OPPOSITION Nо B 3 064 097

 

Armand Taieb and Nathalie Davis, 13, rue de Maubeuge, 75009 Paris, France, Stéphane Hasbanian, 180, rue de Grenelle, 75007 Paris, France and Emmanuel Hasbanian, 12, Allée Sarah Bernardt, 26000 Valence, France (opponents), represented by Legabrand, 4 rue des Catalans, 13007 Marseille, France (professional representative)

 

a g a i n s t

 

Westfälische Fleischwarenfabrik Stockmeyer GmbH, Stockmeyer-str. 1, 48336 Sassenberg, Germany (applicant), represented by Bischof & Partner Rechtsanwälte Partnerschaftsgesellschaft mbB, An den Speichern 6, 48157 Münster, Germany (professional representative).

On 18/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 064 097 is partially upheld, namely for the following contested goods:

 

Class 29: Meat extracts; prepared meat dishes; prepared dishes consisting principally of meat; ready cooked meals consisting wholly or substantially wholly of meat; fish; marmalade; black pudding; meat floss; steaks of meat; meatballs; meat gelatines; meat spreads; frozen meat products; smoked meats; packaged meats; prepared meat; meat preserves; corned beef; fresh meat; dried meat; quenelles [meat]; frozen meat; fried meat; sliced meat; processed meat products; mincemeat [chopped meat]; pie fillings of meat; canned cooked meat; shish kabobs; meat products being in the form of burgers; sausage meat; preserved sausages; smoked sausages; pepperoni; kielbasa; hotdog sausages; uncooked sausages; frankfurters; extracts of poultry; fresh poultry; poultry; deep-frozen poultry; cooked meat dishes; prepared meals made from meat [meat predominating]; prepared meals consisting primarily of meat substitutes; casseroles [food]; cooked dish consisting primarily of fermented vegetable, pork and tofu (kimchi-jjigae); cooked dish consisting primarily of soybean paste and tofu (doenjang-jjigae); cooked dish consisting primarily of rich soybean paste and tofu (cheonggukjang-jjigae); frozen prepared meals consisting principally of vegetables; jellies, jams, compotes, fruit and vegetable spreads; fruit salads; fruits, tinned [canned (Am.)]; cooked fruits; prepared fruits; aromatized fruit; preserved fruits; pickled fruits; frozen fruits; dried fruit; glazed fruits; mixtures of fruit and nuts; bottled fruits; fruit preserves; pre-cut vegetables for salads; buttermilk; meat jellies; meat-based mousses; jellies; mincemeat [preserved fruit]; fish paste; steaks of fish; fish fillets; foods made from fish; fish, tinned [canned (Am.)]; fish spread; fish sticks; processed fish; quenelles [fish]; frozen fish; fish, preserved (listed three times); pickled fish; mullet roe salad; seafood products; prepared meals consisting principally of game; prepared meals consisting substantially of seafood; processed fruits, fungi and vegetables (including nuts and pulses); prepared salads; canned meat (listed twice); preserved meat (listed twice); salted meats (listed twice); sausages (listed twice); game (listed twice); meat (listed twice); charcuterie; meat boiled down in soy sauce (tsukudani meat); meat-based snack foods; prepared meals made from poultry [poultry predominating]; prepared meals containing [principally] eggs; prepared meals containing [principally] bacon; prepared meals containing [principally] chicken; poultry