CANCELLATION No C 20 345 (INVALIDITY)

 

Goya Foods, Inc., 350 County Road, 07307 Jersey City, United States of America (applicant), represented by Stobbs, Building 1000 Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

 

a g a i n s t

 

Goya GmbH, Quedlinburger Str. 1, 10589 Berlin, Germany  (EUTM proprietor).

 

On 29/05/2020, the Cancellation Division takes the following

 

 

DECISION

 

1.	The application for a declaration of invalidity is partially upheld.

 

2.	European Union trade mark No 17 359 704 is declared invalid for some of the contested services, namely: Class 43: Services for providing food and drink.
3.	The European Union trade mark remains registered for all the remaining goods and services, namely: Class 25: Clothing, footwear, headgear. Class 35: Advertising; business management; business administration; office functions. Class 39: Transport; travel arrangement. Class 41: Education; providing of training; entertainment; sporting and cultural activities. Class 43: Temporary accommodation.
4.		Each party bears its own costs.

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 359 704 ‘GOYA YOGA’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on, inter alia, Benelux trade mark registration No 973 655 'GOYA' (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the element ‘YOGA’ of the contested mark is non-distinctive and therefore, should be disregarded. The marks are highly similar. It claims that the earlier marks acquired enhanced distinctiveness through a long term use. The applicant argues that the contested services in Class 43 are highly similar to the goods of the earlier marks and the remaining contested goods and services are similar. It concludes that on account of the high similarity of the marks and the high degree of distinctiveness of the earlier marks, there is a likelihood of confusion between the marks.

The EUTM proprietor requests that the applicant prove use of the earlier EUTM and the international registration. It argues that the contested goods and services are dissimilar to the goods for which the earlier marks are registered. It refers to the Office’s tool for finding similarity between goods and services and points out that it only shows low degree of similarity for some services in Class 43 and drinks. It further argues that the additional word ‘YOGA’ of the contested mark is sufficient to exclude likelihood of confusion. It claims that there is also conceptual difference between the marks because the earlier marks refer to Francisco José de Goya y Lucientes and Spanish cultural background, whereas the contested mark, on account of the word ‘YOGA’, will be associated with India.

The applicant provides documents to show use of the earlier marks.

The EUTM proprietor maintains that there is no likelihood of confusion between the marks on account of the dissimilarity between the goods and services. Moreover, it argues that the element ‘GOYA’ is non-distinctive because there are at least 187 companies with the element ‘GOYA’ and submits an excerpt from www.e-justice.europa.eu showing a list of companies that include the word ‘GOYA’ in their name and are registered in European countries. As regards the evidence of use submitted by the applicant, it argues that the evidence shows that the marks have been used in the USA and Latin America, but there was no relevant use in Europe.

PROOF OF USE

 

Proof of use of two of the earlier marks was requested by the EUTM proprietor. However, at this point, the Cancellation Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, § 72). The Cancellation Division will first examine the application in relation to the applicant’s Benelux trade mark registration No 973 655, which is not under the obligation of use.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 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. 

The goods on which the application is based are the following: 

Class 29: Apples compotes; artichoke paste; bouillon; cheese; prepared cheese based foodstuffs; cranberry sauce [compote]; dairy products excluding ice cream, ice milk and frozen yogurt; dips; dried fruit and vegetables; dried fruit mixes; dried fruits; dried meat; edible fats; edible oils; extracts for soups; fish; fish croquettes; frozen fruits; frozen vegetables; fruit paste; fruit preserves; fruit-based snack food; instant or pre-cooked soup; jellies and jams; lard; meat; meat extracts; meat jellies; milk; nut-based snack foods; olive oil; pickled vegetables; plantain chips; pork; pork rinds; potato chips; poultry; preparations for making soups; prepared entrees consisting primarily of seafood, meat, poultry or vegetables; preserved fruits; processed artichokes; processed coconut; processed edible flowers; processed edible seeds; processed fruits; processed meat; processed mushrooms; processed nuts; processed olives; processed stuffed olives; processed vegetables; salad oil; seafood; snack mix consisting primarily of processed fruits, processed nuts and/or raisins; soups; tomato paste; vegetable chips; vegetable oils; vegetable- based snack foods; vegetable, fish, and meat croquettes; yucca chips; game; preserved vegetables; cooked fruits and vegetables; meat extracts; jellies, compotes; eggs; milk products; coconut cream for cooking and culinary purposes; processed roots [for human consumption]; processed cactus for food purposes; fruit pulps; Spanish omelette (tortilla Española); fried plantains (tostones); guacamole; sancocho; evaporated milk; chorizo; flavoured and sweetened gelatines.

