OPPOSITION No B 3 073 915

Asedir Gestión, S.L., Avda de Navarra, 9-4 Bajo 3, 20800 Zarautz, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012, Bilbao, Spain (professional representative)

a g a i n s t

Wokbox s.r.o., Na Hanspaulce 1664/6, 160 00 Praha 6, Czech Republic (applicant), represented by Jindřich Vodička, Vojtěšská 197/16, 11000 Prague, Czech Republic (professional representative).

On 20/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 915 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 941 321 ‘WOKIN’ (word mark), namely against all the goods and services in Classes 30 and 43. The opposition is based on:

Earlier right No. 1: European Union trade mark registration No 15 268 857 ‘OKIN’ (word mark)

Earlier right No. 2: European Union trade mark registration No 13 868 781 (figurative mark).

Earlier right No. 3: European Union trade mark registration No 13 868 815 (figurative mark)

Earlier right No. 4: Spanish trade mark registration No M 1 922 795 ‘OKIN’ (word mark)

For clarification purposes, it is to be noted that Earlier right No. 3 is listed twice in the Notice of Opposition. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Earlier right No. 1

Class 43: Rental of cooking apparatus; Rental of cooking apparatus; Rental of tents; Bars; Snack-bars; Cafés; Restaurants; Restaurants; Catering; Catering; Catering; Cafés; Canteens; Self-service restaurants; Cafés.

Earlier rights No. 2 and 3

Class 30: Frozen pastes for bakery products and pastry; Ready-made dishes containing pasta; Coffee; Tea; Cocoa; Sugar; Rice; Tapioca; Sago; Artificial coffee, namely vegetal preparations for use as artificial coffee, Chicory [coffee substitute]; Flour and preparations made from cereals, Namely bean meal, Bean meal, Bean meal, Bean meal, Bean meal, Maize flour, Mustard meal, Barley meal, Soya flour, Wheat flour, Wheat flour, Maize, milled, Husked barley, Barley (Crushed -), Potato flour, Tapioca flour, Nut flours; Bread; Sugar and confectionery, Namely confectionery for decorating Christmas trees, Rusks, Cookies, Malt biscuits, Peppermint candy, Peppermint candy, Sweetmeats [candy], Waffles, Waffles, Waffles, Buns, Buns, Cakes, Cakes; Caramels, Sweetmeats, Confectionery, Popcorn, Pancakes, Pancakes, Pancakes, Gingerbread, Gingerbread, Fondants, Petits fours [cakes], Macaroons [pastry], Mint for confectionery, Nutmeg, Salted tarts, Pies, Lozenges [confectionery], Petit-beurre biscuits, Petit-beurre biscuits, Puddings, Pralines, Pralines, Pralines, Liquorice [confectionery], Tarts, Meat pies, Pastry crust, Almond confectionery, Peanut confectionery, Peanut confectionery, Stick liquorice [confectionery], Crackers, Custard, Fruit jellies [confectionery], Fruit jellies [confectionery], Muesli, Rice cakes, Cake frosting [icing], Mousses (Chocolate -), Mousses (Dessert -) [confectionery], Ham glaze, Cream of tartar for culinary purposes, Pastry dough, Chocolate decorations for cakes, Cake decorations made of candy, Chocolate-coated nuts, Rice puddings, Baozi [stuffed buns]; Edible ices; Honey; Golden syrup; Yeast; Baking powder; Salt; Mustard; Vinegar; Sauces (condiments), namely almond paste, flavourings, other than essential oils, for pastries and desserts, ketchup (sauce), meat tenderisers for domestic use, food flavourings, other than essential oils, flavourings for food, other than essential oils, flavourings, other than essential oils, for beverages, relish (condiment), tomato sauce, mayonnaise, soy sauce, chutney (condiment), dressings for salad, meat gravies, meat sauces, soya bean paste (condiment), miso (condiment), fruit coulis (sauce), pesto (sauce), pasta sauces; Spices; Ice.

Earlier right No. 4

Class 30: Frozen doughs for bakery and pastry; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, patisserie and confectionary, edible ices, honey, golden syrup, yeast, baking powder, salt, mustard, vinegar, sauces.

