sauces are included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.

The contested biscuits; cakes; candy; chocolate are included in the broad categories of the opponent’s pastry and confectionery. Therefore, they are identical.

The contested quiches; pies are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested prepared meals (chilled or frozen) consisting primarily or substantially of pasta, noodles, rice, maize, cereals, grains, bread and/or pastry are highly similar to the opponent’s flour and preparations made from cereals because they coincide in their distribution channels, end users and producers. Moreover, they can be in competition, as consumers can prepare their meals or buy them ready made.

The contested ice-cream is at least similar to the opponent’s pastry. The contested product can often be used as a dessert, as can pastries. Moreover, some pastries can be frozen. Therefore, they can have the same nature, purpose and method of use. Their end users and distribution channels can be the same. Furthermore, they are in competition.

The same reasoning applies to the contested frozen yoghurt; therefore, it is at least similar to the opponent’s pastry.

The contested dessert mousses, dessert puddings are at least similar to the opponent’s pastry. By analogy, the contested goods can also have the same nature, purpose and method of use as the opponent’s product. Moreover, their end users and distribution channels can be the same. Furthermore, they are in competition.

The contested preparations for making sauces are similar to the opponent’s salad dressings because they have the same purpose, distribution channels and end users. Moreover, they are in competition.

The contested honey is similar to the opponent’s jams because they coincide in their purpose, method of use, end users and distribution channels. Furthermore, they are in competition.

The contested pizza; dumplings are similar to the opponent’s farinaceous food pastes because they have the same purpose, method of use and end users. Moreover, their producers are the same.

Contested services in Class 43

Services for providing food and drink, bar, canteen, restaurant services are identically contained in both lists of services (including synonyms).

The contested café, cafeteria, coffee shop, takeaway food, fast food, snack bar, catering are included in the broad category of the opponent’s provision of food and drink. Therefore, they are identical.

The contested restaurant booking, reservation and information services are highly similar to the opponent’s provision of food and drink as they coincide in their purpose, distribution channels and end users. Moreover, they are in competition.

The contested hotel booking, reservation and information services; hotel, motel and temporary accommodation services are similar to the opponent’s provision of food and drink because they have the same distribution channels and end users. Moreover, their providers can also be the same.

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 or similar to varying degrees are directed at the public at large and at business consumers (e.g. travel agencies for hotel booking services).

The degree of attention of the relevant public will be average.

3. The signs

BURGERISTA	BURGISTA BROS
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, both marks have the same construction for the English-speaking part of the public, an English word (‘BURGER’) plus the Spanish suffix ‘-ISTA’. And for, a part of English-speaking part of the public, the shortened version (‘BURG’) plus the Spanish suffix ‘-ISTA’. Furthermore, the second element of the contested sign, ‘BROS’, will also be understood by English speakers. As is explained below, the similarities between the signs will be greater for the English-speaking part of the public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

For instance, the element ‘BURGER’ of the earlier sign will be perceived as the English word ‘BURGER’, meaning ‘hamburger’, by the relevant public. The letters ‘ISTA’ added at the end of the English word ‘BURGER’ will be perceived as the Spanish suffix ‘-ISTA’, which is the equivalent of the English suffix ‘-IST’. This Spanish suffix is used in English to indicate a supporter or a follower of someone or something, in such words as ‘fashionista’, ‘Obamista’ and ‘recessionista’. As ‘-ISTA’ is a suffix, the relevant public will perceive the mark as a whole. In relation thereto, it must be recalled that consumers normally perceive a mark as a whole and do not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35). Therefore, as a whole, the sign might bring to mind someone who loves hamburgers. As a consequence, even though ‘BURGERISTA’ alludes to a person who loves hamburgers, it is nevertheless a fanciful invention and distinctive for all the goods and services.

The contested sign contains two word elements, ‘BURGISTA BROS’.

The relevant public may perceive the element ‘BURG’ as short for ‘burger’ and recognise the Spanish suffix ‘-ISTA’. However, overall the contested sign has no meaning and therefore has a normal degree of distinctiveness.

The element ‘BROS’ in the contested sign is commonly used in commerce among the English-speaking public as an abbreviation of ‘brothers’, and will therefore be perceived as indicating that the goods and services originate from a family business. Accordingly, this element is considered non-distinctive, as it simply refers to the form of the company.

Visually and aurally, the signs coincide in the letters ‘BURG*ISTA’. However, they differ in the additional letters ‘ER’ in the centre of the earlier sign and in the second element, ‘BROS’, of the contested sign. This element, as seen above, is non-distinctive and has no weight in the sign. Moreover, the letters of the first element of the contested sign are all contained in the earlier sign.

The difference that arises from the letters ‘ER’ in the middle of the earlier mark is insufficient to take away their high level of similarity (13/06/2012, T‑542/10, Circon, EU:T:2012:294, § 43), also taking into account that consumers only rarely have the chance to make a direct comparison between signs.

Therefore, bearing in mind that the second element of the contested sign is non-distinctive, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier sign and the contested sign both bring burgers to mind. Although the contested sign contains another word, this word is not distinctive. Therefore, 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 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.

5. 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.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business consumers with an average degree of attention.

The signs are visually, aurally and conceptually similar to an average degree. The earlier sign is distinctive for the goods and services.

In this regard, it should be highlighted than the first and most distinctive element of the contested sign is contained in its entirety in the earlier mark, the latter differing only in the additional letters in its centre. 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). As a consequence, the difference between these elements will go unnoticed by consumers.

Regarding, the second element, ‘BROS’, of the contested sign has been found non-distinctive and has no weight in the contested sign.

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 registration No 13 318 209. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Lucinda CARNEY

Cindy BAREL

Richard BIANCHI

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.