OPPOSITION No B 3 050 049

Panda Restaurant Group, Inc., 1683 Walnut Grove Avenue, 91770 Rosemead, United States (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Haijun Zhu, 108 Rue Maurice Braunstein, 78200 Mantes la Jolie, France (applicant)

On 22/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 049 is partially upheld, namely for the following contested goods and services:

Class 29: Birds eggs and egg products; sausage skins and imitations thereof; oils and fats; meats; fish, seafood and molluscs; processed fruits, fungi and vegetables (including nuts and pulses); dairy products and dairy substitutes; soups and stocks, meat extracts.

Class 35: All the services in this class except retail services in relation to sorbets; wholesale services in relation to sorbets; providing consumer information relating to goods and services; providing consumer product advice; commercial information and advice for consumers [consumer advice shop]; commercial information and advice for consumers in the choice of products and services; providing consumer product information; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; providing consumer product information relating to food or drink products

Class 43: Rental of furniture, linens and table settings; restaurant services; provision of food and drink; providing temporary accommodation; temporary accommodation.

2. European Union trade mark application No 17 614 702 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against, initially, all the goods and services, and then, against only part of the goods and services of European Union trade mark application No 17 614 702, namely against all the goods in Class 29 and some of the services in Classes 35 and 43. The opposition is based on, inter alia, European Union trade mark registration No 12 015 285 for the word mark 'PANDA EXPRESS'. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM No 12 015 285 for the word mark 'PANDA EXPRESS'.

a) The goods and services

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

Class 29: Prepared meals and snack foods consisting primarily of meat, fish, poultry, game, fruit and/or vegetables; foods prepared from meat, pork, fish and poultry products; prepared meat; fish, poultry, game; fruits and vegetables all being preserved, dried or cooked; potato fries and potato chips; milk, milk beverages; yogurts; desserts, namely artificial milk based desserts, dairy desserts, fruit desserts; pickles.

Class 30: Prepared meals and snack foods consisting primarily of rice, noodles, cereals, and/or sauces; coffee, tea, cocoa, coffee substitutes, drinking chocolate; bread and bread filled products; edible sandwiches; filled buns; sauces; fruit pies; ice cream; salad dressings; bakery goods; biscuits, bread, cakes, cookies, pastries, confectionary, desserts; mustard, sauces, seasonings.

Class 35: Business management and consultancy in the operation of restaurants and establishments in providing food; restaurants' business assistance, management and administrative services; restaurants' business consultancy and advisory services relating to franchising of restaurants; business information and assistance in the establishment and operation of restaurants; services rendered or associated with franchising restaurants and other establishments or facilities for the provision of food and drink.

Class 43: Restaurant services; bar, café, cafeteria and catering services; provision of food and drink; services rendered or associated with operating restaurants and other establishments or facilities for the provision of food and drink.

Following the limitation of the extent of the opposition performed by the opponent as per its letter dated 31 August 2018, the contested goods and services are the following:

Class 29: Birds eggs and egg products; sausage skins and imitations thereof; oils and fats; meats; fish, seafood and molluscs; prepared insects and larvae; processed fruits, fungi and vegetables (including nuts and pulses); dairy products and dairy substitutes; soups and stocks, meat extracts.

