OPPOSITION No B 3 042 838

Nigel Frieda, Matrix Studio Complex, 91 Peterborough Road, SW6 3BU London, United Kingdom (opponent), represented by Laytons LLP, 2 More London Riverside, SE1 2AP London, United Kingdom (professional representative)

a g a i n s t

Sinna Mohammadi, Hoheschulstraße 1, 22767 Hamburg Germany (applicant), represented by Rechtsanwalt Yusuf Sarwari, Feldstraße 60, 20357 Hamburg, Germany (professional representative).

On 13/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 838 is partially upheld, namely for the following contested goods and services

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products.

Class 43: Providing food and drink; Bar, restaurants; Catering for the provision of food and beverages; Take-out restaurant services; Preparation and provision of carry-out food.

2. European Union trade mark application No 16 721 615 is rejected for all the above contested goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 721 615 for the figurative mark . The opposition is based on European Union trade mark registration No 15 030 703 for 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.

1. The goods and services

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

Class 9: Cameras; Apparatus and instruments, all for recording, reproducing and/or transmitting sound and/or video; video accessories; parts, fittings and accessories for all the aforesaid goods; credit cards, debit cards and loyalty cards; audio and visual recorded media; recording discs; cassettes; DVDs; computer software for computer games; apparatus for the use in cleaning the aforesaid goods; compact discs and computer discs; sound and/or video recordings including cassettes; downloadable electronic game programs and computer software platforms for social networking that may be accessed via the internet, mobile phones, smart phones, tablet computers, computers and wireless devices; tapes; electronically, magnetically and optically recorded data for computers; sound and/or video recording media; eyeglasses and sunglasses; audio electronic apparatus; video games; tapes or wires; computer programs; audio cassettes; cinematic and photographic apparatus and instruments; cinematographic, movie, television, photographic films and motion pictures; sound and/or video recordings; racks adapted to hold records; computer games; mini disc players; exposed films; virtual reality software; CD-ROMs; life jackets; cinematographic films; computer software; telephonic apparatus and instruments; compact disc players; computers; protective helmets; compasses, thermometers and barometers; radios; magnetic data carriers including magnetic data carriers for bearing sound and/or video recordings and magnetic data carriers for recording computer programs or data; mini discs; discs; compact discs; radio and television apparatus and instruments both for reception and transmission; calculators; electronic publications; downloadable electronic publications; video tapes and cartridges all blank or previously recorded; karaoke machines;  video discs; mobile telephones; audio and video tapes; records; audio and video tape players; DVD players; cases, bags, holdalls, carriers and containers all adapted for carrying or for storing any of the aforesaid goods; parts and fittings for all the aforesaid goods.

Class 16: Paper baby bibs; posters; prints, graphic prints, pictures, paintings [framed or unframed]; books; pencil holders; drawing pads; bags and boxes of paper and card; albums; writing cases [sets]; paper bows; printed publications; calendars; printed cards; bookends; paper napkins; boxes of cardboard or paper; rubber erasers; place mats of paper; portraits; paper table napkins; advertisement boards of paper or cardboard; Printed matter; bags [envelopes, pouches] of paper or plastics, for packaging; note books; booklets, bookmarkers; toilet paper; files; paper bags; paper towels; manuals [handbooks]; covers; holders and folders for documents; maps; writing pads; paper table mats; embroidery patterns; photographs; pen holders; musical postcards; electric or non-electric pencil sharpeners; printed matter; textbooks; wrapping paper; paper flower-pot covers; colouring books and pads; stationery; bibs of paper; document files; pencils, boxes for pens and pencils; greetings cards; sketching, loose-leaf notebooks, pads; paper clasps; paper table linen; post cards; pencil cases; paper handkerchiefs; pens, drawing pens; drawing instruments; packaging materials made of paper; magazines; cleansing paper wipes [for removing make up].

Class 29: Meat extracts; jellies, jams, compotes, eggs, milk and milk products; Meat, fish, poultry and game; edible oils and fats; preserved, dried and cooked fruits and vegetables.

