OPPOSITION No B 2 980 400

La Lorraine Bakery Group, naamloze vennootschap, Elisabethlaan 143, 9400, Ninove, Belgium (opponent), represented by Gevers, Brussels Airport Business Park

Holidaystraat, 5, 1831, Diegem, Belgium (professional representative)

a g a i n s t

Artur Tovmasyan, Montagu Mansions 88, W1U 6LF London, United Kingdom (applicant), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative).

On 05/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 400 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; edible oils and fats; prepared meals; soups and potato crisps; fruit salads, vegetable salads.

Class 30: Crepes; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches; prepared meals; pizzas, pies and pasta dishes; pancakes; blinis; noodle dishes; pastries; filled pastry made of sweet dough; pastry flour; farinaceous foods; biscuits; dry biscuits; pies; puddings [casseroles]; sweet pastry for confectionery.

Class 32: Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; shandy, de-alcoholised drinks, non-alcoholic beers and wines.

Class 35: Retail, online retail, and wholesale services related to the sale of meat, fish, poultry and game, meat extracts; retail, online retail, and wholesale services related to the sale of preserved, dried and cooked fruits and vegetables; retail, online retail, and wholesale services related to the sale of jellies, jams, compotes; retail, online retail, and wholesale services related to the sale of eggs, milk and milk products; retail, online retail, and wholesale services related to the sale of edible oils and fats; retail, online retail, and wholesale services related to the sale of prepared meals, soups and potato crisps; retail, online retail, and wholesale services related to the sale of fruit salads, vegetable salads; retail, online retail, and wholesale services related to the sale of crepes; retail, online retail, and wholesale services related to the sale of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; retail, online retail, and wholesale services related to the sale of flour and preparations made from cereals; retail, online retail, and wholesale services related to the sale of bread, pastry and confectionery; retail, online retail, and wholesale services related to the sale of edible ices; retail, online retail, and wholesale services related to the sale of honey, treacle; retail, online retail, and wholesale services related to the sale of yeast, baking-powder; retail, online retail, and wholesale services related to the sale of salt, mustard, vinegar; retail, online retail, and wholesale services related to the sale of sauces (condiments); retail, online retail, and wholesale services related to the sale of spices; retail, online retail, and wholesale services related to the sale of sandwiches; retail, online retail, and wholesale services related to the sale of prepared meals, pizzas, pies and pasta dishes; retail, online retail, and wholesale services related to the sale of pancakes, blinis; retail, online retail, and wholesale services related to the sale of noodle dishes; retail, online retail, and wholesale services related to the sale of pastries, filled pastry made of sweet dough, pastry flour, farinaceous foods; retail, online retail, and wholesale services related to the sale of biscuits, dry biscuits; retail, online retail, and wholesale services related to the sale of pies, puddings [casseroles]; retail, online retail, and wholesale services related to the sale of sweet pastry for confectionery; retail, online retail, and wholesale services related to the sale of beers; retail, online retail, and wholesale services related to the sale of mineral and aerated waters; retail, online retail, and wholesale services related to the sale of non-alcoholic drinks; retail, online retail, and wholesale services related to the sale of fruit drinks and fruit juices; retail, online retail, and wholesale services related to the sale of syrups for making beverages; retail, online retail, and wholesale services related to the sale of shandy, de-alcoholised drinks, non-alcoholic beers and wines; business consultancy services; advertising, marketing and promotional services; providing business advice and assistance relating to franchising; administration of the business affairs of franchises; information and advice to commercial consumers; advice in relation to the organization and management of businesses; professional consultancy in the field of business; presentation of goods on communication media, for retail purposes; promotion of goods for third parties; management of commercial licenses for goods and services for third parties; procurement services for third parties [purchasing and providing entrepreneurs with goods]; Information and advice in relation to the aforesaid services.

Class 43: Services for providing food and drink; restaurant, bar and catering services; creperies; takeaway services.

2. European Union trade mark application No 16 801 722 is rejected for all the above 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 16 801 722 for the word mark ‘PANCS’. The opposition is based on Benelux trade mark registration No 578 177 for the word mark ‘PANOS’; international trade mark registrations designating European Union No 1 158 285 and No 1 349 058 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.