salads; fish sausages; pre-packaged dinners consisting primarily of game; ready cooked meals consisting wholly or substantially wholly of game; ready cooked meals consisting wholly or substantially wholly of poultry; chilled foods consisting predominately of fish; stock (listed twice); beef bouillon; broth concentrates; faggots [food]; chop suey; chili con carne; fish stock; fish croquettes; fish cakes; sausages in batter; chicharron; legume salads; caesar salad; antipasto salads; soup cubes; soup pastes; soup powders; extracts for soups; soup (Preparations for making -); mixes for making soup (listed twice); soup concentrates; soups; dahls; pre-cooked soup; canned soups; scotch eggs; dairy puddings (listed twice); artificial milk based desserts; stews; yoghurt desserts; tzatziki; preparations for making bouillon; soya [prepared]; soya milk (milk substitute) (listed three times); milk; dried milk; milk shakes; milk products; beverages having a milk base; milk drinks containing fruits; milk-based beverages containing fruit juice; milk-based beverages containing coffee; cream [dairy products]; sour cream substitutes; yoghurt; yogurt drinks; drinks based on yogurt; preparations for making yoghurt; soya yoghurt; eggs; egg substitutes; processed eggs; century eggs; frozen eggs; foodstuffs based on fermented vegetables (kimchi); beverages made from or containing milk; yams; toasted laver.   Class 30: Prepared meals in the form of pizzas; bread; frozen yogurt confections; confectionery ices; prepared foodstuffs in the form of sauces; packaged food consisting of rice with meat, fish or vegetables; ready-made dishes containing pasta (listed twice); pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; rice-based prepared meals; prepared meals containing [principally] pasta; prepared meals containing [principally] rice; spicy sauces; meat gravies (listed twice); rice puddings; non-meat pies; frozen pastry stuffed with meat; frozen pastry stuffed with meat and vegetables; fruit cakes; pastries containing fruit (listed three times); tarts; fruit filled pastry products (listed twice); pastries containing creams and fruit; candy cake; confectionery; condiments; sauces; meat pies; pies containing meat; spaghetti and meatballs; sandwiches containing meat; pastries consisting of vegetables and meat; bibimbap [rice mixed with vegetables and beef]; sandwiches containing fish; sausage rolls; fresh sausage rolls; frankfurter sandwiches; poultry and game meat pies; pies containing game; pies containing poultry; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; sandwiches containing salad; egg pies; pelmeni [dumplings stuffed with meat]; fish dumplings; food preparations based on grains; toffee; confectionery bars; sherbets [confectionery]; sugarless sweets; non-medicated confectionery candy; jam filled brioches; non-medicated confectionery containing milk; confectionery containing jam; fruit jellies [confectionery]; mousse confections; confectionery in frozen form; mousses (Dessert -) [confectionery]; cocoa beverages with milk; coffee beverages with milk; milk chocolates; chocolate drink preparations; preparations based on cocoa; vegetal preparations for use as coffee substitutes; cocoa-based beverages.   Class 32: All the contested goods in this class.

