OPPOSITION No B 2 913 641

Granarolo S.P.A., Via Cadriano 27/2, 40127 Bologna, Italy (opponent), represented by Perani & Partners SPA, Piazza Armando Diaz 7, 20123 Milano, Italy (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 11/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 913 641 is upheld for all the contested goods.

2. European Union trade mark application No 16 549 701 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 16 549 701 for the figurative mark . The opposition is based on European Union trade mark registration No 9 786 658 for the word mark ‘YOMO’. 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.

a) The goods

The good on which the opposition is based is, inter alia, the following:

Class 30: Ice.

After final opposition decision No B 2 902 222, the remaining contested good is the following:

Class 30: Ice.

Ice is identically contained in both lists of goods.

b) 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. Considering the low price of the goods and their nature, the degree of attention of the public is considered to be low.

c) The signs and distinctiveness of the earlier mark

YOMO
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 earlier mark is a word mark, ‘YOMO’. 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 opponent, 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 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 mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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.

The contested mark is a figurative sign composed of the verbal element ‘YOLO’ written in bold upper case, the letters ‘Y’ and ‘L’ in light grey and the two letters ‘O’ in darker grey. This element is positioned in the centre of an oval with a dark-grey frame. The words ‘YOU ONLY LIVE ONCE’, on the upper part of the frame, are barely perceptible as they are in a very small font with white outlines filled in the same colour as 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.

The figurative elements, namely the stylisation and the oval, will be perceived as ordinary graphical means of bringing the verbal elements to the public’s attention. The public is used to perceiving such depictions as ornamental elements and will instantly attribute more trade mark significance to the verbal element of the sign ‘YOLO’. This verbal element will be understood by some of the public as the acronym for ‘You Only Live Once’. However, for the rest 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.

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. Considering the impact of the conceptual comparison between the signs, the Opposition Division finds it appropriate to focus the comparison between the signs on the part of the public for which the word element ‘YOLO’ is meaningless. Thus, both marks are meaningless.

Visually, the signs coincide in the letters ‘YO*O’. However, they differ in their third letter, ‘M’ in the earlier mark and ‘L’ in the contested sign. Moreover, the signs also differ in the contested sign’s figurative elements, even if these have less impact on the consumer than the element ‘YOLO’.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘YO*O’, present identically in both signs. The pronunciation differs in the sound of their third letters, ‘M’ and ‘L’, respectively. Therefore, the earlier mark and the contested sign’s word element share the same beginning, ending and length.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the part of the public on which the analysis is focused. 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.

d) 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 identical goods target the public at large with a low degree of attention. The signs are visually similar to an average degree and aurally similar to a high degree whereas a conceptual comparison is not possible and does not affect the assessment. The earlier mark is deemed to be distinctive to a normal degree.

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).

Considering all the above, there is a likelihood of confusion on the part of the public for whom ‘YOLO’ 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 9 786 658. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition 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 opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Vita VORONECKAITE

Cindy BAREL

Alicia BLAYA ALGARRA

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.