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 international trade mark registrations designating European Union No 1 158 285 (earlier mark 1) and No 1 349 058 (earlier mark 2), that are not subject to the proof of use requirement.

1. The goods and services

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

International trade mark registration designating European Union No 1 158 285 (earlier mark 1)

Class 5: Diet foods and prepared diet foods, including diet bread and diet pastries, all aforementioned goods being for medical use.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats; preserved foodstuffs included in this class; prepared foodstuffs included in this class.

Class 30: Coffee, tea, cocoa, sugar, rice, preparations made from rice, artificial coffee; flour and preparations made from cereals, bread, filled and stuffed bread rolls included in this class, pastry and confectionery, ices; honey, treacle; salt, mustard; vinegar, sauces; salad dressings; spices; ice cream, prepared foodstuffs included in this class; preserved food included in this class.

International trade mark registration designating European Union No 1 349 058 (earlier mark 2)

Class 30: Rice, flour and cereal preparations; bread, pastry and confectionery; sandwiches; candies and chocolate products; ice cream; prepared meals and foods, including cooked meals; coffee, cocoa and tea-based beverages; dough and pasta, including pasta, pizza, spring rolls, quiches, tortillas and tacos; snacks included in this class; sugar, rice, rice-based preparations; coffee; sandwiches; honey, molasses; salt, mustard; vinegar, sauces; vinaigrettes (French dressings); spices; ice; canned food included in this class.

Class 35: Retail services in the field of food and beverages; company services and company management in the context of retail trade and company hospitality; advertising, advertising and sales promotion; marketing, market research and analysis; administrative services provided for establishing and concluding franchise agreements and shop-in-shop concepts in connection with catering; advertising, distribution of advertising material; provision of company assistance in the establishment and operation of companies, in particular franchises; market study; compilation and processing of statistical information on the basis of market studies; public relations and selection of personnel.

Class 43: Restaurant, cafeteria and cafe services; catering services [beverages and meals]; sandwich bar services.

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; edible oils and fats; prepared meals; soups and potato crisps; fruit salads, vegetable salads.

Class 30: Crepes; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches; prepared meals; pizzas, pies and pasta dishes; pancakes; blinis; noodle dishes; pastries; filled pastry made of sweet dough; pastry flour; farinaceous foods; biscuits; dry biscuits; pies; puddings [casseroles]; sweet pastry for confectionery.

Class 32: Beers; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; shandy, de-alcoholised drinks, non-alcoholic beers and wines.

Class 35: Retail, online retail, and wholesale services related to the sale of meat, fish, poultry and game, meat extracts; retail, online retail, and wholesale services related to the sale of preserved, dried and cooked fruits and vegetables; retail, online retail, and wholesale services related to the sale of jellies, jams, compotes; retail, online retail, and wholesale services related to the sale of eggs, milk and milk products; retail, online retail, and wholesale services related to the sale of edible oils and fats; retail, online retail, and wholesale services related to the sale of prepared meals, soups and potato crisps; retail, online retail, and wholesale services related to the sale of fruit salads, vegetable salads; retail, online retail, and wholesale services related to the sale of crepes; retail, online retail, and wholesale services related to the sale of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; retail, online retail, and wholesale services related to the sale of flour and preparations made from cereals; retail, online retail, and wholesale services related to the sale of bread, pastry and confectionery; retail, online retail, and wholesale services related to the sale of edible ices; retail, online retail, and wholesale services related to the sale of honey, treacle; retail, online retail, and wholesale services related to the sale of yeast, baking-powder; retail, online retail, and wholesale services related to the sale of salt, mustard, vinegar; retail, online retail, and wholesale services related to the sale of sauces (condiments); retail, online retail, and wholesale services related to the sale of spices; retail, online retail, and wholesale services related to the sale of sandwiches; retail, online retail, and wholesale services related to the sale of prepared meals, pizzas, pies and pasta dishes; retail, online retail, and wholesale services related to the sale of pancakes, blinis; retail, online retail, and wholesale services related to the sale of noodle dishes; retail, online retail, and wholesale services related to the sale of pastries, filled pastry made of sweet dough, pastry flour, farinaceous foods; retail, online retail, and wholesale services related to the sale of biscuits, dry biscuits; retail, online retail, and wholesale services related to the sale of pies, puddings [casseroles]; retail, online retail, and wholesale services related to the sale of sweet pastry for confectionery; retail, online retail, and wholesale services related to the sale of beers; retail, online retail, and wholesale services related to the sale of mineral and aerated waters; retail, online retail, and wholesale services related to the sale of non-alcoholic drinks; retail, online retail, and wholesale services related to the sale of fruit drinks and fruit juices; retail, online retail, and wholesale services related to the sale of syrups for making beverages; retail, online retail, and wholesale services related to the sale of shandy, de-alcoholised drinks, non-alcoholic beers and wines; business consultancy services; advertising, marketing and promotional services; providing business advice and assistance relating to franchising; administration of the business affairs of franchises; information and advice to commercial consumers; advice in relation to the organization and management of businesses; professional consultancy in the field of business; presentation of goods on communication media, for retail purposes; promotion of goods for third parties; management of commercial licenses for goods and services for third parties; procurement services for third parties [purchasing and providing entrepreneurs with goods]; Information and advice in relation to the aforesaid services.