2.

European Union trade mark application No 17 878 815 is rejected for the goods as reflected above under point 1 of this dictum. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 13/09/2018, the opponents filed an opposition against some of the goods of European Union trade mark application No 17 878 815 for the word mark 'Fuxia', namely against all the goods in Classes 29, 30 and 32. The opposition is based on European Union trade mark registration No 4 764 163 for the figurative mark . The opponents 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) Goods and services

 

Following a partial revocation of the earlier mark as from 20/09/2018 by virtue of the decision issued by the Cancellation Division in case C 27 721, which has now become final, the goods and services on which the opposition was based and for which the earlier mark is still registered are the following services:

 

Class 43: Restaurants, bars; catering.

The contested goods are the following:

Class 29: Meat; Charcuterie; Black pudding; Meat; Fish sausages; Vegetarian sausages; Toasted laver; Foodstuffs based on fermented vegetables (kimchi); Fruit-based snack food; Soya milk (milk substitute); Chilled foods consisting predominately of fish; Stock; Meat floss; Steaks of meat; Meat substitutes; Meatballs; Meat extracts; Meat gelatines; Beef bouillon; Canned meat; Meat jellies; Meat spreads; Prepared meat dishes; Frozen meat products; Chicharron; Cooked meat dishes; Broth concentrates; Smoked meats; Packaged meats; Preserved meat; Meat-based mousses; Prepared meat; Meat preserves; Corned beef; Preserved meat; Fresh meat; Dried meat; Quenelles [meat]; Frozen meat; Fried meat; Sliced meat; Faggots [food]; Processed meat products; Mincemeat [chopped meat]; Canned meat; Pie fillings of meat; Meat boiled down in soy sauce (tsukudani meat); Canned cooked meat; Meat-based snack foods; Salted meats; Salted meats; Shish kabobs; Vegetable-based meat substitutes; Prepared meals made from meat [meat predominating]; Prepared dishes consisting principally of meat; Prepared meals consisting primarily of meat substitutes; Meat products being in the form of burgers; Chop suey; Chili con carne; Ready cooked meals consisting wholly or substantially wholly of meat; Fish; Fish stock; Fish paste; Steaks of fish; Fish fillets; Foods made from fish; Fish, tinned [canned (Am.)]; Fish croquettes; Fish spread; Fish cakes; Fish sticks; Processed fish; Quenelles [fish]; Frozen fish; Fish, preserved; Pickled fish; Fish, preserved; Fish, preserved; Sausage meat; Preserved sausages; Sausages; Smoked sausages; Pepperoni; Kielbasa; Hotdog sausages; Uncooked sausages; Frankfurters; Sausages; Sausages in batter; Game; Game; Prepared meals consisting principally of game; Pre-packaged dinners consisting primarily of game; Ready cooked meals consisting wholly or substantially wholly of game; Poultry salads; Poultry substitutes; Extracts of poultry; Fresh poultry; Poultry; Deep-frozen poultry; Prepared meals made from poultry [poultry predominating]; Ready cooked meals consisting wholly or substantially wholly of poultry; Prepared meals containing [principally] eggs; Prepared meals containing [principally] chicken; Prepared meals containing [principally] bacon; Prepared meals consisting substantially of seafood; Frozen prepared meals consisting principally of vegetables; Dried fruit-based snacks; Vegetable-based snack foods; Nut-based snack foods; Tofu-based snacks; Snack foods based on nuts; Snack foods based on vegetables; Snack foods based on legumes; Potato-based snack foods; Jellies; Jellies, jams, compotes, fruit and vegetable spreads; Fruit salads; Fruits, tinned [canned (Am.)]; Cooked fruits; Prepared fruits; Aromatized fruit; Preserved fruits; Pickled fruits; Frozen fruits; Dried fruit; Glazed fruits; Mixtures of fruit and nuts; Bottled fruits; Fruit preserves; Processed fruits, fungi and vegetables (including nuts and pulses); Prepared salads; Mullet roe salad; Legume salads; Caesar salad; Antipasto salads; Pre-cut vegetables for salads; Soup cubes; Soup pastes; Soup powders; Extracts for soups; Soup (Preparations for making -); Mixes for making soup; Soup concentrates; Soups; Dahls; Pre-cooked soup; Canned soups; Mixes for making soup; Stock; Eggs; Egg substitutes; Processed eggs; Century eggs; Frozen eggs; Scotch eggs; Milk; Dried milk; Milk shakes; Milk products; Beverages having a milk base; Milk drinks containing fruits; Dairy puddings; Beverages made from or containing milk; Milk-based beverages containing fruit juice; Milk-based beverages containing coffee; Artificial milk based desserts; Butter; Buttermilk; Clarified butter; Butter substitutes; Concentrated butter; Cheese; Cheese sticks; Cheese substitutes; Cheese mixtures; Stews; Cream [dairy products]; Sour cream substitutes; Yoghurt; Yogurt drinks; Yoghurt desserts; Dairy puddings; Tzatziki; Drinks based on yogurt; Preparations for making yoghurt; Oils for food; Edible fats; Marmalade; Casseroles [food]; Tofu; Beancurd sticks; Fermented bean curd; Cooked dish consisting primarily of fermented vegetable, pork and tofu (kimchi-jjigae); Cooked dish consisting primarily of soybean paste and tofu (doenjang-jjigae); Cooked dish consisting primarily of rich soybean paste and tofu (cheonggukjang-jjigae); Yams; Mincemeat [preserved fruit]; Seasoned nuts; Cottage cheese preparations; Preparations for making bouillon; Soya milk [milk substitute]; Soy chips; Soya yoghurt; Soybean oil; Soya milk [milk substitute]; Tofu; Soya beans, preserved, for food; Soya [prepared]; Soya beans, preserved, for food; Dried soya beans; Seafood products; Vegetable fats for food; Vegetable oils for food; Vegetable burgers.

