OPPOSITION No B 3 027 482

Bimbo Donuts Iberia S.A., Calle Cigoitia nº 1, Pol. Ind. Las Mercedes, 28022 Madrid, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

The Donuts s.r.o., Jeseniova 1164/47, 13000 Prague 3, Czech Republic (applicant), represented by Propatent Intellectual Property Law Firm, Pod Pekařkou 107/1, 147 00 Podolí, Prague 4, Czech Republic (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 027 482 is upheld for all the contested goods.

2. European Union trade mark application No 16 412 108 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 412 108 for the figurative mark . The opposition is based on, inter alia, Spanish trade mark registrations No 2 518 530 for the figurative mark and No 2 952 871 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to these earlier rights.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registrations No 2 518 530 for the figurative mark and No 2 952 871 for the figurative mark . This is due to the fact that, at first glance, these marks are considered visually closer to the contested application and also have a broader scope of protection than the remaining earlier rights.

1. The goods

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

Spanish trade mark registration No 2 518 530

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, bakery and bread products, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Spanish trade mark registration No 2 952 871

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 30: Chocolate; coffee, teas and cocoa and substitutes therefor; beverages having a base of coffee, cocoa or chocolate; edible ices, sherbets, sherbets [ices]; toasted bread; sweet and savoury pancakes.

Class 32: Non-alcoholic beverages; natural mineral water; flavoured table and spring waters; carbonated non-alcoholic drinks; syrups and preparations for making beverages; cocktails, non-alcoholic; sherbets; vegetable and fruit juices; iced fruit beverages; smoothies.

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 coffee, teas and cocoa are identically contained in both lists of goods, regardless whether the terms are used in their singular or plural form.

The contested chocolate is included in the opponent’s broad category of confectionery and the contested edible ices, sherbets, sherbets [ices] are included in the broad category of the opponent’s ices. Therefore, these goods are identical.

The contested toasted bread; sweet and savoury pancakes are included in the broad category of, or overlap with, the opponent’s bakery and bread products. Therefore, they are identical.

The contested beverages having a base of coffee, cocoa or chocolate overlap with the opponent’s broad categories of coffee and cocoa to the extent that in their essence these goods are used to prepare the same hot beverages. These goods are, therefore, identical.

The contested substitutes therefor [coffee, teas and cocoa] are highly similar to the opponent’s coffee, tea and cocoa. This is due to the fact that coffee, tea and cocoa are essentially used as beverages and chocolate is a product prepared from cocoa beans. Consequently, the contested and the opponent’s goods are in competition with each other as hot beverages (in particular as substitutes of the same drinks). Furthermore, in addition to having the same distribution channels, relevant public and origin, they coincide in their methods of use or intended purposes.

Contested goods in Class 32

The contested syrups and preparations for making beverages; fruit juices are identically contained in both lists of goods, despite some slightly different wording.

The contested non-alcoholic beverages; natural mineral water; flavoured table and spring waters; carbonated non-alcoholic drinks; cocktails, non-alcoholic; sherbets; vegetable juices; iced fruit beverages; smoothies are included in the opponent’s other non-alcoholic drinks. Therefore, they 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 goods found to be identical and highly similar are directed at the public at large. Some of the goods may be subject to habitual buying behaviour (e.g. sweetmeats [candy]). Purchase decisions of this kind relate to, for example, inexpensive goods purchased on a daily basis (15/06/2010, T 547/08, Strumpf, EU:T:2010:235, § 43). Therefore, the degree of attention when purchasing the relevant goods may vary from low to average, depending on the price of the goods and the frequency of their purchase.

3. The signs

Earlier trade marks	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 verbal element ‘donuts’ present in the signs has no meaning per se from the perspective of the relevant, Spanish, public and is, therefore, distinctive. Account is taken of the fact that some of the relevant consumers may perceive the word ‘donuts’ as a reference to ‘a small cake of sweetened dough, often ring-shaped or spherical with a jam or cream filling, cooked in hot fat’ due to some English comprehension or popularising of the term. However, even if that might be the case, this word remains distinctive in relation to the conflicting goods as it does not describe them or their natures and/or characteristics.

The verbal element ‘the’ of the contested sign, written in white and placed within a small black circle, preceding the other verbal element, will be seen by most of the Spanish consumers as the basic English definitive article; to that extent this word will be subordinated to the other verbal element ‘donuts’. Even if Spanish consumers do not see the word as meaningful, this will have no particular effect on its average distinctiveness per se.

The contested sign also contains less distinctive figurative elements of purely decorative natures, namely the black circle and the dot following the verbal element ‘donuts’. As far as the stylisation of the signs, including in colour, is concerned, it has to be noted that its impact will be of no major importance by the perception of the conflicting signs.

The verbal element ‘donuts’ of the contested sign slightly dominates the other verbal element ‘the’, in particular due to its bigger size.

Visually, the signs coincide in the entire verbal element ‘donuts’. They differ in the additional word ‘the’ in the contested sign, as well as in the additional figurative elements, stylisation and colours. Given the minimal or less impact of the differing elements, as established above, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the coinciding word ‘donuts’; they differ in the pronunciation of the preceding word ‘the’ in the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are considered aurally highly similar.

Conceptually, for a part of the public the earlier marks will convey no meaning at all and to that extent, the signs are not conceptually similar. However, to the extent that the word ‘donuts’ may be perceived as meaningful by some of the consumers and regardless of the fact whether the word ‘the’ will be understood, the sings will be conceptually at least highly 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 marks

The distinctiveness of the earlier marks 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods in question are identical and highly similar. The degree of attention varies between low and average and the earlier marks enjoy a normal degree of distinctiveness in relation to the conflicting goods.

The conflicting signs are considered visually, aurally, and for some of the consumers also conceptually, highly similar. This is due to the fact that the verbal element ‘donuts’ constituting the earlier marks is entirely reproduced in the contested sign, moreover, as an individual element that will be immediately grasped by consumers due to its visually more striking character. 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). In the present case, it cannot be excluded that consumers, encountering the signs, may be led by their highly similar overall impressions to confuse them, or to assume that the goods sold under the marks originate from the same undertaking or economically linked undertakings.

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 undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer might perceive the contested mark, ‘the donuts’, as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). By way of example, in the present case, the additional figurative and verbal elements of the contested sign might be seen as a modification introducing a new line of products by the opponent’s company.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 2 518 530 for the figurative mark and No 2 952 871 for the figurative mark .

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.

As the earlier rights examined above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights or grounds invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Victoria DAFAUCE MENÉNDEZ

Manuela RUSEVA

Mads Bjørn Georg JENSEN

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.