Class 43: Services for providing food and drink; restaurant, bar and catering services; creperies; takeaway services; information in relation to all the aforesaid services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’ used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 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 meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, eggs, milk and milk products; edible oils and fats are identically contained in both lists of goods of the contested sign and earlier mark 1.

The contested potato crisps are included in the broad category of, or overlap with, the opponent’s dried and cooked vegetables of earlier mark 1. Therefore, they are identical.

The contested soups are highly similar to the opponent’s meat extracts as they can coincide in nature (both can be in liquid or dried form), method of use (add water), distribution channels, relevant public and producer/provider. They are also in competition in the sense that one can be used in substitution for the other when meat extracts are used as simple bouillon broths.

The contested compotes are similar to the opponent’s jams of earlier mark 1. They have the same producers, distribution channels and relevant public.

The contested fruit salads, vegetable salads are fruits and vegetables in preserved forms, such as in cans or in plastic bags, and therefore they overlap with and are identical to the opponent’s preserved fruits and vegetables. Therefore, they are identical.

The applicant argues that the term ‘prepared’ has a different meaning in the opponent’s expression ‘prepared foodstuffs’ from in its own ‘prepared meals’. The Opposition Division does not perceive such a difference as the term ‘foodstuff’ used in the opponent’s expression ‘prepared foodstuff’ (earlier mark 1) refers to ‘any material, substance, etc, that can be used as food’ (information extracted from Collins Dictionary on line on 18/10/2019 at https://www.collinsdictionary.com/dictionary/english/foodstuff,) and, therefore, it can include the term ‘meals’ used in the applicant’s expression ‘prepared meals’.

Therefore, the applicant’s expression prepared meals in Class 29 can be considered a synonym for the opponent’s term ‘prepared foodstuffs’.

The Opposition Division considers that the contested prepared meals as well as the opponent’s term prepared foodstuffs included in this class covered by earlier mark 1, have a certain vagueness as they do not specify which type of food they are made of. However, they have some relevant characteristic in common, at least as far as they concern prepared meals/foodstuffs, since their manufacturers, distribution channels and targeted consumers may be the same. It follows that these goods are considered to be similar to at least a low degree. Furthermore, the contested prepared meals are also similar to a low degree to the opponent’s cooked fruits and vegetables in Class 29, which is not a vague term, for the same reasons explained above.

Contested goods in Class 30

Coffee, tea, cocoa, sugar, rice, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; honey, treacle; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches are identically contained in both lists of goods (i.e. the list of the contested goods and the list of goods covered by earlier marks 1 and 2).