Class 30: Yeast, baking-powder; cereal-based snack foods; honey, treacle; salt, mustard; muffins; vinegar, sauces [condiments]; fruit sauces [condiments]; spices; flour and preparations made from cereals, bread, pastry cakes and confectionery; ice; chocolate; Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; biscuits; chocolates; frozen confections; cookies; ices.

Class 31: Malt; fresh fruits and vegetables; live animals; seeds, natural plants and flowers; Agricultural, horticultural and forestry products and grains not included in other classes; none of the aforesaid goods being for animal consumption.

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

Class 35: Advertising; business management; business administration; office functions; operation and supervision of loyalty and incentive schemes; data processing; accounting services; business organisation consultancy; business analysis services; business management consultancy and advisory services; business research services; commercial administration of the licensing of goods and services to others; commercial information services; compilation of business information into computer databases; direct mail advertising; dissemination of advertising materials; document reproduction; management of import-export agencies; personnel and human resource management services; administrative processing of purchase orders; commercial information and advice for consumers; advice on business organization and management; advice to the business; cost price analysis; arranging newspaper subscriptions for others; business management of performing artists; business appraisals; business inquiries; business investigations; business management assistance; commercial or industrial business management assistance; presentation of goods on communication media for retail purposes; professional business consultancy; demonstration of goods; distribution of samples; organization of exhibitions for commercial or advertising purposes; organization of fashion shows for promotional purposes; import-export agencies; layout of advertising, management of commercial licenses for goods and services for third parties; management of creative business; management of order processing, goods, public relations services; marketing; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; on-line advertising; opinion polling; organization of trade fairs for commercial or advertising purposes; outdoor advertising; outsourcing services [business assistance]; professional consultation in the field of business for retail purposes; publication of publicity texts; presentation of products in all media negotiation to retail publicity; radio commercials; retail or wholesale promotion of goods for third parties; public opinion studies; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks; providing business information in the field of social media; providing marketing consulting in the field of social media; online, wholesale and retail services in connection with the sale of soaps, perfumery, essential oils, cosmetics and cosmetic preparations; online, wholesale and retail services in connection with the sale of hair lotions, dentifrices, aromatics [essential oils]; online, wholesale and retail services in connection with the sale of bath salts, bath lotions and bath oils; online, wholesale and retail services in connection with the sale of creams, cosmetic kits, cotton sticks for cosmetic purposes, deodorants for personal use, eau de cologne, eau de toilette and lip balms; online, wholesale and retail services in connection with the sale of shower gels, hair care preparations, shampoos, lotions and hair sprays; online, wholesale and retail services in connection with the sale of hair conditioners and hair styling products; online, wholesale and retail services in connection with the sale of nail and skin care preparations; online, wholesale and retail services in connection with the sale of sun tan and after-sun lotions, creams and oils; online, wholesale and retail services in connection with the sale of deodorants, talcum powder, toiletries and air fresheners; online, wholesale and retail services in connection with the sale of sprays; online, wholesale and retail services in connection with the sale of candles and wicks; online, wholesale and retail services in connection with the sale of models, model kits, ornaments made of metal, key rings, badges and metal hardware; online, wholesale and retail services in connection with the sale of jewellery, horological and chronometric instruments, clocks and watches and cases therefor; online, wholesale and retail services in connection with the sale of, clips, bands and pins; online, wholesale and retail services in connection with the sale of statues and figurines; online, wholesale and retail services in connection with the sale of boxes and cases; online, wholesale and retail services in connection with the sale of watch bands; online, wholesale and retail services in connection with the sale of beads for jewellery; online, wholesale and retail services in connection with the sale of printed matter; online, wholesale and retail services in connection with the sale of maps, photographs, stationery, pens and pencils; online, wholesale and retail services in connection with the sale of pen and pencil holders; online, wholesale and retail services in connection with the sale of drawing pads; online, wholesale and retail services in