Class 30: Adobo; Alimentary paste; bakery desserts; bakery goods; barbecue sauce; biscuits; breadcrumbs; breakfast cereals; burritos; candy; capers; cereal-based snack foods; chili sauce; chocolate; chocolates and chocolate based ready to eat candies and snacks; cocoa; coffee; cookies; corn chips; corn flour; corn fritters; corn meal; corn starch; corn-based snack foods; crackers; custards; dumplings; edible spices; empanadas; enchiladas; extracts used as flavouring [not essential oils]; fajitas; fish dumplings; flavoured and sweetened gelatines; flavouring syrup; flour; food flavourings [not essential oils]; food seasonings; starch for food; frozen confections; grain-based snack foods; hominy; honey; hot sauce; ketchup; marinades; mayonnaise; mixes for making bakery goods; mixes for making baking batters; mixes, namely preparations made from cereals or flour, for making batter for flush puppies; mixes for making batters for fried foods; noodles; pasta; pastries; pepper; picante sauce; prepared entrees consisting primarily of pasta or rice; processed cereals; processed herbs; processed quinoa; puddings; rice; rice-based snack foods; salad dressings; salsa; sauces; seasoned coating for meat, fish, poultry; seasoned coating mixtures for foods; seasonings; snack cakes; spices; table syrup; taco chips; taco shells; tacos; tamales; tapioca; tomato sauce; tortilla chips; tortillas; treacle; vinegar; wine vinegar; tea, artificial coffee; tapioca and sago; preparations made from cereals; bread, pastry and confectionery; ices; sugar, treacle; yeast, baking- powder; salt; mustard; ice; natural sweetener; banana leaves for use as a food wrapper; dried corn husks for tamales; flan; cooking sauces; sofrito; recaito; dough; processed grains; processed quinoa; processed corn; arepas; vanilla extract; chimichurri sauce; churros; chili powders, chili sauce, chili paste for use a seasoning, chili seasonings.

Class 32: Bottled water; Fruit nectars; fruits drinks and fruit juices; non-alcoholic malt free beverage [other than for medical use]; soft drinks; syrups for making soft drinks; vegetable juice; vegetable- fruit juices; beers; mineral and aerated waters and other non- alcoholic beverages; fruit beverages; syrups and other preparations for making beverages; water beverages; non-alcoholic beverages based on coconut, namely coconut juice, milk and water; coconut water; coconut-based beverages not being milk substitutes; punch [non- alcoholic]; horchata; non-alcoholic cocktail mixes; non- alcoholic cocktail bases; non-alcoholic cider; grain based non- alcoholic beverages.

The contested goods and services are the following: 

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions.

Class 39: Transport; travel arrangement.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 43: Services for providing food and drink; temporary accommodation.

Contested goods and services in Classes 25, 35, 39 and 41 

The goods for which the earlier mark is protected are foodstuffs in Classes 29 and 30 and non-alcoholic beverages and beer in Class 32. These goods serve to satiate hunger or thirst, they are eaten or drunk, they are sold in large supermarkets or smaller retail establishments with foods and drinks and they normally originate from entities who manufacture food or drinks.

These goods have no relevant points of contact with the contested goods in Class 25, which serve to cover the human body to protect it from natural elements or to satisfy the particular culture’s standards for decency. These goods have different nature, purpose and method of use than the applicant’s goods, they are sold in different establishments or in different sections of large supermarkets. Moreover, these goods are not in competition or complementary and they are not normally produced by the same undertakings. Therefore, these goods are dissimilar.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

Business management; business administration and office functions are services provided to companies to assists them with the tasks related to the operation of their business. These services are usually provided by specialized companies. They differ from food and drinks fundamentally in their nature, purpose and method of use. The applicant’s goods and these services are not offered by the same entities and they are not complementary. Therefore, these contested services are dissimilar to the goods of the earlier mark.