Class 30: Vinegar; Sauces; Mixes for preparing sauces; Soya sauce; Spices; Ice; Dressings for salad; Cereal-based snack food; Rice-based snack food; Wheat germ [other than a dietary supplement]; Salt for preserving foodstuffs; Food preparations based on grains; Alimentary seasonings; Food leavening agents; Prepared foodstuffs in the form of sauces; Thickening agents for cooking foodstuffs; Fructose syrup for use in the manufacture of foods; Substances imparting flavour for addition to food [other than essential oils]; Meat gravies; Meat pies; Pies containing meat; Non-meat pies; Spaghetti and meatballs; Crackers flavoured with meat; Flavourings made from meat; Sandwiches containing meat; Meat gravies; Pelmeni [dumplings stuffed with meat]; Filled yeast dough with fillings consisting of meat; Pastries consisting of vegetables and meat; Frozen pastry stuffed with meat; Bibimbap [rice mixed with vegetables and beef]; Seasoned coating for meat, fish, poultry; Meat tenderizers, for household purposes; Frozen pastry stuffed with meat and vegetables; Packaged food consisting of rice with meat, fish or vegetables; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Fish dumplings; Sandwiches containing fish; Sausage rolls; Fresh sausage rolls; Frankfurter sandwiches; Poultry and game meat pies; Pies containing game; Pies containing poultry; Ready-made dishes containing pasta; Rice-based prepared meals; Ready-made dishes containing pasta; Prepared meals containing [principally] pasta; Prepared meals containing [principally] rice; Prepared meals in the form of pizzas; Dry and liquid ready-to-serve meals, mainly consisting of rice; Dry and liquid ready-to-serve meals, mainly consisting of pasta; Tortilla snacks; Snacks with sesame; Snack food products made from cereal starch; Snack foods made of whole wheat; Snack food products made from maize flour; Snack food products made from potato flour; Rice-based snack food; Snack food products made from rusk flour; Cereal-based snack food; Snack food products made from potato flour; Snacks manufactured from muesli; Snack foods prepared from maize; Cereal-based snack food; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Cereal-based snack food; Snack foods consisting principally of extruded cereals; Ready to eat savory snack foods made from maize meal formed by extrusion; Cheese flavored puffed corn snacks; Fruit vinegar; Fruit cakes; Pastries containing fruit; Tarts; Pastries containing fruit; Pastries containing fruit; Fruit filled pastry products; Fruit filled pastry products; Pastries containing creams and fruit; Breakfast cereals containing a mixture of fruit and fibre; Snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; Dressings for salad; Sandwiches containing salad; Salad dressings containing cream; Vermicelli [noodles]; Pasta for soups; Flavourings for soups; Egg noodles; Egg pies; Pasta containing eggs; Rice puddings; Cocoa beverages with milk; Coffee beverages with milk; Toffee; Gruel, with a milk base, for food; Milk chocolates; Non-medicated confectionery containing milk; Cheese sauce; Cereal snack foods flavoured with cheese; Boiled confectionery; Frozen yogurt confections; Confectionery containing jam; Jam filled brioches; Mustard for food; Salt; Mustard; Sugar substitutes; Syrups and treacles; Sugar, honey, treacle; Confectionery; Confectionery bars; Confectionery ices; Fruit jellies [confectionery]; Sugarless sweets; Mousse confections; Liquorice [confectionery]; Sherbets [confectionery]; Rock [confectionery]; Confectionery in frozen form; Mousses (Dessert -) [confectionery]; Candy cake; Sweeteners (Natural -); Non-medicated confectionery candy; Boiled sweets; Seasoning mixes; Spiced salt; Cloves [spice]; Spicy sauces; Spice extracts; Marinades containing seasonings; Spice preparations; Condiments; Chocolate drink preparations; Preparations based on cocoa; Soya sauce; Snack food products made from soya flour; Hominy grits; Processed corn; Puffed cheese balls [corn snacks]; Vegetal preparations for use as coffee substitutes; Vegetable-based seasonings for pasta; Vegan mayonnaise; Cocoa-based beverages; Bread; Bread doughs.

Class 32: Non-alcoholic beverages; Mineral water [beverages]; Aerated water; Fruit drinks; Juices; Smoothies; Non-alcoholic sparkling fruit juice drinks; Preparations for making beverages; Syrups for making beverages; Non-alcoholic fruit extracts.

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.

The Opposition Division notes that some terms in the contested application in Classes 29 and 30 are identically listed various times, such as meat in Class 29 which is listed twice and pastries containing fruit in Class 30 which is listed three times. In this respect, while all these duplicate terms will be taken into account, they will only be listed once in the comparisons that follow.

 

Contested goods in Class 29

The opponents’ services in Class 43 are services of a restaurant, including catering and bar services, which are intended for serving food and drinks directly for consumption.

The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26).

Nevertheless, in certain situations these goods and services can be complementary (04/06/2015, T-562/14, YOO/ YO, EU:T:2015:363, § 25, 27; 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). Goods and services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).

However, consumers may think that responsibility does lie with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs).

