OPPOSITION No B 2 902 222

Wiebold-Confiserie GmbH & Co. KG, Ernst-Abbe-Str. 2, 25337, Elmshorn, Germany (opponent), represented by Heissner & Struck Rechtsanwälte Partnerschaft mbB; Hudtwalckerstr. 11, 22299, Hamburg, Germany (professional representative)

a g a i n s t

Ice'N'Go Kft, Vak Bottyán utca 32, 8600, Siófok, Hungary (applicant), represented by Lucia Benkőné Csillag, Ménesi út 4A, 1118, Budapest, Hungary (professional representative).

On 15/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 902 222 is partially upheld, namely for the following contested goods:

Class 30: Ice creams, frozen yogurts and sorbets; ice cream desserts; flavored ices; yoghurt based ice cream [ice cream predominating]; fruit ices; dairy ice cream; non-dairy ice cream.

2. European Union trade mark application No 16 549 701  is rejected for all the above goods. It may proceed for the remaining goods (namely ice).

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 shall 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 16 549 701, for the figurative mark , namely against all the goods in Class 30. The opposition is based on German trade mark registration No 302 014 004 776, and on international trade mark registration No 1 239 109 designating the European Union, both protecting the figurative 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 German trade mark registration No 302 014 004 776 .

1. The goods

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

Class 30: Sweets; confectionery; chocolate; chocolate products; caramels; nougat; marzipan; nut brittle confectionery (finished and semi-finished products); truffles and pralines.

The contested goods are the following:

Class 30: Ice, ice creams, frozen yogurts and sorbets; ice cream desserts; flavored ices; yoghurt based ice cream [ice cream predominating]; fruit ices; dairy ice cream; non-dairy ice cream.

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.

It is important to note that the opponent’s confectionery is a broad category for edible sweet products which includes a variety of products such as frozen confectionery. Consequently the contested ice creams, frozen yogurts and sorbets; ice cream desserts; flavored ices; yoghurt based ice cream [ice cream predominating]; fruit ices; dairy ice cream; non-dairy ice cream are included in the broad category of the opponent’s confectionery which includes frozen confectionery. Therefore, they are identical.

The contested ice is to be understood as ‘cooling ice’ whereas the opponent’s goods are confectionery. Therefore, their purpose and distribution channels are different, as is their nature. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.

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 with an average degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a figurative sign composed of the four black letters ‘Y-O-L-O’ in upper case positioned in each corner of a red square. All the letters are separated by the branches of a black cross forming the shape of a plus sign. The letters ‘Y-O’ are positioned at the top of the cross whereas the letters ‘L-O’ are positioned at the bottom of the cross. As the public generally reads from left to right and top to bottom, a more than significant part of the public will perceive the verbal element as the word ‘YOLO’.

The contested mark is a figurative sign composed of the verbal element ‘YOLO’ written in bold upper cases, the letters ‘Y’ and ‘L’ in a light grey and the two letters ‘O’ are in a darker grey. This element is positioned in the centre of an oval shape in dark grey.

In the contested sign, the words ‘YOU ONLY LIVE ONCE’, positioned on the outline of the oval shape, are barely perceptible as they are in a very small font with white outlines fulfilled in the same colour than the oval. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. As these words are likely to be disregarded by the relevant public given their negligible nature, they will not be taken into consideration.

As to the figurative nature of the signs 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 verbal element ‘YOLO’ perceived by the entire public in the contested sign and by a more than significant part of the public in the earlier sign is meaningful for young people as the acronym for ‘You Only Live Once’. However, for the other part of the public, the element ‘YOLO’ is meaningless. In any event, given the absence of any correlation with the goods in question, this verbal element is distinctive.

Visually, the signs coincide in the letters ‘YOLO’. However, the signs differ in the positioning of the letters, and in their figurative elements. The letters of the earlier sign are written in a specific order and separated by the cross whereas the letters in the contested sign are in a specific font and reproduced on the same line. Therefore, the signs are visually similar to a low degree.

Aurally, the signs are aurally identical.

Conceptually for part of the public, neither of the signs has a meaning. In this regard, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. As seen above, for others the signs convey the same concept and are identical to that extent.

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

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).

In the present case, the goods have been found partly identical and partly dissimilar. They are directed at the public at large with an average degree of attention. The signs are aurally identical, are visually similar to a low degree and the conceptual aspect does not influence the assessment for part of the public whilst for another part the signs are conceptually identical. The earlier mark has a normal degree of distinctiveness.

Both marks share the same verbal element ‘YOLO’. This element is the only verbal element of the contested sign and is the only verbal element of the contested sign which will be perceived by the relevant public.

Therefore, although the coincidences in the signs may be less obvious than the differences in particular considering the visual comparison, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs

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 German trade mark registration No 302 014 004 776.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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 international trade mark registration No 1 239 109 designating the European Union for the figurative sign .

Since these marks are identical to the one which has been compared and cover the same scope of 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vanessa PAGE

Cindy BAREL

María del Carmen SUCH SÁNCHEZ

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.