The contested pies (mentioned twice); pancakes; blinis; pastries; filled pastry made of sweet dough; biscuits; dry biscuits; crepes are included in or overlap with the opponent’s preparations made from cereals (covered by earlier marks 1 and 2, despite the slightly different wordings). Therefore, they are identical.

The contested pastry flour is included in the broad category of the opponent’s flour (covered by earlier marks 1 and 2). Therefore, they are identical.

The contested sweet pastry for confectionery is included in the broader category of the opponent’s pastry (covered by earlier marks 1 and 2). Therefore, they are identical.

The contested farinaceous foods include as a broader category the opponent’s pasta (covered by earlier mark 2). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested tapioca; sago are similar to flour as they usually coincide in producers, distribution channels and method of use. Furthermore, they are in competition.

The contested yeast; baking-powder are similar to flour (covered by earlier marks 1 and 2) as they usually coincide in producer, relevant public and distribution channels.

The contested pizza is similar to the opponent’s doughs (covered by earlier mark 2) as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested pasta dishes, noodle dishes are similar to the opponent’s pasta (covered by earlier mark 2) as they have the same nature. They can coincide in producer, relevant public and distribution channels.

The contested puddings [casseroles] are similar to a low degree to the opponent’s preparation made from cereals (covered by earlier marks 1 and 2), as they usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

The contested prepared meals in Class 30 are identically contained in the opponent goods of earlier mark 2. The expression ‘prepared meals’ have a certain vagueness.

However, the Opposition Division considers these goods (covered by the opponent’s mark and earlier mark 2) have some relevant characteristic in common since at least their manufacturers, distribution channels and targeted consumers may be the same. It follows that these goods are considered to be similar to at least a low degree. Furthermore, the contested prepared meals are also similar to a low degree to the opponent’s filled and stuffed bread rolls of earlier marks 1 (which are not vague) for the same reasons explained above.

Contested goods in Class 32

The contested non-alcoholic drinks; de-alcoholised drinks are alcohol-free beverages which can be coffee based. Contrary to the applicant’s opinion, they are similar to the opponent’s coffee in Class 30 (earlier marks 1 and 2) insofar as they are produced by the same undertakings, target the same relevant public and have the same distribution channels. Moreover, some of these goods are in competition.

The contested syrups for making beverages, can also be coffee based. These goods and the opponent’s coffee (earlier marks 1 and 2) usually coincide in relevant public, distribution channels and method of use with the opponent’s coffee (earlier marks 1 and 2). Therefore, they are similar to a low degree.

The contested beers; mineral and aerated waters; fruit drinks and fruit juices; shandy, non-alcoholic beers and wines are all alcohol and alcohol-free drinks. They are similar to a low degree to the opponent’s services of restaurants of earlier mark 2; since these goods and services coincide in distribution channels and points of sale, are complementary and frequently come from the same kind of undertakings.