The contested meat extracts; prepared meat dishes; prepared dishes consisting principally of meat; ready cooked meals consisting wholly or substantially wholly of meat; fish; marmalade; black pudding; meat floss; steaks of meat; meatballs; meat gelatines; meat spreads; frozen meat products; smoked meats; packaged meats; prepared meat; meat preserves; corned beef; fresh meat; dried meat; quenelles [meat]; frozen meat; fried meat; sliced meat; processed meat products; mincemeat [chopped meat]; pie fillings of meat; canned cooked meat; shish kabobs; meat products being in the form of burgers; sausage meat; preserved sausages; smoked sausages; pepperoni; kielbasa; hotdog sausages; uncooked sausages; frankfurters; extracts of poultry; fresh poultry; poultry; deep-frozen poultry; cooked meat dishes; prepared meals made from meat [meat predominating]; prepared meals consisting primarily of meat substitutes; casseroles [food]; cooked dish consisting primarily of fermented vegetable, pork and tofu (kimchi-jjigae); cooked dish consisting primarily of soybean paste and tofu (doenjang-jjigae); cooked dish consisting primarily of rich soybean paste and tofu (cheonggukjang-jjigae); frozen prepared meals consisting principally of vegetables; jellies, jams, compotes, fruit and vegetable spreads; fruit salads; fruits, tinned [canned (Am.)]; cooked fruits; prepared fruits; aromatized fruit; preserved fruits; pickled fruits; frozen fruits; dried fruit; glazed fruits; mixtures of fruit and nuts; bottled fruits; fruit preserves; pre-cut vegetables for salads; buttermilk; meat jellies; meat-based mousses; jellies; mincemeat [preserved fruit]; fish paste; steaks of fish; fish fillets; foods made from fish; fish, tinned [canned (Am.)]; fish spread; fish sticks; processed fish; quenelles [fish]; frozen fish; fish, preserved; pickled fish; mullet roe salad; seafood products; prepared meals consisting principally of game; prepared meals consisting substantially of seafood; processed fruits, fungi and vegetables (including nuts and pulses); prepared salads; canned meat; preserved meat; salted meats; sausages; game; meat; charcuterie; meat boiled down in soy sauce (tsukudani meat); meat-based snack foods; prepared meals made from poultry [poultry predominating]; prepared meals containing [principally] eggs; prepared meals containing [principally] bacon; prepared meals containing [principally] chicken; poultry salads; fish sausages; pre-packaged dinners consisting primarily of game; ready cooked meals consisting wholly or substantially wholly of game; ready cooked meals consisting wholly or substantially wholly of poultry; chilled foods consisting predominately of fish; stock; beef bouillon; broth concentrates; faggots [food]; chop suey; chili con carne; fish stock; fish croquettes; fish cakes; sausages in batter; chicharron; legume salads; caesar salad; antipasto salads; soup cubes; soup pastes; soup powders; extracts for soups; soup (Preparations for making -); mixes for making soup; soup concentrates; soups; dahls; pre-cooked soup; canned soups; scotch eggs; dairy puddings; artificial milk based desserts; stews; yoghurt desserts; tzatziki; preparations for making bouillon; soya [prepared]; soya milk (milk substitute); milk; dried milk; milk shakes; milk products; beverages having a milk base; milk drinks containing fruits; milk-based beverages containing fruit juice; milk-based beverages containing coffee; cream [dairy products]; sour cream substitutes; yoghurt; yogurt drinks; drinks based on yogurt; preparations for making yoghurt; soya yoghurt; eggs; egg substitutes; processed eggs; century eggs; frozen eggs; foodstuffs based on fermented vegetables (kimchi); beverages made from or containing milk; yams; toasted laver essentially consist of or include meat and meat products, fish and fish products, processed fruit and vegetables, dairy-based beverages or substitutes thereto as well as prepared meals and cooked dishes.

In this respect, some butchers or charcuteries may roast chickens or other types of meat. Although those goods are not necessarily consumed on the premises, there is an overlap with the services of a fast food restaurant or take away. The same is true with regard to some fishmongers who offer their customers a selection of fish and seafood to take away or to be cooked and eaten on the premises (in an adjoining restaurant). Furthermore, restaurants may cultivate a vegetable plot and use those goods to make its dishes. It may also make some dishes to take away (for example, cooked pear or apple, etc.). There are also country restaurants which make conserves, place them on shelves by the till and sell them to their customers (for example, cooked peppers in olive oil, cooked pears preserved in alcohol, etc.) and farm-to-table restaurants and farmers’ markets where both the provision of food and drink and goods from local produce, such as processed vegetables, fruit, meat and eggs, may be offered for sale. Moreover, dairy beverages and desserts as well as substitutes thereto are often offered both for take-away as well as for consumption in restaurants or other establishments providing services of a restaurant under the same brand. Finally, many restaurants offer prepared meals and cooked dishes of all kinds for take-away in addition to their services of providing food and drinks on their premises. Therefore, the above contested goods and the opponents’ services of restaurants often coincide in distribution channels, can be produced and provided by the same undertakings and are also closely connected in such a way that consumers are likely to believe that they originate from the same commercial source or economically linked undertakings and are therefore complementary. Consequently, they are similar to a low degree.