connection with the sale of embroidery; online, wholesale and retail services in connection with the sale of cases; online, wholesale and retail services in connection with the sale of albums, books, magazines, booklets and bookmarkers; online, wholesale and retail services in connection with the sale of prints, pictures, paintings [framed or unframed], portraits, cards and posters; online, wholesale and retail services in connection with the sale of printed publications; online, wholesale and retail services in connection with the sale of bags and boxes; online, wholesale and retail services in connection with the sale of bibs of paper; online, wholesale and retail services in connection with the sale of bookends; online, wholesale and retail services in connection with the sale of boxes of cardboard or paper; online, wholesale and retail services in connection with the sale of calendars; online, wholesale and retail services in connection with the sale of note books; online, wholesale and retail services in connection with the sale of writing pads; online, wholesale and retail services in connection with the sale of wrapping and packaging materials; online, wholesale and retail services in connection with the sale of napkins, mats, table linen, wipes and towels; online, wholesale and retail services in connection with the sale of handkerchiefs; online, wholesale and retail services in connection with the sale of office requisites; online, wholesale and retail services in connection with the sale of travel kits [leather]; online, wholesale and retail services in connection with the sale of vanity cases; online, wholesale and retail services in connection with the sale of umbrellas and parasols; online, wholesale and retail services in connection with the sale of key cases; online, wholesale and retail services in connection with the sale of mirrors, picture frames and photo frames; online, wholesale and retail services in connection with the sale of bedding, pillows and cushions; online, wholesale and retail services in connection with the sale of household containers; online, wholesale and retail services in connection with the sale of combs, sponges and brushes; online, wholesale and retail services in connection with the sale of glassware, porcelain, earthenware, bowls, plates, dishes, cups, mugs and saucers; online, wholesale and retail services in connection with the sale of pots, glasses and tumblers; online, wholesale and retail services in connection with the sale of kitchenware, tableware, ceramics, crockery, pottery, tea pots, coffee pots, tea caddies, tea strainers, coffee percolators and ice buckets; online, wholesale and retail services in connection with the sale of chopsticks, cocktail stirrers and flasks; online, wholesale and retail services in connection with the sale of brushes; online, wholesale and retail services in connection with the sale of trays; online, wholesale and retail services in connection with the sale of baskets, hangers, brushes and brush goods; online, wholesale and retail services in connection with the sale of wallets, purses, combs, comb cases and vanity cases; online, wholesale and retail services in connection with the sale of perfume sprayers; online, wholesale and retail services in connection with the sale of household utensils; online, wholesale and retail services in connection with the sale of travel bags; online, wholesale and retail services in connection with the sale of bottles; online, wholesale and retail services in connection with the sale of flasks; online, wholesale and retail services in connection with the sale of insulated containers; online, wholesale and retail services in connection with the sale of cool boxes; online, wholesale and retail services in connection with the sale of lunchboxes and lunch containers; online, wholesale and retail services in connection with the sale of heatinsulated containers; online, wholesale and retail services in connection with the sale of sandwich boxes and containers; online, wholesale and retail services in connection with the sale of refrigerating bottles; online, wholesale and retail services in connection with the sale of soap boxes; online, wholesale and retail services in connection with the sale of containers for household or kitchen use; online, wholesale and retail services in connection with the sale of confectioners' decorating bags [pastry bags]; online, wholesale and retail services in connection with the sale of busts of china; online, wholesale and retail services in connection with the sale of terra-cotta or glass; online, wholesale and retail services in connection with the sale of glass caps; online, wholesale and retail services in connection with the sale of china figurines; online, wholesale and retail services in connection with the sale of flower pots; online, wholesale and retail services in connection with the sale of candle holders; online, wholesale and retail services in connection with the sale of tea light holders; online, wholesale and retail services in connection with the sale of napkin rings; online, wholesale and retail services in connection with the sale of scent diffuser trays; online, wholesale and retail services in connection with the sale of bottle trays; online, wholesale and retail services in connection with the sale of lanterns; online, wholesale and retail services in connection with the sale of coasters; online, wholesale and retail services in