OPPOSITION No B 2 902 172

Cafes Candelas, S.L., C/ Poligono Industrial Ceao, rua Dos Transportes, nº 7, 27003, Lugo, Spain (opponent), represented by Alberto Álvarez Flores, Avenida Coruña, 39-42, Entl., 27003, Lugo, Spain (professional representative)

a g a i n s t

Bushido Group Limited, Craigmuir Chambers, P.O. Box 71, Road Town, Tortola, British Virgin Islands (applicant), represented by Hgf Limited, 1 City Walk, Leeds LS11 9DX, United Kingdom (professional representative).

On 22/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 902 172 is upheld for all the contested goods.

2. European Union trade mark application No 16 453 714 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 453 714 ‘EVO’. The opposition is based on European Union trade mark registration No 11 783 644 ‘EBO’. 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

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

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

The contested goods are the following:

Class 30: Coffee, tea, artificial coffee, cereal bars, coffee based beverages, tea based beverages.

Coffee; tea; artificial coffee are identically contained in both lists of goods.

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

The contested coffee based beverages include, as a broader category, the opponent’s cold beverages based on coffee. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested tea based beverages overlap with the opponent’s tea, insofar as they both could be a tea beverage. 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 are directed at the public at large, being beverages and foodstuffs.

In its observations, the applicant argues that consumers will pay a higher than average degree of attention when purchasing coffee-related products, to ensure they choose the blends that suit their tastes.

In support of this claim, the applicant cited a previous opposition decision of the Office (i.e. 09/09/2015, B 2 280 512, BARISTA PRIMA / PrimoBarista) where it is stated, inter alia, that a higher degree of attention might be justified by the brand loyalty attributable to coffee products. However, account is taken of the fact that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

The Opposition Division does not find a reason to deviate from the opinion of the General Court (27/10/2016, T‑37/16, CAFFÈ NERO (fig.), EU:T:2016:634, § 21), namely: ‘[…] having regard to the nature of the goods [inter alia, tea, coffee and cookies] and services in question, the Board of Appeal was fully entitled to hold that the level of attention of the relevant public is, in general, average’. Accordingly, the Opposition Division considers that the degree of attention in relation to the relevant goods is average.

3. The signs

EBO	EVO
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.

As correctly argued by the opponent, there is no difference in the pronunciation of the letters ‘B’ and ‘V’ in Spanish. Therefore, the contested sign, ‘EVO’, will be pronounced by Spanish-speaking consumers in the same way as the earlier trade mark, ‘EBO’. In addition, the contested mark may be perceived by a very limited part of the Spanish-speaking public as a rare poetic/religious word referring to an ‘endless length of time’. Considering the specific meaning of this word, it is reasonable to conclude that it will be perceived as meaningless at least by a significant part of the Spanish-speaking public for the category of goods (foodstuffs and beverages) concerned.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public that does not understand the meaning of the contested sign ‘EVO’ and for which the likelihood of confusion might be higher.

The elements ‘EBO’ of the earlier mark and ‘EVO’ of the contested sign have no particular meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in their first and last letters, ‘E*O’. However, they differ in their central letters, ‘B’ of the earlier mark and ‘V’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, reference is made to the previous assertions concerning the pronunciation of the signs by the relevant public.

As the contested mark, ‘EVO’, will be pronounced in the same way as the earlier mark, ‘EBO’, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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 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.

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).

The goods are identical and they target the public at large whose degree of attention is average. The distinctiveness of the earlier trade mark must be seen as normal. The signs under comparison are visually similar to an average degree and aurally identical.

As correctly stated by the applicant, the trade marks under comparison are short signs, both being composed of three letters.

The Opposition Division takes into account that, even in the case of three-letter signs, a difference of one letter does not exclude likelihood of confusion, especially if the differing letters are phonetically similar (e.g. 23/10/2002, T‑388/00, ELS, EU:T:2002:260). This is even more so in cases in which the differing letters are aurally identical, as they are in the case at issue.

In its observations, the applicant argues that the relevant goods are commonly purchased in shops or online and therefore the choice of these products is generally made visually. It states that, as a consequence, the visual differences between the signs under comparison should prevent the risk of consumers confusing them.

It is also true that visual similarities between signs may be of increased importance for particular goods (e.g. foodstuffs, clothing or video games), which are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. However, even for goods that are normally purchased visually, the aural impression cannot be ignored.

In particular, even when the relevant goods are sold to consumers ‘as seen’ on shelves in self-service shops, it cannot be excluded that those products could be advertised orally on the radio or mentioned by other consumers. Therefore, in this case, the phonetic identity between the marks at issue plays a relevant role in the assessment of the likelihood of confusion (by analogy, 23/11/2011, T‑501/08, ECLI:EU:T:2011:527, § 53).

Furthermore, the contested sign, being a word mark, has no additional distinctive graphical elements to give it a sufficiently different overall visual impression from the earlier word mark. Therefore, when the signs are perceived visually, taking into account the identity between the goods and the fact that the letters that the signs have in common are placed in the same sequence and positions, the Opposition Division considers that the visual differences between the trade marks at issue, confined to the letters in the middles of the signs, are not sufficient to exclude a likelihood of confusion between them.

As a result, taking into account the principle of imperfect recollection, and the visual similarity and aural identity between the signs under comparison, the relevant public is likely to believe that the goods, which are identical, come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public for which the word ‘EVO’ is meaningless. 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 11 783 644. It follows that the contested trade mark must be rejected for all the contested 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.

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

Paloma PERTUSA MARTINEZ

Aldo BLASI

Irina SOTIROVA

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.