However, the contested meat substitutes; poultry substitutes; vegetarian sausages; fruit-based snack food; vegetable-based meat substitutes; dried fruit-based snacks; vegetable-based snack foods; nut-based snack foods; tofu-based snacks; snack foods based on nuts; snack foods based on vegetables; snack foods based on legumes; potato-based snack foods; butter; clarified butter; butter substitutes; concentrated butter; cheese; cheese sticks; cheese substitutes; cheese mixtures; oils for food; edible fats; tofu; beancurd sticks; fermented bean curd; seasoned nuts; cottage cheese preparations; soy chips; soybean oil; soya beans, preserved, for food; dried soya beans; vegetable fats for food; vegetable oils for food; vegetable burgers essentially consist of meat substitutes, tofu, cheese, edible oils and fats as well as different snacks. The Opposition Division does not consider it to be a well-known fact that the provision of food and drinks and the manufacture of these goods are commonly offered by the same undertaking under the same trade mark and the opponents did not provide any evidence to the contrary. Indeed, they are not typically found in charcuteries or fish shops and these goods are not prepared meals or cooked dishes which are packaged and offered for take-away as such. Furthermore, the fact that some of the goods concerned may be an ingredient in dishes served in a restaurant is not sufficient in itself to establish similarity. The opponents indicate that snacks designate a type of food that is ready to be eaten and claims that such goods are usually prepared by restaurants to take away or on site. However, even if some snacks may be offered by restaurants to enjoy together with a beer or other drinks or while waiting for the main meal to be prepared, snacks are not typically produced by restaurants and offered to be purchased separately under the same brand for take away. It should be noted that the relevant public will perceive different goods (or goods and services as the case may be) as having a common commercial source only where a large part of the producers or distributors of the products (or products and services) in question are the same (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 37; 01/03/2005, T‑169/03, Sissi Rossi, EU:T:2005:72, § 63). As a result, in the absence of any evidence to the contrary by the opponents, these contested goods and the opponents’ services in Class 43 cannot be found to share the same commercial source. Furthermore, even if at least some of the goods under comparison may be used in the course of the provision of the opponents’ services, consumers are unlikely to believe that responsibility for the production of those goods and the provision of those services lies with the same undertaking and they cannot, therefore, be considered to be complementary to each other. As a result, these goods must be considered to be dissimilar to the opponents’ services in Class 43.

Contested goods in Class 30

The contested prepared meals in the form of pizzas; bread; frozen yogurt confections; confectionery ices; prepared foodstuffs in the form of sauces; packaged food consisting of rice with meat, fish or vegetables; ready-made dishes containing pasta; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; rice-based prepared meals; prepared meals containing [principally] pasta; prepared meals containing [principally] rice; spicy sauces; meat gravies; rice puddings; non-meat pies; frozen pastry stuffed with meat; frozen pastry stuffed with meat and vegetables; fruit cakes; pastries containing fruit; tarts; fruit filled pastry products; pastries containing creams and fruit; candy cake; confectionery; condiments; sauces; meat pies; pies containing meat; spaghetti and meatballs; sandwiches containing meat; pastries consisting of vegetables and meat; bibimbap [rice mixed with vegetables and beef]; sandwiches containing fish; sausage rolls; fresh sausage rolls; frankfurter sandwiches; poultry and game meat pies; pies containing game; pies containing poultry; dry and liquid ready-to-serve meals, mainly consisting of rice; dry and liquid ready-to-serve meals, mainly consisting of pasta; sandwiches containing salad; egg pies; pelmeni [dumplings stuffed with meat]; fish dumplings; food preparations based on grains; toffee; confectionery bars; sherbets [confectionery]; sugarless sweets; non-medicated confectionery candy; jam filled brioches; non-medicated confectionery containing milk; confectionery containing jam; fruit jellies [confectionery]; mousse confections; confectionery in frozen form; mousses (Dessert -) [confectionery]; cocoa beverages with milk; coffee beverages with milk; milk chocolates; chocolate drink preparations; preparations based on cocoa; vegetal preparations for use as coffee substitutes; cocoa-based beverages essentially consist of or include prepared meals or cooked dishes, bread, condiments and sauces (which include tomato sauces and chutneys) as well as desserts and chocolate products (including chocolate or coffee-based beverages and substitutes thereto).

As already outlined above, many restaurants offer prepared meals and cooked dishes of all kinds for take-away, including certain own-made sauces such as tomato sauces and chutneys, in addition to their services of providing food and drinks on their premises. Chocolate or coffee-based beverages and desserts as well as substitutes thereto are also often offered both for take-away as well as for consumption in restaurants or other establishments providing services of a restaurant under the same brand. Furthermore, it is common knowledge that providers of restaurant or catering services often make their own bread, pastries or chocolate products. Therefore, these contested goods and the opponents’ services of restaurants often coincide in distribution channels, can be produced and provided by the same undertakings and are also closely connected in such a way that consumers are likely to believe that they originate from the same commercial source or economically linked undertakings and are therefore complementary. Consequently, they are similar to a low degree.

