CANCELLATION No 36 577 C (INVALIDITY)

Dea S.r.l., Via Santa Lucia 62, 80132 Naples, Italy (applicant), represented by Studio Ferrario S.R.L., Via Collina, 36, 00187 Rome, Italy (professional representative)

a g a i n s t

Areas, S.A., Avda. Diagonal, 579-587, 5º, 08014 Barcelona, Spain (EUTM proprietor), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative).

On 06/07/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 16 199 523 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 16 199 523 for the figurative mark . The application is based on, inter alia, European Union trade mark registration No 13 529 301 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. In its observations submitted together with the application for invalidity, the applicant also invoked Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

In its observations, the applicant argued that there was a likelihood of confusion because of the identity of the services and the similarity of the marks. Furthermore, it argued that the earlier marks had acquired an enhanced distinctive character in the European Union due to their intensive use for the relevant services in Class 43. In support of its observations, the applicant filed evidence to show the enhanced distinctiveness of the earlier marks (brochure and pictures of restaurants; extracts from the applicant’s website; press articles; website visitors statistics (2016-2019); presence on social media (Facebook, Instagram, TripAdvisor); merchandising invoices). It also considered that the signs had the same structure, that the distinctive elements of the signs ‘FARINELLA’ and ‘FARINE’ were very similar, and that the signs also coincided in the distinctive element ‘BAKERY’ as well as in the non-distinctive elements ‘COFFEE’ and ‘CAFE’. It argued that ‘BAKERY’ was distinctive for at least part of the public since it had no similar equivalents in many languages (e.g. ‘panaderia’ in Spanish, ‘panificio’ in Italian) and it could not be considered a basic English word. It further argued that the signs were conceptually identical since in Italian ‘FARINE’ means ‘flour’ and ‘-ella’ is a diminutive suffix commonly used in Italian, and therefore the word ‘FARINELLA’ could be perceived by Italian consumers as connected to the word ‘FARINE’, referring to a kind of flour. Finally, it quoted an opposition decision (18/11/2019, No B 3 063 025) in which a likelihood of confusion was found between the earlier marks and the EUTMA .

In its observations, the EUTM proprietor argued that the signs were dissimilar and that the reputation of the earlier marks was not proved. It also argued that the elements ‘COFFEE’, ‘CAFE’ and ‘BAKERY’ were descriptive and non-distinctive. From a conceptual point of view, it pointed out that ‘FARINE’ means ‘flour’ whereas ‘FARINELLA’ had no meaning. It therefore concluded that there was no likelihood of confusion. In support of its observations, the EUTM proprietor submitted one notification from the Office (‘notice of grounds for refusal of application for a Community trade mark’) dated 27/03/2015 for the EUTM application ‘Home Bakery’ and one refusal dated 02/09/2013 for the EUTM application ‘Fresh Food Bakery’.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s trade mark registration No 13 529 301.

1. The services

The services on which the application is based are, inter alia, the following:

Class 43: Provision of food and drink.

The contested services are the following:

Class 43: Services for providing food and drink.

The services are identical.

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 services found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested trade mark

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.

In view of the considerations below regarding the distinctiveness of the signs’ elements and their conceptual comparison, the Cancellation Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public.

The contested mark is composed of the word ‘FARINE’ written in black upper-case letters and, below this, in smaller letters, the words ‘BAKERY CAFE’. Due to its size and position, the word ‘FARINE’ is the dominant element of the sign as it is the most eye-catching.

In Italian, ‘FARINE’ is the plural form of the word ‘farina’ which means ‘flour’. Since this meaning is not directly descriptive of any of the characteristics of the relevant services, nor allusive in a manner which may materially affect its ability to act as a badge of origin, its distinctiveness is average.

Contrary to the EUTM proprietor’s claims – and as correctly pointed out by the applicant – at least a significant part of the Italian public will not understand the word ‘BAKERY’ as it is not similar to the national equivalent (‘panificio’), commonly used in the relevant territory, or considered a basic English word. The evidence submitted by the EUTM proprietor does not show that ‘BAKERY’ is understood – and therefore devoid of any distinctiveness in Italy – since the evidence refers to the distinctiveness of ‘BAKERY’ from the perspective of the English-speaking public. Therefore, the Cancellation Division considers that ‘BAKERY’ is meaningless and distinctive to an average degree for a least a significant part of the Italian public. In any case, given that this word is identically reproduced in the earlier mark, it is on equal footing in both signs.

Given its high similarity with the Italian word ‘caffè’, ‘CAFE’ will be understood as meaning ‘coffee’. In relation to the relevant services in Class 43 which include cafes, this element is non-distinctive.