Transport services are not considered similar to the goods of the earlier mark. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

The same applies to the remaining contested services in Classes 39 and 41, which consist in organizing travels, training and education, entertainment and cultural or sporting events. These services do not have a common purpose with the applicant’s goods, they differ in nature and method of use. These goods and services are not complementary and they do not commonly share commercial origin. Consequently, also these contested services are dissimilar to the goods of the earlier mark.

It follows from the above that all the contested goods and services in Classes 25, 35, 39 and 41 are dissimilar to the goods of the earlier mark. The applicant simply argues that they are similar without putting forward any specific argument in favor of such conclusion.

Contested services in Class 43

The applicant’s goods differ in nature form the services for providing food and drink. In principle, goods are tangible whilst providing services is intangible. Moreover, in general, the mere fact that foods and drinks are consumed in a restaurant is not enough reason to find similarity between restaurant services and food or drinks. On the other hand, the contested services include bars, cafeterias and restaurants where beers, fresh fruit or vegetable drinks and juices, water beverages, beverages based on coconut or horchatas (all included in the applicant’s list of goods in Class 32) are served. These drinks can originate in other companies but they can even be prepared by the bar or restaurant. Indeed, many breweries have their own restaurants where the beer made in the brewery is served, many cafes serve fruit or vegetable drinks prepared on the spot or offer other types of non-alcoholic beverages prepared or mixed by the same establishment. The market reality shows that some producers of foodstuffs and/or drinks also provide restaurant services under their brand. Because of this connection between the applicant’s goods in Class 32 and services for providing food and drink, but also bearing in mind the different character of the goods and services, it is considered that the abovementioned contested services are similar to a low degree to the applicant’s goods.

The services of temporary accommodation, on the other hand, are dissimilar to the goods of the earlier mark. In addition to different nature, these services and the applicant’s goods are not complementary and they also differ in purpose. Although some of the establishments providing temporary accommodation also provide food or drinks, this is not the rule and it is not the main function of these services, the purpose of which is to provide a shelter for the night. Moreover, even if the same establishment provides temporary accommodation and food or drink products, the customers understand that the commercial origin of such products is different from the hotel as it is not common that the same entity manufactures foodstuff or beverages and provides temporary accommodation.

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 similar to a low degree are directed at the public at large. The degree of attention will vary between lower and average.

c) The signs

 

GOYA	GOYA YOGA
Earlier trade mark	Contested mark

 

The relevant territory is  Benelux.  

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks, the earlier mark consists of a single verbal element, the contested sign comprises two separate words. Neither of the marks has any visually dominant elements.

The word ‘GOYA’ is meaningless for the relevant public, although it cannot be excluded that a part of the public, as argued by the EUTM proprietor, will associate it with the renowned Spanish painter Francisco de Goya. In either case, the word is distinctive as it has no relationship with the relevant goods and services. The EUTM proprietor argues that it is not distinctive because there are dozens of companies registered in the EU which include this word. However, the existence of these companies is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In particular, the list provided by the EUTM proprietor does not show in which field those companies are active, if they are indeed actively present on the EU market under their company name and if the relevant public has in fact been exposed to any such company names in the context of the relevant goods or services. Consequently, the mere existence of those companies does not demonstrate that the relevant public will perceive the word ‘GOYA’ as weakly distinctive in relation to the relevant goods or services.

The word ‘YOGA’ will be associated with a group of physical, mental and spiritual practices originating in the Far East and widely exercised for health and relaxation. Since ‘yoga’ does not just designate a set of exercises but may be used to refer to the entire lifestyle connected to the practice of this discipline, this word, in connection with the services of provision of food and drinks may be perceived as an indication of the fact that the establishment where the services are provided offers comestible products suitable for the practice of yoga and compatible with the lifestyle of the yogi (the practitioners of yoga). Therefore, this element is weak in relation to the relevant services.

Visually and aurally, the signs coincide in their distinctive elements ‘GOYA’ and differ in the additional weak word of the contested mark ‘YOGA’. Since the marks coincide in their distinctive elements, which are moreover their initial elements and the word constitutes also the only element of the earlier mark, while the only difference lies in the additional weak element of the contested mark, which is clearly separated from the distinctive word, the marks have to be considered similar to a high degree both visually and aurally.

Conceptually, a part of the public will associate the word ‘GOYA’ with the renowned Spanish painter, as explained above. This concept is present in both marks, while there is an additional concept of ‘yoga’ in the contested one. However, since, as explained above, the latter meaning is weak, the marks are conceptually highly similar for this part of the public. For the part of the public who will not associate the word ‘GOYA’ with any meaning, the marks conceptually differ on account of the concept of ‘yoga’ present in the contested mark. However, this difference is of limited importance on account of the weak distinctive character of this word. 