However, the contested ice; vinegar; salt for preserving foodstuffs; fruit vinegar; salt; spiced salt; food leavening agents; spices; alimentary seasonings; substances imparting flavour for addition to food [other than essential oils]; flavourings made from meat; seasoned coating for meat, fish, poultry; meat tenderizers, for household purposes; flavourings for soups; seasoning mixes; cloves [spice]; spice extracts; marinades containing seasonings; spice preparations; vegetable-based seasonings for pasta; mixes for preparing sauces; soya sauce; dressings for salad; salad dressings containing cream; cheese sauce; mustard for food; mustard; vegan mayonnaise; cereal-based snack food; rice-based snack food; crackers flavoured with meat; tortilla snacks; snack food products made from cereal starch; snack foods made of whole wheat; snack food products made from maize flour; snack food products made from potato flour; snack food products made from rusk flour; snacks manufactured from muesli; snack foods prepared from maize; snack foods consisting principally of bread; snack foods consisting principally of extruded cereals; ready to eat savory snack foods made from maize meal formed by extrusion; cheese flavored puffed corn snacks; cereal snack foods flavoured with cheese; snack food products made from soya flour; puffed cheese balls [corn snacks]; wheat germ [other than a dietary supplement]; gruel, with a milk base, for food; processed corn; vermicelli [noodles]; pasta for soups; egg noodles; pasta containing eggs; filled yeast dough with fillings consisting of meat; bread doughs; breakfast cereals containing a mixture of fruit and fibre; hominy grits; thickening agents for cooking foodstuffs; fructose syrup for use in the manufacture of foods; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; liquorice [confectionery]; rock [confectionery]; boiled sweets; snack foods consisting principally of confectionery; boiled confectionery; sugar substitutes; syrups and treacles; sugar, honey, treacle; sweeteners (Natural -); snacks with sesame essentially consist of ice, vinegar, spices, seasonings, marinades and flavourings, leavening and thickening agents, soya sauce, cheese sauce, mayonnaise and salad dressings, pasta (including noodles) and rice, syrups, treacle and other natural sweeteners, hard sweets and liquorice as well as different snacks. The Opposition Division does not consider it to be a well-known fact that the provision of food and drinks and the manufacture of these goods are commonly offered by the same undertaking under the same trade mark and the opponents did not provide any evidence to the contrary. Indeed, they are not prepared meals or cooked dishes which are packaged and offered for take-away as such. Furthermore, even if certain own-made sauces such as tomato sauces and chutneys can typically be offered and sold separately by restaurants, that may not be the case with others, such as mustard or mayonnaise, or salt and other spices or seasonings as well as natural sweeteners, such as syrups or honey, or edible oils and fats. The opponents claim that around the Mediterranean area, some restaurants produce their own oils, dressing and spices and that the consumers will see the brand affixed on these goods. However, this allegation is not supported by any evidence to that affect and is therefore fully unsubstantiated. The opponents also argue that ice will usually be added to a preparation (usually a drink) made by the restaurants on the spot and sold under their brand. However, to the best of the Opposition Division’s knowledge, ice is not sold over the counter by restaurants or other providers of food and drink under the same brand as a product for take away. Moreover, even if restaurants and other establishments for providing food and drink may also often produce desserts, pastries and chocolate products both for consumption in the premises and for take-away, they would not usually sell dough which require further elaboration and it cannot be considered to be a well-known fact that they would normally produce hard sweets or liquorice which are not foodstuffs that are typically eaten as desserts at the end of a meal. As regards the opponents’ arguments in relation to ingredients and snacks, they have already been addressed in the comparison made above in Class 29 and are equally applicable to goods that might be used as ingredients or are snacks in this class. Therefore, in the absence of any evidence to the contrary by the opponents, these contested goods and the opponents’ services in Class 43 cannot be found to share the same commercial source. Furthermore, even if at least some of the goods under comparison may be used in the course of the provision of the opponents’ services, consumers are unlikely to believe that responsibility for the production of those goods and the provision of those services lies with the same undertaking and they cannot, therefore, be considered to be complementary to each other. As a result, these contested goods must be considered to be dissimilar to the opponents’ services in Class 43.

Contested goods in class 32

Similarly to in the beer, wine or coffee sector, there are also numerous manufacturers in the field of other non-alcoholic beverages (and preparations therefor) which also cater for guests under their trade mark, for instance in direct marketing or in the field of outside catering.

