OPPOSITION No B 2 882 796

Hazienda La Rambla S.L., c/ Sant Pere Claver 22, 2º - 5ª, 25300 Tarrega (Lleida), Spain (opponent), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 - 1, 48010 Bilbao (Bizkaia), Spain (professional representative)

a g a i n s t

Las Ramblas Royalties Ike, Απόλλωνος 4, Λάρισα, Greece (applicant), represented by Konstantina Economou, 4, Zalokosta str., 10671 Athens, Greece (professional representative).

On 12/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 882 796 is partially upheld, namely for the following contested goods and services:

Class 29: Milk, milk products, fruits and vegetables, nuts (fruits) and pulses (dried and processed).

Class 30: Snack food, a variety of wrapped snacks.

Class 43: Cafeterias; restaurant and cafeteria services; services for the preparation and providing of food and drink for immediate consumption; take-away food; serving of food and drink.

2. European Union trade mark application No 16 447 211 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods and services of European Union trade mark application No 16 447 211 (figurative mark), namely against all the goods and services in Classes 29, 30 and 43. The opposition is based on European Union trade mark registration No 8 564 379 ‘LA RAMBLA’ (word mark) and Spanish trade mark registration No 2 857 443 ‘LA RAMBLA’ (word mark). 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.

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 European Union trade mark registration No 8 564 379, as is the earlier mark with the broadest scope of protection.

1. The goods and services

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

Class 29: Olive oil and preserved olives.

Class 30: Vinegar and sauces.

The contested goods and services are the following:

Class 29: Milk, milk products and substitutes therefor, fruits and vegetables, nuts (fruits) and pulses (fresh, dried and processed), soups and broths, salads, meat (fresh and processed), charcuterie, cheese, fish and seafood.

Class 30: Confectionery, cakes, biscuits, pastry, tarts, sweets, coffee, tea, cocoa and substitutes therefor, coffee beverages and coffee-based beverages, tea beverages, chocolates, chocolate powder, sugar, honey, sweeteners, edible ices, frozen yoghurt and sherbets (ices), snack food, sandwiches, pies, paninis, a variety of wrapped snacks, sweet and savoury pies, desserts, meals based on pasta and rice, bread and patisserie products.

Class 43: Cafeterias, restaurant and cafeteria services, services for the preparation and providing of food and drink for immediate consumption, take-away food, serving of food and drink.

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 Opposition Division notes that, in this case, the contested goods nuts (fruits) and pulses (fresh) do not appear correctly classified in the trade mark application, since they are listed in Class 29, but their correct classification would be in Class 31. Accordingly, since the Nice Classification serves only for administrative purposes, those goods will be analysed and compared by taking into account their usual meaning, regardless of the class number under which they are listed. Similarly, the contested fruits and vegetables, as listed in Class 29, will be understood, in general, as ‘processed’ fruits and vegetables (e.g. preserved, cooked, mixed, bottled, canned, etc.) in the present comparison.

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 fruits include, as a broader category, the opponent’s preserved olives. 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 vegetables are highly similar to the opponent’s preserved olives since they can coincide in purpose and in distribution channels, as they are usually in the same sections at stores or supermarkets. They also target the same end users and they are in competition.

The contested nuts (fruits); pulses (dried and processed) are similar to the opponent’s preserved olives because they coincide in distribution channels since they are usually in the same sections at stores or supermarkets. They also target the same end users and they are in competition.

The contested milk, milk products share some similarities with the opponent’s olive oil as they can coincide in purpose and end users. Moreover, they can be in competition. Therefore, they are similar.

However, the contested substitutes therefor (milk and milk products), pulses (fresh), soups, broths, salads, meat (fresh and processed), charcuterie, cheese, fish, seafood are dissimilar to all goods covered by the opponent’s right. Although they can share some similarities since they are all foodstuff, their nature and purposs are different. They do not have the same producers and they are found in different sections at stores or supermarkets. Moreover, they are neither complementary nor in competition.

It must be noted that goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) 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 (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Complementarity has to be clearly distinguished from use in combination where goods are merely used together, whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (decision of 16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). Therefore, the fact that the opponent’s olive oil can be used for cooking some of the contested goods (e.g. meat, fish, or salads) is not sufficient for finding similarity, and the opponent’s claim in this regard must be set aside.

Contested goods in Class 30

A ‘snack’ is a portion of food, smaller than a regular meal, generally eaten between meals. Snacks come in a variety of forms, including packaged snack foods and other processed foods, as well as items made from fresh ingredients at home. Therefore, the contested snack food, a variety of wrapped snacks consists of any kind of product that can be consumed as a snack. These goods are similar to a high degree to the opponent’s preserved olives in Class 29, because they coincide in purpose, and they can have the same distribution channels and end users. Moreover, they can be produced by the same companies.

The contested confectionery, cakes, biscuits, pastry, tarts, sweets, coffee, tea, cocoa and substitutes therefor; coffee beverages and coffee-based beverages, tea beverages, chocolates, chocolate powder, sugar, honey, sweeteners, edible ices, frozen yoghurt and sherbets (ices); sandwiches; pies; paninis; sweet and savoury pies, desserts, meals based on pasta and rice, bread and patisserie products are dissimilar to all goods covered by the opponent’s right. Although they can share some similarities since they are all foodstuff, their nature and purpose are different. They do not have the same producers and they are found in different sections at stores or supermarkets. Moreover, they are neither complementary nor in competition.

