OPPOSITION No B 3 059 404

Amaiz Group Ltd, Georgiou A, 69, Germasogeia, 4047, Limassol, Cyprus (opponent), represented by Agency Tria Robit, Vilandes iela 5, Riga, LV‑1010, Latvia (professional representative)

a g a i n s t

Amaize International LLC, 6700 Main Street, Miami Lakes, FL 33014, United States (applicant), represented by Roland & Douglas, Avda Roma 101, Esc. Izda, E‑3, 08029, Barcelona, Spain (professional representative).

On 11/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 404 is partially upheld, namely for the following contested service:

Class 35: Business management of restaurant businesses.

2. European Union trade mark application No 17 885 204 is rejected for the above service. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 885 204 for the word mark ‘AMAIZE’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 16 433 963 for the word mark ‘Amaiz’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 35: Advertising services; advertising, marketing and promotional services; collection of information relating to advertising; brand creation services (advertising and promotion); compilation of statistics relating to advertising; business advertising services relating to franchising; advertising, promotional and public relations services; research services relating to advertising and marketing; advertising, marketing and promotional consultancy, advisory and assistance services; organisation of customer loyalty programs for commercial, promotional or advertising purposes; organisation and conducting of product presentations; organisation and management of business incentive and loyalty schemes.

The contested services are the following:

Class 35: Business management of restaurant businesses; business administration of restaurant businesses.

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.

All the opponent’s services are in fact related to advertisement, promotional and marketing activities and they consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The contested business management of restaurant businesses is usually rendered by specialist companies such as business consultants with the focus on restaurant businesses. These companies gather information and provide tools and expertise to enable their customers to carry out their restaurant business or provide restaurant businesses with the necessary support to acquire, develop and expand market share. The service includes activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a restaurant business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

When comparing business management of restaurant businesses with advertising services, advertising is an essential tool in restaurant business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management of restaurant businesses is to help a restaurant business ‘acquire, develop and expand market share’. Contrary to the applicant’s argument, there is no clear-cut difference between the two. A professional who offers advice on how to run a restaurant business efficiently may reasonably include advertising strategies in his or her advice because there is little doubt that advertising plays an essential role in restaurant business management. Furthermore, business consultants focused on restaurant businesses may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

However, the contested business administration of restaurant businesses is mainly intended to help companies operating in the field of restaurants with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. This service consists of organising people and resources efficiently so as to direct activities toward common goals and objectives. Compared to the opponent’s services in Class 35, which are basically related to advertising, promoting and marketing activities, this service has a different nature and purpose and is rendered by different service providers. Therefore, these services are considered dissimilar. Although the relevant public may coincide in some cases, this on its own would not be sufficient to find any degree of similarity.

The Opposition Division does not agree with the opponent’s argument that the contested business administration of restaurant businesses includes the opponent’s organisation of customer loyalty programs for commercial, promotional or advertising purposes; organisation and conducting of product presentations; organisation and management of business incentive and loyalty schemes. These services of the opponent deal with advertising and marketing tools, while the contested service is more about the organisation and running of a business, as outlined above. In view of the foregoing, the opponent’s argument has to be rejected as unfounded.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise.

The degree of attention of the relevant public may vary from average to high, depending on the exact nature of the services and the financial involvement that they imply.

c) The signs

Amaiz	AMAIZE
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 signs under comparison are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper- or lower-case letters or a combination thereof (21/09/2012, T‑278/10, WESTERN GOLD / WeserGold et al., EU:T:2012:1257, § 44, 46).

The words ‘Amaiz’ and ‘AMAIZE’ may, in certain territories, for example in those countries where English is understood, be associated with the verb ‘amaze’, meaning ‘to cause someone to be extremely surprised’ (information extracted from Cambridge Dictionary on line at https://dictionary.cambridge.org/dictionary/english/amaze), when perceived aurally. However, this is not the case for the remaining part of the public in the relevant territory, for which both words are meaningless.

Contrary to the applicant’s argument, the Opposition Division considers it rather unlikely that the relevant public within the European Union will associate the word ‘AMAIZ’ with a Venezuelan name, as there is no valid reason to believe (and the applicant did not submit any evidence in this regard) that consumers in the European Union should generally be aware of names in use in Venezuela. Therefore, the applicant’s argument must be set aside.

Regardless of whether or not the words ‘Amaiz’ and ‘AMAIZE’ will be associated with the verb ‘amaze’, they are both distinctive to a normal degree for the relevant services.

Visually and aurally, the signs coincide in the letters/sounds ‘AMAIZ*’, which form the entire earlier mark and are present in the same order in the contested sign. In contrast, the signs differ visually in the last letter/sound ‘E’ of the contested sign. However, the impact of this additional letter will not be perceptible aurally, at least in some languages, such as English.

In view of the foregoing, the signs are visually similar to a high degree and aurally identical, at least for part of the public.

Conceptually, as seen above, the English-speaking part of the public in the relevant territory may associate both signs with the verb ‘amaze’. Therefore, for this part of the relevant public, the signs are conceptually identical.

However, for the remaining part of the public in the relevant territory neither of the signs has a meaning. In this case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark has a higher degree of distinctiveness given that it is a fanciful word.

As regards this opponent’s argument, first of all it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any further argumentation or evidence in order to prove its claim. Therefore, this claim must be set aside as unfounded.

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 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.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (Recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account must also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

As concluded above, the contested services are partly similar to a low degree and partly dissimilar to the opponent’s services. Those found to be similar to a low degree target business customers with a degree of attention varying from average to high. The earlier trade mark has a normal degree of inherent distinctiveness.

As explained in detail in section c) of this decision, the signs are visually similar to a high degree and for part of the relevant public they are aurally and conceptually identical. It is also important to note that the earlier trade mark is entirely incorporated within the contested sign.

The Opposition Division is of the opinion that the difference in the additional and final letter ‘E’ in the contested sign is not sufficient to counteract the overwhelming similarities between the signs. Even business customers with a high degree of attention may be confused as to the origin of the services in question.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 433 963.

It follows from the above that the contested sign must be rejected for the services found to be similar to a low degree to those of the earlier trade mark. This is because, bearing in mind the abovementioned interdependence principle, the low degree of similarity between those services is clearly offset by the high degree of similarity overall between the signs.

The contested services of business administration of restaurant businesses in Class 35 are dissimilar to all of the opponent’s services on which the opposition is based. 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 this service 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 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

Martin MITURA

Martina GALLE

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.