The earlier mark is a figurative mark consisting of the verbal element ‘FARINELLA’ written in black upper-case letters and, below this, the verbal element ‘BAKERY & COFFEE’ written in white upper-case letters, all on a grey, rectangular background. To the left of these verbal elements is a figurative element consisting of a circular device containing a stylised depiction of a woman’s head and the verbal elements ‘ENJOY FARINELLA MADE WITH LOVE’. Due to their small size and position, these verbal elements are barely noticeable and will not be pronounced. As they are likely to be disregarded by the relevant public, they will not be taken into consideration in the comparison of the signs.

There are no dominant elements among the remaining components of the earlier mark.

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). The figurative element of the earlier mark performs an essentially decorative function. The public is used to perceiving such depictions as ornamental elements common to many signs in commerce, and will instantly attribute more trade mark significance to the verbal elements of the sign. The grey rectangular background is non-distinctive as it is a basic shape commonly used in trade.

The word ‘FARINELLA’ has no meaning per se. As pointed out by the EUTM proprietor, it is not included in Italian dictionaries. However, the suffix ‘-ella’, as argued by the applicant, can be used in Italian to create a diminutive form of a term (information extracted from Treccani on 06/07/2020 at http://www.treccani.it/vocabolario/ella_res-3b013d53-001a-11de-9d89-0016357eee51/). Therefore, it cannot be excluded that at least part of the public may see ‘FARINELLA’ as a derivative form of ‘farine’. In any case, whether or not this word is understood, it is distinctive to an average degree.

The considerations regarding the perception and the distinctiveness of the element ‘BAKERY’ of the contested mark apply equally to this element in the earlier mark. The ampersand symbol, ‘&’, means ‘and’ (‘e’ in Italian) and the element ‘COFFEE’ will be understood as it is a basic English word and is almost identical to the equivalent in Italian, ‘caffè’. In relation to the relevant services, it will be perceived as non-distinctive.

Visually, the dominant element ‘FARINE’ of the contested mark is fully included at the beginning of the element ‘FARINELLA’ of the earlier mark. This is particularly relevant since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. These elements differ in the additional final letters ‘-L-L-A’ of the earlier mark. The signs further coincide in the element ‘BAKERY’ and they have a similar structure, namely the similar words ‘FARINELLA’/‘FARINE’ above the expressions ‘BAKERY & COFFEE’/‘BAKERY CAFE’. The signs differ in the earlier mark’s figurative elements (including the non-distinctive rectangular background)and its ampersand. They further differ in the non-distinctive elements ‘COFFEE’ v ‘CAFE’ which, however, coincide in the letters ‘C-*-F-*-E’. Given the abovementioned considerations regarding the distinctive and dominants elements of the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the verbal elements ‘FARINELLA’ and ‘FARINE’ coincides in the sound of the letters ‛F-A-R-I-N-E’, present identically in both signs, and differs in the sound of the additional letters ‘L-L-A’ of the earlier mark which make it one syllable longer. The signs also coincide in the sound of the element ‘BAKERY’. The non-distinctive elements ‘COFFEE’ and ‘CAFE’ coincide in the sound of the letters ‘C’ and ‘F’, and differ in the sounds of the vowels ‘O-EE’/’A-È’ and in the sound of the additional letter ‘F’ of the earlier mark, if pronounced. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the above assertions concerning the semantic content of the signs. The signs coincide in the non-distinctive elements ‘COFFEE’ and ‘CAFE’ which have a limited impact, if any, on the comparison. The earlier mark contains the stylised depiction of a woman’s head. For part of the public, the signs are similar to a low degree since ‘FARINELLA’ may be perceived as the diminutive form of ‘farine’, referring to a kind of flour. For the remaining part of the public for which ‘FARINELLA’ has no meaning, the signs are not conceptually similar.

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant 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 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 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 non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

The services are identical and the degree of attention of the public is average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally similar to an average degree and, for part of the public, conceptually similar to a low degree.

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.

Due to the strong similarities between the main distinctive elements ‘FARINELLA’ and ‘FARINE’, the very similar structure of the signs, and the coinciding element ‘BAKERY’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates or vice versa (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is particularly true since the word ‘FARINELLA’ may be perceived, at least by part of the public, as the diminutive form of ‘farina’/‘farine’ and therefore, ‘FARINELLA’ may be perceived as a sub-brand of ‘FARINE’ designating smaller establishments.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the Italian-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 declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European trade mark registration No 13 529 301. It follows that the contested trade mark must be declared invalid for all the contested services.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned earlier right leads to the success of the application and the cancellation of the contested trade mark for all the services against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 60(1)(a) EUTM in conjunction with Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Pierluigi M. VILLANI

Frédérique SULPICE

Marta Maria CHYLIŃSKA

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 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.