Class 35: Retail services relating to candy; retail services connected with the sale of subscription boxes containing chocolates; business administration services for processing sales made on the internet; wholesale services in relation to meats; business assistance, management and administrative services; wholesale services in relation to confectionery; retail services in relation to foodstuffs; advisory services relating to the purchase of goods on behalf of others; retail services in relation to desserts; wholesale services in relation to cocoa; retail services connected with the sale of subscription boxes containing food; information about sales methods; negotiation and conclusion of commercial transactions for third parties; arranging commercial transactions, for others, via online shops; wholesale services in relation to foodstuffs; provision of information concerning commercial sales; retail services in relation to meats; mediation and conclusion of commercial transactions for others; advisory services relating to commercial transactions; sales administration; providing consumer information relating to goods and services; wholesale services in relation to frozen yogurts; business analysis, research and information services; wholesale services in relation to ice creams; retail services in relation to sorbets; arranging of contracts for the purchase and sale of goods and services, for others; wholesale services in relation to sorbets; wholesale services in relation to chocolate; advisory services relating to the purchase of goods on behalf of business; arranging of contracts for others for the buying and selling of goods; retail services via global computer networks related to foodstuffs; export agency services; purchasing agency services; providing consumer product advice; retail services relating to delicatessen products; retail services in relation to confectionery; on-line ordering services in the field of restaurant take-out and delivery; ordering services for third parties; administrative processing of purchase orders within the framework of services provided by mail-order companies; retail services relating to fruit; retail services via catalogues related to foodstuffs; negotiation of contracts relating to the purchase and sale of goods; mail order retail services related to foodstuffs; administrative processing of purchase orders; online ordering services; wholesale services in relation to teas; administrative processing of purchase orders placed by telephone or computer; telephone order-taking services for others; computerised stock ordering; arranging the buying of goods for others; wholesale services in relation to coffee; import-export agency services; wholesale services in relation to desserts; sales management services; advertising, marketing and promotional services; retail services relating to food; import agency services; import and export services; arranging of contractual [trade]services with third parties; wholesale services in relation to dairy products; procuring of contracts for the purchase and sale of goods; arranging business introductions relating to the buying and selling of products; administrative order processing; electronic order processing; purchasing of goods and services for other businesses; automatic re-ordering service for business; arranging subscriptions to information packages; commercial information and advice for consumers [consumer advice shop]; arranging of collective buying; wholesale services in relation to seafood; consultancy relating to costing of sales orders; clerical services for the taking of sales orders; arranging of buying and selling contracts for third parties; commercial information and advice for consumers in the choice of products and services; providing consumer product information; retail services in relation to cocoa; retail services in relation to ice creams; export promotion services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; providing consumer product information relating to food or drink products; retail services in relation to coffee; administrative processing and organising of mail order services; retail services in relation to chocolate; retail services in relation to dairy products; retail services in relation to baked goods; retail services in relation to frozen yogurts; wholesale services relating to candy; wholesale services in relation to baked goods; retail services in relation to seafood; retail services in relation to bakery products; retail services in relation to teas.

Class 43: Rental of furniture, linens and table settings; restaurant services; provision of food and drink; providing temporary accommodation; temporary accommodation.

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

The term ‘namely’, used in the both lists of goods and services 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 and services specifically listed.

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 29

The contested meats; fish; seafood; processed fruits and vegetables (including nuts and pulses); soups and stocks, meat extracts and dairy products and dairy substitutes, are identical to the opponent’s prepared meat; fish; fruits and vegetables all being preserved, dried or cooked; foods prepared from meat, pork, fish and poultry products; and desserts, namely artificial milk based desserts, dairy desserts, respectively, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods

The contested molluscs and processed fungi are similar to the opponent's fish and vegetables all being preserved, dried or cooked, respectively, as they usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested oils and fats are similar to the opponent's sauces as they have the same purpose. They usually coincide in relevant public and method of use. Furthermore they are in competition.

The contested birds eggs and egg products are similar to a low degree to the opponent's poultry as they usually coincide in producer, relevant public and distribution channels.

The contested sausage skins and imitations thereof and the opponent's prepared meat are similar to a low degree, at least, as they coincide at least in producers, distribution channels and public.

The contested prepared insects and larvae have nothing in common with the opponent's goods and services. Indeed, they differ in nature and they are neither complementary to nor in competition with each other. Moreover, they are not generally produced/provided by the same companies. The fact that the contested goods and some of the earlier goods are edible and that they may be offered on sale in the same outlets does not automatically entail that they are similar since they are unlikely to be found in the same departments or shelves. Therefore, the goods and services at issue are dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same reasoning applies in relation to wholesale services.

