OPPOSITION No B 3 026 104

Artemi Nolla Grup Gestió de Restaurants, S.L., Calle de la Diputació, 273, 08007 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Posca, Via Di Portonaccio 70, 00159 Roma, Italy (applicant)

On 17/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 026 104 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 431 909 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 431 909 for the figurative mark .The opposition is based on European Union trade mark registration No 8 327 298 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

1. The goods and services

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

Class 35: Advertisement services; sales promotion for others (commercial services); business management; procurement services for others, commercial brokerage, import-export and retailing and wholesaling in shops, via electronic media and computer networks of foodstuffs and beverages; presentation of goods by any means of communications for retailing purposes; business administration; office functions; organisation of trade fairs and exhibitions for commercial or advertising purposes; commercial management assistance in relation to franchises.

Class 39: Distribution of precooked dishes and foodstuffs; transport services; packaging, warehousing, and storage of goods.

Class 43: Hotels, providing of food and drink; restaurants with ice cream parlours; pastry; bar services; café-restaurants; cafeterias; snack-bars; catering; hotel services.

The contested goods and services are the following:

Class 30: Pizzas.

Class 43: Serving food and drinks.

Class 45: Licensing of franchise concepts.

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 30

The contested pizzas are similar to a low degree to the opponent’s provision of food in Class 43 as they share the same distribution channels and producer. Moreover, they are complementary.

Contested services in Class 43

Although worded differently, serving food and drinks is identically contained in both lists of services (including synonyms).

Contested services in Class 45

The contested licensing of franchise concepts means renting or leasing of an intangible asset. A franchise is an authority that is given by an organization to someone, allowing them to sell its goods or services or to take part in an activity which the organization controls.To that extent, they are similar, at least to a low degree, to the opponent´s commercial management assistance as they have the same providers, same relevant public and same distribution channels.

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 and similar to various degrees are mainly directed at the public at large and professional public with specific knowledge. The degree of attention will range from average to high.

3. The signs

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

In the present case, the earlier mark is composed of the repetition of the verbal element ‘Tapa’ which is not meaningful in certain territories, for example for a significant part of the French and English-speaking part of the public. As the perception of the word ‘Tapa’ affects the degree of distinctiveness of the earlier mark, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the English- and French-speaking parts of the public for which ‘Tapa’ is meaningless and, therefore, distinctive to an average degree.

In the earlier mark, the verbal elements are depicted in slightly stylised characters, with a wave-like underlining. These figurative aspects have a mere decorative function.

The contested sign, is composed of a single verbal element, namely ‘TATAPÁ’ written in white stylised upper case letters within a banal black circular device of a mere decorative nature. In the three letters ‘A’, the inner horizontal stroke progresses from the bottom (first A), to the middle (second A) to being placed above the letter A in the third one, resembling an accent.  The word as such, will be perceived as a fanciful term, enjoying an average degree of distinctive character.

Neither of the signs have any element that could be perceived as more dominant (visually eye-catching) than others.

Visually, the signs coincide in the string of letters ‘TA** TAPA’ present identically in both signs although distributed differently and having different structures (as described above). The signs differ in the additional letters ‘PA’ in the middle of the earlier mark with no counterpart in the contested sign, in the different stylisation of the said word elements and in the figurative elements.

At this regard, it is important to note that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. 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)

In addition to that, and bearing in mind that consumers pay more attention to the beginnings of signs, the signs can be considered visually similar to an, at least, low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory of the present Decision, the pronunciation of the signs coincides in the sound of the letters / / TA** TAPA / and only differs in the additional sound /PA/ present in the earlier mark.

Bearing in mind the coinciding letters, the signs are aurally similar to an above average degree.

Conceptually, as explained above, neither of the signs have 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.

4. 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 mark as a whole has no meaning for any of the goods and services in question from the perspective of the public chosen for the assessment of the present opposition and therefore, the distinctiveness of the earlier mark is to be considered as average

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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323,  18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

As concluded, the distinctiveness of the earlier mark must be seen as average. Moreover, the signs have been found to be visually similar to, at least, a low degree and aurally similar to an above average degree while conceptually the conceptual aspect does not influence the assessment of the similarity of the signs.

Moreover, the goods and services have been found to be partly identical and partly similar (to various degrees), targeting the public at large and professionals that will display a degree of attention ranging from average to high.

Admittedly, there are certain visual dissimilarities between the signs, however, it is reasonable to think that, the relevant public will focus on the fact that the signs share their beginnings and endings which are more striking and easier to remember than the additional letters in the middle of the earlier mark and, therefore, least noticeable.

In fact, the Opposition Division concludes that the differentiating visual elements are not sufficiently outstanding to counterbalance the more striking aural similarities caused by their commonalities.

Therefore, in an overall assessment, and also taking into account that the consumer only occasionally has the opportunity to carry out a direct comparison of the various trade marks and must rely on his imperfect mental image of them, the similarities between the signs must be considered enough to counteract the differences in their middle. Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, in view of all of the foregoing, there is a likelihood of confusion for the part of the French and English-speaking part of the public for which ‘TapaTapa’ is meaningless. 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. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 327 298.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 327 298. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to various degrees to those of the earlier 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.

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

Saida CRABBE

Alexandra APOSTOLAKIS

Richard BIANCHI

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.