connection with the sale of place mats; online, wholesale and retail services in connection with the sale of textiles and textile articles; online, wholesale and retail services in connection with the sale of bedding and table covers; online, wholesale and retail services in connection with the sale of bedding, bed linen and cushion covers; online, wholesale and retail services in connection with the sale of cloths, towels, bath sheets; online, wholesale and retail services in connection with the sale of aprons; online, wholesale and retail services in connection with the sale of napkins; online, wholesale and retail services in connection with the sale of gloves; online, wholesale and retail services in connection with the sale of placemats and coasters; online, wholesale and retail services in connection with the sale of clothing, footwear and headgear; online, wholesale and retail services in connection with the sale of belts, pocket handkerchiefs and wristbands [clothing]; online, wholesale and retail services in connection with the sale of lace and embroidery; online, wholesale and retail services in connection with the sale of ribbons, braids, buttons, pins and needles; online, wholesale and retail services in connection with the sale of artificial flowers, fruit, garlands, bunches and wreaths; online, wholesale and retail services in connection with the sale of willow hearts; online, wholesale and retail services in connection with the sale of badges; online, wholesale and retail services in connection with the sale of hair bands and bows for the hair; online, wholesale and retail services in connection with the sale of buckles; online, wholesale and retail services in connection with the sale of decorative articles; online, wholesale and retail services in connection with the sale of threads for embroidery, frills; online, wholesale and retail services in connection with the sale of ornaments; online, wholesale and retail services in connection with the sale of sewing cases; online, wholesale and retail services in connection with the sale of prize ribbons and rosettes; online, wholesale and retail services in connection with the sale of arm and hair bands; online, wholesale and retail services in connection with the sale of belt clasps, brooches [clothing accessories], bows for the hair, pompons and decorations for clothing; online, wholesale and retail services in connection with the sale of hair curlers, hair clips, ribbon [haberdashery]; online, wholesale and retail services in connection with the sale of rugs, mats and matting; online, wholesale and retail services in connection with the sale of toys, games and playthings; online, wholesale and retail services in connection with the sale of playing cards, ornaments and decorations for Christmas trees, nativity articles, Christmas stockings, Christmas crackers, artificial snow and confetti; online, wholesale and retail services in connection with the sale of balloons, party hats; online, wholesale and retail services in connection with the sale of numbers, letters and wall plaques; online, wholesale and retail services in connection with the sale of pegs; online, wholesale and retail services in connection with the sale of meat, fish, poultry, game, meat extracts, preserved, dried and cooked fruits and vegetables; online, wholesale and retail services in connection with the sale of jellies, jams, compotes, eggs, milk and dairy products; online, wholesale and retail services in connection with the sale of edible oils and fats; online, wholesale and retail services in connection with the sale of coffee, tea, cocoa, sugar, honey, treacle, rice, tapioca and sago; online, wholesale and retail services in connection with the sale of flour, preparations made from cereals, bread, pastry and cakes; online, wholesale and retail services in connection with the sale of confectionery, biscuits, cookies and muffins; online, wholesale and retail services in connection with the sale of chocolate, chocolates, ices, ice, frozen confections and cereal-based snack foods; online, wholesale and retail services in connection with the sale of yeast, baking-powder; online, wholesale and retail services in connection with the sale of salt, pepper and mustard; online, wholesale and retail services in connection with the sale of vinegar, sauces [condiments], spices and fruit sauces [condiments]; online, wholesale and retail services in connection with the sale of agricultural, horticultural and forestry products; none of the aforesaid goods being for animal consumption; online, wholesale and retail services in connection with the sale of fresh fruits and vegetables, seeds, natural plants and flowers; none of the aforesaid goods being for animal consumption; online, wholesale and retail services in connection with the sale of foodstuffs; none of the aforesaid goods being for animal consumption; online, wholesale and retail services in connection with the sale of beers, waters, juices and non-alcoholic drinks; online, wholesale and retail services in connection with the sale of syrups and other preparations for making beverages, none of the aforesaid goods being for animal consumption; online, wholesale and retail services in connection with the sale of wines, spirits and alcoholic beverages [except beers]; online, wholesale and retail services in connection with the sale of smokers' articles; advisory and consultancy services relating to all the aforesaid.