The contested goods and services are the following:

Class 30: Baozi [stuffed buns]; Bibimbap [rice mixed with vegetables and beef]; Non-medicated candy; Cereal bars; Pastries; Confectionery; Tea; Potstickers [dumplings]; Tarts; Gimbap [Korean rice dish]; Prepared desserts[pastries]; Spring rolls; Jiaozi [stuffed dumplings]; Coffee; Coffee-based beverages; Dim sums; Wontons; Cakes; Iced tea; Frozen yoghurt [confectionery ices]; Tea-based beverages; Okonomijaki [Japanese savoury pancakes]; Onigiri [rice balls]; Palm sugar; Ramen [Japanese noodle-based dish]; Rice dumplings; Rice pudding; Dressings for salad; Sandwiches; Shao mai; Sweet dumplings [dango]; Sherbets [ices]; Sushi; Tapioca; Doughs, batters, and mixes therefor; Ice cream.

Class 43: Delicatessens [restaurants]; Café services; Restaurant services; Snack-bar services; Cafeteria services; Takeaway fast food services; Tourist restaurants; Canteen services.

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

The term ‘namely’, used in the opponent’s list of goods (earlier rights 2 and 3) to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 30

The opponent’s goods referred to in this section belong to earlier rights 2 and 3.

The contested Confectionery, Tea, Tarts, Coffee; Coffee-based beverages, Cakes; Rice pudding, Dressings for salad, Tapioca are identically contained in both lists of goods and services (including synonyms).

The contested Iced tea, Tea-based beverages are included in the broad category of the opponent’s Tea. Therefore, they are identical.

The contested Sherbets [ices]; Ice cream are included in the broad category of the opponent’s Edible ices. Therefore, they are identical.

The contested Palm Sugar is included in the broad category of the opponent’s Sugar. Therefore, they are identical.

The contested Non-medicated candy includes, as a broader category, or overlap with, the opponent’s Peppermint candy. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Pastries, Prepared desserts [pastries] include, as a broader category, or overlap with, the opponent’s Macaroons [pastry]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested doughs and mixes therefor include, as a broader category, or overlap with, the opponent’s Pastry dough. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Frozen yoghurt [confectionery ices] are highly similar to the opponent’s Edible ices as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition..

The contested Ramen [Japanese noodle-based dish], Shao mai is at least highly similar to the opponent’s Ready-made dishes containing pasta. They have the same nature and purpose. They usually coincide in producer, relevant public and distribution channels.

The contested Sandwiches are at least similar to the opponent’s Macaroons [pastry] as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested Okonomijaki [Japanese savoury pancakes], Sweet dumplings [dango]; are at least similar to the opponent’s Waffles as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested Bibimbap [rice mixed with vegetables and beef], Gimbap [Korean rice dish], Onigiri [rice balls], Rice dumplings are similar to the opponent’s Rice. These prepared meals consist mainly of rice. They also share the same distribution channel, relevant public and producer.

The contested Cereal bars are similar to the opponent’s Cakes. They not only share the same nature but also the same distribution channel, relevant public and producer.

The contested Baozi [stuffed buns], Potstickers [dumplings], Spring rolls, Jiaozi [stuffed dumplings], Dim sums, Wontons are similar to the opponent’s Ready-made dishes containing pasta. They not only share the same nature but also the same distribution channel, relevant public and producer.

The contested batters, and mixes therefor are similar to the opponent’s Waffles as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested Sushi is dissimilar to any of the opponent’s goods. They don’t share the same nature nor purpose. The distribution channel, relevant public and producer are not the same. They are not complementary either.

Contested services in Class 43

The opponent’s services referred to in this section belong to earlier right 1.

The contested Delicatessens [restaurants]; Café services; Restaurant services; Snack-bar services; Cafeteria services; Takeaway fast food services; Tourist restaurants; Canteen services are included in the broad category of, or overlap with, the opponent’s Restaurants. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical and/or similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier rights No 1 and 4 OKIN Earlier right No 2 Earlier right No 3	WOKIN
Earlier trade marks	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 four earlier rights contain the word element ‘OKIN’. It has no meaning for the relevant public and is, therefore, distinctive.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Following the above, as regards the contested sign, part of the relevant public will break down the sign into ‘WOK’ and ‘IN’. ‘Wok’ is ‘a large pan like a bowl in shape, used for cooking food, especially Chinese food’. The term ‘wok’ has found its way into the different languages of the EU, such as English, French, Spanish, Italian, German, Polish, Bulgarian, etc. and will be understood by a substantial part of the relevant public. Since the relevant goods and services are food-related, this part will be seen as a reference to the pan and is therefore weak. The second part of the sign ‘IN’, has a meaning in several languages, such as English (preposition indicating place https://www.oxfordlearnersdictionaries.com/definition/english/in). However, whether or not it is meaningful in the different languages of the EU, it does not directly relate to any of the characteristics of any of the goods and services, and is therefore distinctive.