Therefore, the contested retail services relating to candy; retail services connected with the sale of subscription boxes containing chocolates; wholesale services in relation to meats; wholesale services in relation to confectionery; retail services in relation to foodstuffs; retail services in relation to desserts; wholesale services in relation to cocoa; retail services connected with the sale of subscription boxes containing food; wholesale services in relation to foodstuffs; retail services in relation to meats; wholesale services in relation to frozen yogurts; wholesale services in relation to ice creams; wholesale services in relation to chocolate; retail services via global computer networks related to foodstuffs; retail services relating to delicatessen products; retail services in relation to confectionery; retail services relating to fruit; retail services via catalogues related to foodstuffs; mail order retail services related to foodstuffs; wholesale services in relation to teas; wholesale services in relation to coffee; wholesale services in relation to desserts; retail services relating to food; wholesale services in relation to dairy products; wholesale services in relation to seafood; retail services in relation to cocoa; retail services in relation to ice creams; retail services in relation to coffee; retail services in relation to chocolate; retail services in relation to dairy products; retail services in relation to baked goods; retail services in relation to frozen yogurts; wholesale services relating to candy; wholesale services in relation to baked goods; retail services in relation to seafood; retail services in relation to bakery products; retail services in relation to teas are similar to a low degree to the opponent’s confectionary; prepared meat; desserts, namely artificial milk based desserts, dairy desserts, fruit desserts; cocoa; yogurts; ice cream; fruits all being preserved, dried or cooked; tea; coffee; milk; fish; bakery goods. Indeed, the goods involved in the contested retail services and the specific goods covered by the other mark are identical either because they are literally the same or they are synonyms, or the opponent’s goods include, are included in, or overlap with, the goods involved in the contested retail services.

However, the contested retail services in relation to sorbets; wholesale services in relation to sorbets and the opponent's goods in Classes 29 and 30 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing buyers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail and wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail or wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

The contested business administration services for processing sales made on the internet; business assistance, management and administrative services; advisory services relating to the purchase of goods on behalf of others; information about sales methods; negotiation and conclusion of commercial transactions for third parties; arranging commercial transactions, for others, via online shops; provision of information concerning commercial sales; mediation and conclusion of commercial transactions for others; advisory services relating to commercial transactions; sales administration; business analysis, research and information services; arranging of contracts for the purchase and sale of goods and services, for others; advisory services relating to the purchase of goods on behalf of business; arranging of contracts for others for the buying and selling of goods; export agency services; purchasing agency services; on-line ordering services in the field of restaurant take-out and delivery; ordering services for third parties; administrative processing of purchase orders within the framework of services provided by mail-order companies; negotiation of contracts relating to the purchase and sale of goods; administrative processing of purchase orders; online ordering services; administrative processing of purchase orders placed by telephone or computer; telephone order-taking services for others; computerised stock ordering; arranging the buying of goods for others; import-export agency services; sales management services; advertising, marketing and promotional services; import agency services; import and export services; arranging of contractual [trade]services with third parties; procuring of contracts for the purchase and sale of goods; arranging business introductions relating to the buying and selling of products; administrative order processing; electronic order processing; purchasing of goods and services for other businesses; automatic re-ordering service for business; arranging subscriptions to information packages; arranging of collective buying; consultancy relating to costing of sales orders; clerical services for the taking of sales orders; arranging of buying and selling contracts for third parties; export promotion services; administrative processing and organising of mail order services, coincide at least in producer and relevant public with the opponent's business management and consultancy in the operation of restaurants and establishments in providing food and/or restaurants' business assistance, management and administrative services. Most of the contested services coincide further with the opponent’s services at least in purpose (e.g.: negotiation and conclusion of commercial transactions for third parties; on-line ordering services in the field of restaurant take-out and delivery; ordering services for third parties ) or in trade channels (e.g. import-export agency services) but some of the contested services coincide even further with the opponent's services to the point that they actually include, are included in or overlap with the latter (e.g. business assistance, management and administrative services include the opponent's restaurants' business assistance, management and administrative services). Therefore, the goods and services at issue are similar to a low degree, at least.