Class 41: Education; entertainment; cultural activities; arranging and conducting of colloquiums; conferences, congresses, seminars, symposiums and exhibitions for cultural and education services; education services; entertainment services; entertainment information services; information relating to education and entertainment provided on-line from a computer database or from the Internet; library services; microfilming services; museum facilities; organisation of competitions; production of audio and video tapes and compact disks and CD ROMs; providing on-line electronic publications [not downloadable] from a computer database or from the Internet; publication of books; publication of electronic books and journals on-line; publication of text; rental of audio equipment; rental of sound recording; translation services; providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others.

The contested goods and services are the following:

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products.

Class 42: Technical planning of restaurants; Technical design of restaurants.

Class 43: Providing food and drink; Bar, restaurants; Catering for the provision of food and beverages; Take-out restaurant services; Preparation and provision of carry-out food.

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

All the contested goods in this class are identically contained in the list of the opponent’s goods.

Contested services in Class 42

The contested technical planning of restaurants; technical design of restaurants are services provided by architects, designers and other experts in the construction/design of restaurants. The opponent argues that there is a similarity between these services and the opponent’s services in Class 35 (e.g. business management and administration) on the basis that these services are complementary, may be provided by the same businesses and aimed at the same users. However, the business services covered by the opponent’s mark are intended to help companies manage their business by setting out the strategy or direction of the company and are usually rendered by companies specialised in this specific field such as business consultants. Therefore, the providers of the services at issue clearly differ. Furthermore, there is no complementarity between these services as they are not indispensable to each other. While, indeed, the consumers of both publics could coincide, this is not sufficient to consider these services similar. The nature of the services is different, they have a different purpose and methods of use, and they are not in competition with each other. Therefore, the contested services in this class and the opponent’s business support services in Class 35 (which include business management and administration, advertising, office functions, etc) are dissimilar.

The Opposition Division cannot see any reasons for finding similarity between the contested services in this class and the remaining opponent’s goods and services nor did the opponent provide any arguments regarding any possible reasons for similarity between them. The goods and services are dissimilar as they have different nature, purpose, method of use, distribution channels, producers/providers, consumers and they are neither in competition nor complementary.

It follows that the contested services in this class are dissimilar to all the opponent’s goods and services.

Contested services in Class 43

The contested services in this class are the services of preparations and provision of food and drinks (including bars and take-away restaurants). These services consist of serving food and drinks directly for consumption.

While the mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45), in certain situations these goods and services can be complementary (17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). In some cases consumers may think that responsibility does lie with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs). In such cases, there is a low degree of similarity.

In the present case, the opponent’s mark covers goods such as meat and fish in Class 29. The market reality shows that some butchers or charcuteries may roast chickens or other types of meat. Although those goods are not necessarily consumed on the premises, there is an overlap with the services of a fast food restaurant or take away. The same is true with regard to some fishmongers who offer their customers a selection of fish and seafood to take away or to be cooked and eaten on the premises (in an adjoining restaurant). Even though the comparison is between services on the one hand and goods on the other, the different nature and objectives of those goods and services cannot counteract the similarity which exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services (13/04/2011, T 345/09, Puerta de Labastida, EU:T:2011:173).

Furthermore, the opponent’s list of goods covers various alcoholic and non-alcoholic beverages, for example, coffee in Class 30 and beer in Class 32. Beers are beverages consumed to quench thirst or for enjoyment. Bars entail the activity of preparing and serving alcoholic beverages and more generally drinks. There is a close connection as regards the purpose of beer and coffee on the one hand and bars and provision of drinks on the other, as people go to bars or cafes and other establishments that provide drinks to have a drink and, as the case may be, a beer or coffee. In that sense, the goods and services at issue are complementary to a high degree, since the provision of drinks (including coffee and beers), is the core activity of establishments such as bars or cafeterias.