Contested services in Class 43

The contested cafeterias, restaurant and cafeteria services, services for the preparation and providing of food and drink for immediate consumption, take-away food, serving of food and drink share some similarities to the opponent’s sauces in Class 30. The market reality is that the provision of food and drinks and the manufacture of this kind of goods are commonly offered by the same undertakings under the same trade mark. They coincide, thus, in providers and distribution channels. Therefore, they are 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 varying degrees are directed at the public at large with an average degree of attention.

3. The signs

LA RAMBLA
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.

The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is depicted in upper or lower case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial. In order to simplify the analysis and comparison of the signs, the earlier mark will be referred to in lower-case letters.

The elements ‘la rambla’ and ‘Las Ramblas’ in the earlier and the contested sign, respectively, refers to the same Spanish expression, in singular and plural form. It means ‘the ravine’ or ‘the tree lined street’ (in singular and plural forms).

These elements are not meaningful in certain territories, in particular in those countries where Spanish is not understood. The Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in the United Kingdom, Ireland and Malta, as well as consumers who have a sufficient knowledge of English as a foreign language because it is considered to constitute the best case-scenario for likelihood of confusion to arise, as for this part of the public the elements that the signs have in common are meaningless and the additional verbal elements of the contested mark will be understood (see below).

The elements ‘la rambla’ and ‘Las Ramblas’ in the signs are perceived as meaningless. Since they do not have a meaning in relation to the goods and services involved, they are of average distinctive character.

The contested sign has the additional words ‘BREAKFAST AND COFFEE BREWERS’. These elements are allusive to the characteristics of the goods in Classes 29 and 30 (i.e. milk, milk products, fruits, nuts (fruits), pulses (dried and processed), snack food and a variety of wrapped snacks) because they can be served for breakfast or accompanying coffee and thus, the expression abovementioned has a low distinctive character. For the services in Class 43 (i.e. cafeterias, restaurant and cafeteria services, services for the preparation and providing of food and drink for immediate consumption, take-away food, serving of food and drink) this expression is descriptive of their characteristics and thus, it has no distinctive character.

Moreover, due to its bigger size the element ‘Las Ramblas’ is the dominant element (visually eye-catching) of the contested sign.

Visually, the signs coincide in the elements ‘LA* RAMBLA*’ being the only elements forming the earlier mark and the dominant element of the contested sign. However, they differ in the additional letters ‘S’ of the contested sign that make the plural form of the earlier mark’s elements.

They also differ in the additional words ‘BREAKFAST AND COFFEE BREWERS’ of the contested sign. This expression has been considered to have a limited impact for the goods and services, in relation to which they have low distinctive character or they are non-distinctive. In addition, they constitute the element that is of less visual impact within the sign.

Therefore, taking into account that the coincidences are in elements causing greater impact and that the differences are found in the elements of less impact, as explained above, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛L-A* R-A-M-B-L-A*’, present identically in both signs. The pronunciation differs in the sound of the additional ‘S’ placed at the end of the elements ‘Las’ and ‘Ramblas’ and in the sound of the expression ‘BREAKFAST AND COFFEE BREWERS’, all in the contested sign. However, since this expression is clearly secondary, of less visual impact, and allusive or descriptive of the goods and services involved, it is likely that consumers will omit it, and refer to the contested sign only as ‘Las Ramblas’.

Therefore, the signs are phonetically highly similar.

Conceptually, the public in the relevant territory will perceive the meaning of the expression ‘BREAKFAST AND COFFEE BREWERS’ of the contested sign. This expression has a low distinctive character in relation to the goods in Classes 29 and 30, as explained above, and the earlier mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Moreover, the same expression is non-distinctive in relation to the services in Class 43, as explained above, and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible in this scenario, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

On 05/04/2018 the opponent claimed that its mark is particularly distinctive by virtue of intensive use or reputation. However, this claim was made out of the substantiation period (Article 7(2) EUTMDR) and the evidence submitted was in a language different from the one of the proceedings and without the proper translation. Therefore, the Opposition Division cannot take into account this claim in order to assess the distinctiveness of the earlier right.

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 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

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public is the public at large with an average degree of attention.

The signs are visually and phonetically similar to a high degree and not conceptually similar or the conceptual comparison is not possible to be made (depending on the scenarios explained above). The earlier mark has a normal degree of distinctiveness.

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).

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.

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 this case, for all of the above, it is considered that the coincidences between the signs, together with the identity and similarity to varying degrees of the goods and services involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods and services come from the same or economically-liked undertakings.

In its observations, the applicant argues that the earlier trade mark is the well known name of a shopping and leisure pedestrian street in the city of Barcelona (Spain) and that there are several trade mark registrations in Spain, as well as in the European Union, that include the elements ‘Las Ramblas’. In support of its argument, the applicant refers to the amount of trade mark registrations in Spain and in the European Union but without any further specification.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the argument of the applicant does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks that include ‘Las Ramblas’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 564 379. 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.

Likelihood of confusion is considered to exist also in relation to the services found to be similar only to a low degree, since the coincidences between the marks are considered to be enough to counteract the low similarity of those services.

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 varying degrees) to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on the Spanish trade mark registration No 2 857 443 for the word mark ‘LA RAMBLA’. Since this mark is identical to the one which has been compared and covers the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Marta GARCÍA COLLADO

María del Carmen SUCH SÁNCHEZ

Alexandra APOSTOLAKIS

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.