Finally, the contested providing consumer information relating to goods and services; providing consumer product advice; commercial information and advice for consumers [consumer advice shop]; commercial information and advice for consumers in the choice of products and services; providing consumer product information; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; providing consumer product information relating to food or drink products have nothing in common with any of the opponent's goods or services in terms of nature, purpose, method of use, producer/provider or distribution/trade channels. Moreover, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 43

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

The contested rental of furniture, linens and table settings are included in the broad category of, or overlap with, the opponent’s services rendered or associated with operating restaurants and other establishments or facilities for the provision of food and drink. Therefore, they are identical.

The contested providing temporary accommodation; temporary accommodation and the opponent's provision of food and drink are similar as they usually coincide in producer, relevant public and distribution channels.

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 or similar (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention in relation to the goods is average whereas it varies from medium to high in relation to the services depending on the price, sophistication and specialised nature, or terms and conditions of the services purchased.

c) The signs

PANDA EXPRESS	Kung Fu Panda Express
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).

Both signs are word marks. According to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (judgments of 20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The expressions 'Panda Express' and 'Kung Fu Panda Express' have no meaning as such. However, 'Kung Fu' in the contested sign will generally be understood by the public in the relevant territory as referring to a Chinese way of fighting in which people use only their bare hands and feet and 'Panda' will be understood at least by part of the public in the relevant territory, such as the English-, French- or Spanish-speaking parts, as referring to a large animal rather like a bear, which has black and white fur and lives in the bamboo forests of China. Nevertheless, in relation to the relevant goods and services, neither 'Kung Fu' nor 'Panda' have a meaning; therefore they are distinctive to a normal degree. 'Express' in both signs is used in several languages of the relevant territory, for instance in English or French, to describe special services which are provided by companies or organizations, in which things are sent or done faster than usual for a higher price. In a view of this, 'Express' is weak in relation to the relevant services and it is also in relation to the goods since, by analogy, 'Express' will be understood at least by the English- and French- speaking part of the relevant public, as indicating a characteristic of the relevant goods, namely that they can either be cooked or prepared rapidly or consumed in a relatively short time.

Visually and aurally, taking into account that it is irrelevant whether the word mark is depicted in lower or upper case letters, the signs coincide in ‘Panda Express' whereas they differ in the additional 'Kung Fu' of the contested sign. Therefore, and taking into account the degree of distinctiveness of the different elements composing the signs at issue, they are visually and aurally similar to a low degree, at least.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As established above, for part of the public, the signs coincide in the meanings conveyed by the words 'Panda' and 'Express' whereas they differ in the meaning of 'Kung Fu' in the contested sign. However, part of the relevant public at least, for instance the English-speaking part of the public, will perceive the sequence 'Kung Fu Panda' in the contested sign as referring to a panda who practises Kung Fu. Therefore, for part of the public, at least, 'Panda' is the subject of the contested sign and 'Kung Fu' qualifies it. In view of this and taking further into account the degree of distinctiveness of the different elements composing the signs, the signs are conceptually similar to an average degree, at least for part of the public.

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 as a whole has 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 mark must be seen as normal, despite the presence of a weak element in the mark, 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. 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).

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).

As seen above, in the present case, the goods and services at issue are identical or similar to different degrees and they target the public at large and professionals with a degree of attention that ranges from average to high. The earlier mark has a normal degree of distinctiveness and the marks are visually and aurally similar to a low degree, at least, and for part of the public, at least, conceptually similar to an average degree.

It should be noted that 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, taking into account that the earlier mark is completely contained in the contested sign, it is highly conceivable, that despite the degree of attention displayed and despite the low degree of similarity between some of the goods and services at issue, the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those 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 opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 12 015 236 for the figurative mark for the same goods and services as those of the earlier mark analysed above;

 European Union trade mark registration No 13 931 258 for the figurative mark for restaurant services in Class 43.

These earlier rights are less similar to the contested mark than the earlier mark analysed above. This is because they contain figurative elements which are neither present in the earlier mark analysed above nor in the contested trade mark. Moreover, these earlier marks cover either the same or a narrower scope of the goods and services covered by the earlier mark analysed above. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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 Opposition Division

Begoña URIARTE VALIENTE

Martina GALLE

Jorge ZARAGOZA GÓMEZ

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.