It follows from the above, that all contested services in this class are similar to a low degree to the opponent’s goods indicated above.

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 are directed at the public at large. The degree of attention is average

3. The signs

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.

Both marks are figurative ones with the common verbal element ‘OC’, which is devoid of any meaning in the EU. However, the verbal elements ‘tastes like home’ present in the contested sign have a meaning for the English-speaking part of the public. They will be understood as a qualification of the food or drink being as good as that prepared or served at home, thus carrying a purely laudatory message. Bearing in mind that the goods and services in question are related to food and drink, their preparation and provision, this part of the sign will be considered non-distinctive.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, the United Kingdom and Malta.

As regards the figurative elements of the contested sign, they consist of the slightly stylised typeface of the letters ‘OC’ and thesimple background shapes and colours, the latter two being quite common and generally serving to highlight the other elements. Therefore, even if the combination of these figurative elements were not devoid of any distinctive character, they would be perceived as primarily decorative elements and are, therefore, weak. Furthermore, 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 same principle is applicable in case of the earlier mark, which consists of the letters ‘OC’ depicted in a stylised typeface, meaning that the verbal element ‘OC’ has a stronger impact than the figurative aspects of its depiction.

Taking into consideration its central position and much larger size compared to the other verbal elements of the contested mark, the word ‘OC’ is the dominant (visually most eye-catching) verbal element of the sign.

Visually, the signs coincide in the verbal element ‘OC’, which is the sole element of the earlier mark and the dominant and most distinctive element of the contested sign. The signs differ in the additional non-distinctive verbal elements ‘tastes like home’ and in the various figurative or graphic elements, all of lower importance for the reasons explained above.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs coincide in the pronunciation of the verbal element ‘OC’, which makes up the whole of the earlier mark and the most distinctive element of the contested mark. Taking into account the much smaller size and position of the additional verbal elements ‘tastes like home’ present in the contested sign, and bearing in mind that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLRG5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), the relevant public would generally be likely to pronounce only the verbal element ‘OC’ when referring to the contested sign.

Therefore, the signs are aurally identical.

Conceptually, the meanings conveyed by the additional verbal elements of the contested sign are non-distinctive as set out above and will therefore not produce any relevant conceptual differences between the signs in the minds of consumers. The coinciding verbal element ‘OC’ will not be associated with any meaning. Therefore, the conceptual aspect does not influence the assessment of similarity.

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 and services 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).

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.

In the present case, the goods in Class 29 have been found identical, the contested services in Class 42 dissimilar and the contested services in Class 43 similar to a low degree to the goods of the opponent. The degree of attention of the relevant public, which is the general public, is average.

The earlier mark has a normal degree of distinctiveness and the signs have been found visually similar to a low degree and phonetically identical on account of their coincidence in the distinctive word element ‘OC’, which is the only element of the earlier mark and the most distinctive and dominant element of the contested sign. The conceptual aspect plays no role in the evaluation of the likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public. Indeed, even if the letter stylisation of ‘OC’ differs and the contested sign contains the additional non-distinctive words ‘tastes like home’ and figurative elements that are not present in the earlier mark, it is conceivable that the relevant consumer, when relying on their imperfect recollection of the signs, will associate the marks. Even in the case of the lowly similar goods and services, due to the imperfect recollection, the consumers may believe that, for instance, a restaurant under the contested mark ‘OC tastes like home’ and the goods under the earlier mark ‘OC’ emanate from the same or economically related entities.

Therefore, the opposition is partially well founded on the basis of the earlier European Union trade mark registration No 15 030 703. It follows from the above that the contested mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark. 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

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 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

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Helen Louise MOSBACK

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.