Contested services in Class 35

The contested retail, online retail, and wholesale services related to the sale of meat, fish, poultry and game, meat extracts; retail, online retail, and wholesale services related to the sale of preserved, dried and cooked fruits and vegetables; retail, online retail, and wholesale services related to the sale of jellies, jams, compotes; retail, online retail, and wholesale services related to the sale of eggs, milk and milk products; retail, online retail, and wholesale services related to the sale of edible oils and fats; retail, online retail, and wholesale services related to the sale of prepared meals, soups and potato crisps; retail, online retail, and wholesale services related to the sale of fruit salads, vegetable salads; retail, online retail, and wholesale services related to the sale of crepes; retail, online retail, and wholesale services related to the sale of coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; retail, online retail, and wholesale services related to the sale of flour and preparations made from cereals; retail, online retail, and wholesale services related to the sale of bread, pastry and confectionery; retail, online retail, and wholesale services related to the sale of edible ices; retail, online retail, and wholesale services related to the sale of honey, treacle; retail, online retail, and wholesale services related to the sale of yeast, baking-powder; retail, online retail, and wholesale services related to the sale of salt, mustard, vinegar; retail, online retail, and wholesale services related to the sale of sauces (condiments); retail, online retail, and wholesale services related to the sale of spices; retail, online retail, and wholesale services related to the sale of sandwiches; retail, online retail, and wholesale services related to the sale of prepared meals, pizzas, pies and pasta dishes; retail, online retail, and wholesale services related to the sale of pancakes, blinis; retail, online retail, and wholesale services related to the sale of noodle dishes; retail, online retail, and wholesale services related to the sale of pastries, filled pastry made of sweet dough, pastry flour, farinaceous foods; retail, online retail, and wholesale services related to the sale of biscuits, dry biscuits; retail, online retail, and wholesale services related to the sale of pies, puddings [casseroles]; retail, online retail, and wholesale services related to the sale of sweet pastry for confectionery; retail, online retail, and wholesale services related to the sale of beers; retail, online retail, and wholesale services related to the sale of mineral and aerated waters; retail, online retail, and wholesale services related to the sale of non-alcoholic drinks; retail, online retail, and wholesale services related to the sale of fruit drinks and fruit juices; retail, online retail, and wholesale services related to the sale of syrups for making beverages; retail, online retail, and wholesale services related to the sale of shandy, de-alcoholised drinks, non-alcoholic beers and wines are all retail and wholesale services related to foodstuff and beverages. They are either identical or similar to the opponent’s retail services in the field of food and beverages. This is because part of these contested services (i.e. all the contested retail services in relation to beverages and foodstuff) are included in the opponent’s retail services in the field of food and beverages and another part of the contested services (i.e. all the wholesale services in relation to foodstuff and beverage) may coincide at least in nature and purpose with the opponent’s retail services in the field of food and beverages. Moreover, wholesalers sometimes also provide retail services and, therefore, the commercial origin of these services can be the same. Therefore, all the contested services are at least similar to the opponent’s services.

The contested information and advice in relation to the aforesaid services (i.e. to the abovementioned retail and wholesale services) are business information services in relation to wholesale and retail services. Therefore, they are at least similar to the opponent’s company services and company management in the context of retail trade and company hospitality as they have same or similar purposes. Moreover, they can be provided by the same undertakings to the same relevant public through the same distribution channels.

The contested business consultancy services; information and advice in relation to the aforesaid services overlap with the opponent’s company services and company management in the context of retail trade and company hospitality. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested marketing and advertising services are identically mentioned in the opponent’s list of services (earlier mark 2) and the contested promotional services is included or overlap with the opponent’s advertising services (earlier mark 2). Therefore, they are identical.

The contested information and advice in relation to the aforesaid services (i.e. advertising, marketing and promotional services) are identical to the opponent’s advertising; marketing because they are included or overlap with the opponent’s services.

The contested providing business advice and assistance relating to franchising; information and advice in relation to the aforesaid services are included in the broader category of the opponent’s provision of company assistance in the establishment and operation of companies, in particular franchises (earlier mark 2). Therefore, they are identical.

The contested presentation of goods on communication media, for retail purposes; promotion of goods for third parties; information and advice in relation to the aforesaid services are included in the broader category of the opponent’s advertising. Therefore, they are identical.

The contested administration of the business affairs of franchises; information and advice in relation to the aforesaid services are at least similar to the opponent’s provision of company assistance in the establishment and operation of companies, in particular franchises as they have the same nature and can be provided by the same companies to the same public through the same commercial channels.

The contested information and advice to commercial consumers; advice in relation to the organization and management of businesses; professional consultancy in the field of business; information and advice in relation to the aforesaid services are all services intended to provide advice and information relating to commercial business management and organisation. Therefore, they are at least similar to the opponent’s provision of company assistance in the establishment and operation of companies, in particular franchises as they have the same nature and similar purposes. Moreover, they can be provided by the same undertakings to the same relevant public through the same commercial channels.

The contested management of commercial licenses for goods and services for third parties; procurement services for third parties [purchasing and providing entrepreneurs with goods]; information and advice in relation to the aforesaid services are at least similar to a low degree to the opponent’s administrative services provided for establishing and concluding franchise agreements and shop-in-shop concepts in connection with catering (earlier mark 2) as they can be provided by the same companies. Moreover, they can coincide in relevant public and distribution channels.

