OPPOSITION No B 2 963 653

Guangzhou Xicha Food Management Co., Ltd., Room 10, Letong Street, Jichang West Road, Baiyun District, Guangzhou, Guangdong, People’s Republic of China (opponent), represented by José Izquierdo Faces, Iparraguirre, 42 — 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Shenzhen Meixixi Catering Management Co. Ltd., 1203-4-2, Dachong Business Centre, No. 9672, Nanshan Road, Yuehai Street, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 09/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 963 653 is upheld for all the contested goods and services, namely:

Class 30: Beverages (cocoa-based -); coffee; coffee-based beverages; coffee beverages with milk; chocolate beverages with milk; tea-based beverages; tea (iced -); honey; molasses for food; tea.

Class 43: Cafés; restaurants; canteens; snack-bars; tea rooms; bar services; hotels; catering (food and drink -); cafeterias; restaurants (self-service -).

2. European Union trade mark application No 16 868 911 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 868 911 for the figurative mark , namely against all the goods and services in Classes 30 and 43. The opposition is based on European Union trade mark registrations No 16 449 291 for the figurative mark and No 16 430 498 for the figurative mark . The opponent invoked Article 8(1)(a) and (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:

EUTM No 16 449 291

Class 30: Coffee flavourings; cocoa; coffee; unroasted coffee; vegetal preparations for use as coffee substitutes; chocolate beverages with milk; coffee-based beverages; artificial coffee; tea; flowers or leaves for use as tea substitutes; iced tea; tea-based beverages; sugar; confectionery; honey; pastries; puddings; cereal-based snack food; cereal preparations; ice cream; sushi.

EUTM No 16 430 498

Class 43: Accommodation bureau services [hotels, boarding houses]; food and drink catering; café services; cafeteria services; canteen services; rental of temporary accommodation; boarding house services; hotel services; restaurant services; boarding house bookings; hotel reservations; self-service restaurant services; snack-bar services; bar services; holiday camp services [lodging]; temporary accommodation reservations; motel services; food sculpting; reception services for temporary accommodation [management of arrivals and departures]; washoku restaurant services; teahouse services.

The contested goods and services are the following:

Class 30: Beverages (cocoa-based -); coffee; coffee-based beverages; coffee beverages with milk; chocolate beverages with milk; tea-based beverages; tea (iced -); honey; molasses for food; tea.

Class 43: Cafés; restaurants; canteens; snack-bars; tea rooms; bar services; hotels; catering (food and drink -); cafeterias; restaurants (self-service -).

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 30

Coffee; coffee-based beverages; chocolate beverages with milk; tea-based beverages; tea (iced); honey; tea are identically contained in both lists of goods (including synonyms).

The contested coffee beverages with milk are included in the broad category of the opponent’s coffee-based beverages. Therefore, they are identical.

The contested beverages (cocoa-based -) are pure cocoa drinks or drinks that are based on cocoa with additional ingredients such as milk or soya milk. The opponent’s cocoa includes cocoa in various forms, such as powder or liquid, as a drink. The contested goods therefore overlap with the opponent’s insofar as they can both be cocoa drinks. Therefore, they are identical.

The contested molasses for food (which is a thick brown syrup produced when sugar is processed) is similar to the opponent’s sugar. The goods under comparison are in competition (as they can be substituted for each other), have the same distribution channels and target the same end users.

Contested services in Class 43

The contested cafés; restaurants; canteens; snack-bars; tea rooms; bar services; hotels; catering (food and drink -); cafeterias; restaurants (self-service -) are identically contained in the opponent’s list of services (including synonyms).

2. The signs

Earlier trade marks	Contested sign

Both the earlier marks and the contested sign are figurative marks, consisting in the verbal element ‘HEYTEA’. In the earlier marks, the verbal element is written in standard lower case black letters, while in the contested sign the verbal element is depicted in a fairly standard typeface using upper case black letters.

According to settled case-law, a European Union trade mark application should be considered identical to an earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C‑291/00, Arthur et Félicie, EU:C:2003:169, § 50‑54).

In the present case, the difference between the marks, namely the differing fonts and the use of lower case letters in the earlier marks and upper case letters in the contested sign, are insignificant; they will in all likelihood go unnoticed by the average consumer. Therefore, notwithstanding the aforementioned minor differences, the signs are considered identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods and services, namely beverages (cocoa-based -); coffee; coffee-based beverages; coffee beverages with milk; chocolate beverages with milk; tea-based beverages; tea (iced ‑); honey; tea in Class 30 and cafés; restaurants; canteens; snack-bars; tea rooms; bar services; hotels; catering (food and drink -); cafeterias; restaurants (self-service -) in Class 43. Furthermore, the remaining contested goods were found to be similar to those covered by the earlier trade marks. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods, namely molasses for food in Class 30.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 16 449 291 and No 16 430 498. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Irina SOTIROVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.