Despite the above, it cannot be excluded that a part of the public will not dissect the element ‘WOKIN’ into ‘WOK’+’IN’. In this case and since the element ‘WOKIN’ has no meaning, it is distinctive.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the element ‘WOKIN’ is distinctive for all the relevant goods.

Visually, the signs coincide in the letters ‘OKIN’, which make up the whole of the verbal element of the earlier rights, and most of the verbal element of the contested sign. They differ in the initial letter ‘W’ of the contested sign, which has no counterpart in the earlier signs. The difference in this letter is important since firstly, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Further, the letter W itself is visually important due to its actual structure and size and as such this is an important difference. Moreover, the length of the signs is an important factor since it may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In the case at hand the earlier mark contains four letters and the contested sign contains five, thus neither are very long and in such signs, small differences may frequently lead to a different overall impression.

From a syllabic point of view, whereas the main syllable of the verbal element ‘O-KIN’ will be ‘KIN’, no syllable can be considered to bear more weight in the verbal element ‘WO-KIN’. Hence, ‘W’ plays a fundamental role in the configuration of the verbal element.

Furthermore, account shall be taken of the fact that the letter ‘W’ is, no matter its position in a word, because of its graphic structure, as mentioned above, consisting of four lines, visually imposing. This applies to all the EU languages in general but especially those where ‘W’ is not a common letter. After all, it amounts to two letters ‘V’ that would touch each other.

They further differ in the figurative element present in earlier rights No. 2 and 3, an ear of wheat, which in in earlier right 2 is depicted in a rounded orange shape whereas in earlier right 3 both the word element and the ear of wheat are contained in the rounded shape. These figurative elements give a notable visual impression that cannot be ignored.

Therefore, the signs are similar to a below average degree in relation to earlier rights 1 and 4 in view of the arguments above to a low degree for the remaining rights.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛OKIN’, present identically in both signs. The pronunciation differs in the sound of the letter ‛W’ of the contested mark, which has no counterpart in the earlier signs. Due to its position at the beginning of the contested sign and contrary to the opponent, the Opposition Division does not consider that the letter ‘W’ will be overlooked.

In fact, in none of the EU languages will it be unspoken. On the contrary, its balancing effect from a syllabic point of view will undoubtedly have an aural impact. In some languages, it might even shift the word stress to the first syllable.

Therefore, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the ear of wheat in earlier rights 2 and 3 might evoke the concept of wheat it is not sufficient to establish any conceptual similarity. Hence, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 any of 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 some allusive elements in the earlier marks No. 2 and 3, as stated above in section c) of this decision.

e) 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa ( 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the signs are visually either similar to a below average degree or lowly similar. They are aurally similar to a low degree and the conceptual comparison does not influence the assessment of the similarity of the signs. The goods and services are partly identical, partly similar to varying degrees and dissimilar. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the degree of attention of the public at large is considered to be average.

As mentioned in section c) of this decision, the beginning of a sign is of paramount importance with regard to the attention of the public. In the present case, although the different element consists of a single letter, namely a ‘W’, the Opposition Division considers that this element is in itself sufficient to exclude any likelihood of confusion.

Indeed, the presence of the letter ‘W’ alters decisively the contested sign in comparison to the verbal element of the earlier rights.

The opponent refers also to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since in those cases (B 2 467 689, B 2 778 879 and B 2 945 577), a conceptual similarity was established between the signs. Both the contested and the earlier rights contained a meaningful element in the form of a word element in the signs, which is not the case in the present proceedings.

Considering all the above, the similarities not only in terms of goods and services but also from an aural and visual perspective cannot outweigh the role played by the letter ‘W’ as explained above. This is even more true for the part of the public which will understand the concept of ‘Wok’ in the contested sign. Therefore, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Helen Louise MOSBACK

Raphaël MICHE

Vanessa PAGE

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.