Contested services in Class 43

Contrary to the applicant’s opinion, the contested creperies; takeaway services are considered a kind of ‘restaurant service’.

The contested services for providing food and drink; restaurant, bar and catering services; creperies; takeaway services are identical to the opponent’s restaurant, cafeteria and cafe services; catering services [beverages and meals], either because they are identically contained or because they are included or include, as a broader category the opponent’s services.

The contested information and advice in relation to the aforesaid services (i.e. services for providing food and drink; restaurant, bar and catering services; creperies; takeaway services) are dissimilar to all the opponent’s services in Class 43 (earlier mark 2). Even if they are related to the services in Class 43 their nature and purposes is different. Moreover, they are offered by different companies through different commercial channels. They are also dissimilar to all the other opponent’s goods and services in Classes 5, 29, and 30 (earlier mark 1), 30 and 35 (earlier mark 2) insofar as their nature and purpose are different. They are not provided by the same manufacturers and are not in competition nor complementary.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as some business, administrative and advertising services in Class 35.

The public’s degree of attentiveness may vary from average (e.g. some kind of foodstuff and beverages in Classes 29, 30 and 32) to high (e.g. some business, administrative and advertising services in Class 35) depending on the price or terms and conditions of the goods and services purchased.

Regarding the applicant’s claim concerning the high level of attention of the consumers buying foodstuff, the Opposition Division deems that, according to the case-law cited below, the level of attention should be considered average.

As to foodstuffs for consumption by the end consumer in Classes 29 and 30, according to case-law, when purchasing them, the average consumer’s attention is neither low (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145, § 49) nor particularly high (17/12/2010, T‑336/08, Hase, EU:T:2010:546, § 19).

3. The signs

	PANCS
Earlier trade marks	Contested sign

The relevant territory is 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As pointed out by the applicant, in some languages the verbal element of the earlier marks (PANOS) is meaningful (e.g. in Portuguese it means ‘cloth’). The applicant also argued that the relevant public would identify the sequence of letters ‘PAN’ in the contested sign and earlier marks as it is a meaningful word in certain languages such as Spanish (pan), Italian (pane) and French (pain) with the meaning of ‘bread’, and therefore it is weak in relation to some goods and services. Contrary to the applicant’s opinion, the Opposition Division considers that the verbal elements ‘PANOS’ and ‘PANCS’ will not be associated to any meaning, at least by a part of the relevant public (even by that part for which the sequence of letters ‘PAN’ is meaningful), as it would be artificial to dissect them in order to find semantic contents. However, it cannot be excluded that for a part of the public for which the sequence of letters ‘PAN’ means ‘bread’, because this word exists as such or because similar words exist, the verbal elements ‘PANOS’ and ‘PANCS’ of the marks may be allusive of the fact that some goods and services in Classes 29, 30 and 43 are made of or are related to ‘bread’.

For these reasons the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public, such as the Danish-, German- and Swedish-speaking part of the relevant public, for which neither the verbal elements PANOS/PANCS, of the earlier marks and the contested sign respectively, nor the sequence of letters ‘PAN’ have any meaning.

As stated above, for the relevant public the verbal elements ‘PANOS’ and ‘PANCS’, of the earlier marks and the contested sign respectively, are meaningless and, therefore, distinctive in relation to the relevant goods and services.

Since the contested sign is a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the word is represented in upper- or lower-case letters or in a combination thereof.

The figurative element of the earlier marks consists of three white devices resembling petals or leaves within a yellow semicircle. Contrary to the applicant’s opinion, the yellow semicircle as well as the three white devices will be perceived as decorative elements with low trade mark significance and are, therefore, weak.

Moreover, when signs consist of both verbal and figurative components, the impact of the figurative elements on the consumer is, in principle, less than that of the verbal elements. 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; 19/12/2011, R 233/2011-4, BEST TONE (FIG.MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (FIG.MARK) / DEVICE OF AN ELEPHANT (FIG.MARK), § 59).

The signs under comparison have no elements that could be considered more dominant than other element.