Therefore, the contested non-alcoholic beverages; mineral water [beverages]; aerated water; fruit drinks; juices; smoothies; non-alcoholic sparkling fruit juice drinks; preparations for making beverages; syrups for making beverages; non-alcoholic fruit extracts are similar to a low degree to the opponents’ services of restaurants since they often coincide in distribution channels, can be produced and provided by the same undertakings and are also closely connected in such a way that consumers are likely to believe that they originate from the same commercial source or economically linked undertakings and are therefore complementary.

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 is considered to be average.

 

c) The signs

 

	Fuxia
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 coinciding element 'FUXIA' does not exist as such in any language of the European Union. However, it is very close to the word 'fuchsia' which is used in many languages (or equivalent words in some languages, such as 'fuksja' in Polish, 'fuksija' in Latvian, 'fukszia' in Hungarian, 'fuksie' in Czech and 'fucsia' in Spanish and Italian, etc.) which refers to a reddish-purple or purplish-pink colour and/or to 'a genus of ornamental shrubs (family Onagraceæ) with drooping flowers' (information extracted from Oxford English Dictionary on 13/08/2021 at www.oed.com/view/Entry/75190?redirectedFrom=fuchsia#eid). Therefore, at least the majority of the relevant public in the European Union is likely to associate the verbal element 'FUXIA' in both signs with either of these meanings. However, since neither of those connotations constitutes an intrinsic characteristic inherent to the nature of the goods or services concerned, the fact that 'FUXIA' is associated either with a specific unusual colour name or an ornamental plant does not have a material impact on its degree of distinctiveness. Therefore, irrespective of the concept conveyed by 'FUXIA' in the mind of the relevant consumers as outlined above, including for the (small) part of the public that might perceive this term as a meaningless word, it will be perceived as distinctive to a normal degree.

As regards the additional square black background in the earlier mark, the use of backgrounds such as squares or frames is quite common and they generally serve to highlight other elements (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T-37/16, CAFFE NERO, EU:T:2016:634, § 42). Therefore, this element in the earlier mark is non-distinctive. Furthermore, the stylization of the verbal element in the earlier mark is not of such a nature as to render the word illegible or detract the consumers’ attention away from the verbal element as such.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

 

As a final remark, it should be taken into account that in the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant, for the purposes of the comparison of the signs that the coinciding verbal element 'FUXIA' is depicted in upper case letters in the earlier mark whereas it is depicted as a capitalised word in the contested sign insofar as the capitalisation of that word does not depart from the usual way of writing (see to this effect 31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

 

Visually, the signs coincide in the distinctive verbal element 'FUXIA' which is the only element of the contested sign and the only distinctive element of the earlier mark. The signs only differ in the additional background of the earlier mark which is, however, non-distinctive and the stylization of the verbal element which will nevertheless not have a significant impact in the overall impression produced by the earlier mark on consumers for the reasons set out above.

 

Therefore, the signs are visually highly similar.

  

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, since the only verbal element 'FUXIA' of both signs will be pronounced in the same way, they are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the coinciding element 'FUXIA' will convey the same meaning to consumers irrespective of the concept conveyed by this word as explained above, and since the additional background in the earlier mark does not convey any particular concept, for the majority of the relevant public the signs will be perceived as conceptually identical.

For the (small) part of the public in the relevant territory that might perceive the coinciding verbal element as meaningless, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs for that 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 opponents 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, irrespective of whether or not the verbal element 'FUXIA' will be perceived as conveying a concept, the earlier trade mark has no particular meaning for any of the services in question from the perspective of the public in the relevant territory as explained above. 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 goods and services concerned are partly similar to a low degree and partly dissimilar and the degree of attention of the relevant public is average.

 

The distinctiveness of the earlier mark is normal and the signs have been found to be visually highly similar as well as aurally and conceptually identical, at least for the majority of the relevant public, or otherwise conceptually neutral for a (small) part thereof.

Bearing in mind the normal distinctiveness of the earlier mark and the overall high degree of similarity between the signs, irrespective of whether or not the coinciding element 'FUXIA' will be perceived as conveying a concept, there is a likelihood of confusion on the part of the public which cannot be offset by the low degree of similarity between the goods and services concerned. Indeed, consumers are likely to believe that those goods and services offered under the respective signs originated from the same or economically linked undertakings.

Therefore, the opposition is partly well founded on the basis of the opponents’ European Union trade mark registration No 4 764 163.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to the services of the earlier trade mark.

The rest of the contested goods are dissimilar to the opponents’ services. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Cynthia DEN DEKKER

Sam GYLLING

Michele M. BENEDETTI-ALOISI

 

 

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.