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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

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. 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).

The marks visually and aurally coincide in the word ‘GOYA’, which is the only element of the earlier mark and the first and most distinctive element of the contested one. Taking into account that the earlier sign is fully incorporated as an independent and distinctive element at the beginning of the contested mark, it is considered that the difference between the marks consisting of an additional weak element of the contested mark, is unable to exclude the possibility of confusion on the part of the public, even when the contested services are only lowly similar to the applicant’s goods.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is likely that the relevant consumer will perceive the contested mark as a variation of the earlier mark configured in a different way according to the type of services which it designates. The consumers may reasonably assume that the services bearing the mark ‘GOYA YOGA’ are a particular line of services of the ‘GOYA’ mark that are specifically designed to be provided for the fans of yoga. It is, therefore, likely that the targeted public will regard the services designated by the contested trade mark as originating from the same commercial source as the goods labelled with the mark ‘GOYA’.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s Benelux trade mark registration.

 

Pursuant to the above, the contested trade mark must be declared invalid for the  services found to be similar to a low degree to the goods of the earlier trade mark. 

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

 

The applicant has also based its cancellation application on the following earlier trade marks: 

• EUTM Registration No 4 845 772, , registered for goods in Classes 29, 30,32.

• International trade mark registration designating the EU No 982 166, 'GOYA', registered for goods in Classes 29, 30, 32.

• Cypriot trade mark registration No 82 745, , registered for goods in Class 30.

• Cypriot trade mark registration No 82 744, , registered for goods in Class 29.

• Spanish trade mark registration No M3 566 377, 'GOYA', registered for goods in Classes 30, 31.

• Maltese trade mark registration No 53 637, 'GOYA', registered for goods in Class 29.

• Maltese trade mark registration No 53 636, 'GOYA', registered for goods in Class 32.

• Lithuanian trade mark registration No 71 908, 'GOYA', registered for goods in Classes 29,30,32.

• Irish trade mark registration No 250 905, 'GOYA', registered for goods in Classes 30,32.

• Hungarian trade mark registration No 215 135, 'GOYA', registered for goods in Classes 29,30,32.

• Greek trade mark registration No N228 813, 'GOYA', registered for goods in Classes 30,32.

• German trade mark registration No 30 2014 045 294, 'GOYA', registered for goods in Classes 29,30,32.

• French trade mark registration No 4 092 554, 'GOYA', registered for goods in Classes 29,30,32.

• Finnish trade mark registration No 262 947, 'GOYA', registered for goods in Classes 30,32.

• Danish trade mark registration No VR 2014 02 123, 'GOYA', registered for goods in Classes 30,32.

All these trade marks are registered for a variety of foodstuff in Class 29 and/or 30 and/or beverages in Class 32. The only exception is the Spanish mark which is also registered for fresh raw plantain leaves, dried plants, fresh olives, raw olives, fresh unprocessed olives in Class 31. None of the goods covered by these registrations is similar to any of the contested goods and services that were found dissimilar to the goods of the earlier Benelux trade mark above. This is for the same reasons that were explained above and that equally apply to all the goods for which the above trade marks are registered in Classes 29, 30 and 32. In addition, the same also applies to the goods in Class 31 for which the earlier Spanish mark is registered. These goods are also foodstuffs or agricultural products used in food preparation which have no relevant points of contact with the contested goods and services in Classes 25, 35, 39 and 41 or with temporary accommodation in Class 43. Consequently, the result cannot be different, regarding these contested goods and services, even when all the invoked earlier trade marks are taken into account.

Moreover, in view of the above, it is not necessary to assess genuine use of the EUTM registration No 4 845 772 and international trade mark registration designating the EU No 982 166. Even if these marks were genuinely used for all the goods for which they are registered, which is the best light for the applicant in which the application can be assessed, the application could not succeed as regards the contested goods and services found dissimilar to the applicant’s goods.

Finally, since the cancellation application is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the earlier marks due to their extensive use as claimed by the applicant. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness. 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier marks for dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

 

Vít MAHELKA

Michaela SIMANDLOVA

Liliya YORDANOVA

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.