Visually, the signs coincide in the sequence of the letters ‘PAN*S’ of their verbal elements, which are the same length, and they differ in the fourth letter in each of the verbal elements, namely ‘O’ in the earlier marks and ‘C’ in the contested sign. The signs differ in the figurative elements and in the slight stylisation of the verbal element of the earlier marks, although the figurative aspects of the earlier marks are less relevant for the reasons explained above.

The shortness of the signs can have an impact on their comparison as in short words even small differences are more likely to be perceived. Contrary to the applicant’s opinion, the signs under comparison are not short signs, since they consist of five letters each. Signs with three or fewer letters/numbers are considered by the Office to be short signs (Guidelines of the Office, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Comparison of signs, point 3.4.6.3, Short signs). However, even if the marks at issue were considered relatively short, what matters more in the current comparison is the fact that the signs are all composed of a single verbal element in which four letters coincide in the same order. Furthermore, the non-coinciding letters appear in a less conspicuous position, namely near the end of the sequence of letters that the signs have in common. It is also noted that the differing letters of the signs present some graphic similarities as the letter ‘O’ of the earlier marks has the shape of a circle and the letters ‘C’ of the contested sign has the shape of a non-finished circle.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the letters ‛PAN*S, present identically in both signs. The pronunciation differs only in the sound of the penultimate letter of the signs (‘O’/’C’). However, this difference has a certain impact on the rhythm and intonation of the signs.

Therefore, the signs are similar to a below-average degree.

Conceptually, neither of the signs has a meaning as a whole. As the figurative element of the earlier marks will evoke the concept of flower petals or leaves the signs are not conceptually similar. However, the conceptual aspect will be significantly reduced due to the fact that this figurative element of the earlier marks has a low trade mark significance, as explained above. In fact, the public will not pay attention to this element and their attention will be focused on the meaningless distinctive elements ‘PANOS’ and ‘PANCS’.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of a weak element in the marks, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the relevant goods and services are partly identical, partly similar to varying degree and partly dissimilar. The earlier marks as a whole have a normal degree of distinctiveness. The level of attention of the relevant public varies from average to high.

The signs are visually similar to an above-average degree and aurally similar to a below-average degree to the extent that they coincide in four out of five letters in their sole verbal elements. The signs are not conceptually similar.

However, as stated above, the fact that the marks are not conceptually similar should not be overemphasised as it arises from the presence of a figurative element in the earlier marks that is weak.

In this regard, the Opposition Division finds that the differences created by the figurative elements of the earlier marks as well as the stylisations of the signs have lesser impact on the overall impressions created by the signs, for the reasons explained above in section c).

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) and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, the Opposition Division concludes that the signs are sufficiently similar to cause a likelihood of confusion on a part of the relevant public, including in relation to goods and services that have been found similar to a low degree.

The applicant argues that the sequence of letters ‘PAN’ included in both signs has a low distinctive character given that many trade marks include the sequence of letters ‘PAN’ in relation to foodstuff. In support of his argument the applicant submitted a list of EU trade mark registrations including the sequence of letters ‘PAN’.

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 evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that including the sequence of letters ‘PAN’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also submitted three pages of pictures showing the sequence of letters ‘PAN’ or ‘PANE’. The Opposition Division notes that the printouts provided by the applicant cannot demonstrate that the sequence of letters ‘PAN’ has become customary in trade in relation to the goods and services at issue. In fact, it is not known whether or where these pictures were made public, whether actual sales were indeed generated and, if so, where and to what extent. Moreover, the pictures submitted by the applicant show the sequence of letters ‘PAN’ or ‘PANE’ alone or as clearly identifiable components, which is not the case at issue, as explained above. 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 Danish-, German- and Swedish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registrations designating European Union No 1 158 285 and No 1 349 058. 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.

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 marks.

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) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark Benelux trade mark registration No 578 177.

Since this mark covers the same or a narrower scope of goods than those compared the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services and there is no need to examine the proof of use in relation to this trade mark.

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

Catherine MEDINA

Angela DI BLASIO

María del Carmen COBOS PALOMO

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.