OPPOSITION No B 2 983 289

JS IP LLC, 19950 W Country Club Dr, 10th Floor, 33180 Aventura, United States of America (opponent), represented by J A Kemp, 14 South Square Gray's Inn, London WC1R 5JJ, United Kingdom (professional representative)

a g a i n s t

Lucien Letayf, Rue Roushaud el Dahdah, Beyrouth, Lebanon (applicant), represented by Apollinaire société d'avocats, 17 rue Le Verrier, 14000 Caen, France (professional representative)

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 983 289 is upheld for all the contested services, namely:

Class 43: Provision of food and drink; restaurant services.

2. European Union trade mark application No 17 020 819 is rejected for all the contested services. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition initially against all the goods and services of European Union trade mark application No 17 020 819 for the word mark ‘LIV UP’, namely against all the goods and services in Classes 32 and 43. However, in its further facts, evidence and arguments of 31/07/2018, the opponent subsequently limited the extent of the opposition to all the services in Class 43 only. The opposition is based on European Union trade mark registration No 15 834 625 for the word mark ‘LIV’. 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 services

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

Class 43: Bar services; cocktail lounges; public house services; provision of food and drink.

Following the limitation of the extent of the opposition as mentioned above, the contested services are the following:

Class 43: Provision of food and drink; restaurant services.

Contested services in Class 43

The services provision of food and drink are identically contained in both lists of services.

The contested restaurant services are included in the broad category of the opponent’s provision of food and drink. 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 services found to be identical are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

LIV	LIV UP
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.

The verbal elements of both signs may have different meanings in different territories, e.g. ‘LIV’ means ‘life’ in Swedish and Danish and is also a given female name of Old Norse origin that is quite popular in countries like the Netherlands, Denmark and Sweden. Furthermore, the words ‘LIV UP’ may be perceived by the English-speaking part of the public as a misspelling of the expression ‘LIVE UP’. However, in certain parts of the relevant territory, such as in Poland, the verbal elements of both signs will be perceived as meaningless since neither ‘LIV’ nor ‘UP’ has any meaning in Polish and since ‘LIV’ is not a common name in Poland. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public in the relevant territory.

The earlier mark is the word mark ‘LIV’ and the contested sign is the word mark ‘LIV UP’. Both ‘LIV’ and ‘UP’ will be perceived as fanciful words without any meaning by the part of the public under analysis and the word ‘LIV’ present in both signs as well as the additional word ‘UP’ in the contested sign are, therefore, distinctive to a normal degree.

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.

Visually and aurally the signs coincide in the distinctive word/sound ‘LIV’, which is the only element of the earlier mark and present at the beginning of the contested sign, where consumers tend to focus their attention as explained above. However, the signs differ in the additional word/sound ‘UP’ in the contested sign which is also distinctive but which is shorter than the coinciding word/sound ‘LIV’ and also present at the end where it will have less impact on consumers.

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

Conceptually, neither of the signs has a meaning for the public under analysis 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 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 has no meaning for any of the services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 services at issue have been found to be identical and the degree of attention of the relevant public is average.

The earlier mark ‘LIV’ is fully contained at the beginning of the contested sign where it plays an independent distinctive role. Therefore, even if the contested sign also contains the additional word ‘UP’, the signs have been found visually and aurally similar to an above average degree for the part of the public under analysis and there is no conceptual difference between them that could otherwise help consumers to more easily distinguish between the signs. Furthermore, the earlier mark has a normal degree of distinctiveness.

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking public in the relevant territory. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 and there is therefore no need to assess whether there is a likelihood of confusion also for other parts of the public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 834 625. It follows that the contested trade mark must be rejected for all the contested 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

Catherine MEDINA

Sam GYLLING

Begoña URIARTE VALIENTE

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.