OPPOSITION No B 3 070 882

François Ylija M Jozic, Rua Joaquim Casimiro, 18 3º, 3º- Dto Freguesia da Estrela, 1200-695 Lisbon, Portugal (opponent), represented by Lara Foncillas Miralbés, Avenida Diagonal 482, 4º, 2º, 08006 Barcelona, Spain (professional representative)

a g a i n s t

reCup GmbH, Hofmannstraße 52, 81379 Munich, Germany (applicant), represented by Fleuchaus & Gallo Partnerschaft mbB Patentanwälte, Steinerstraße 15/Haus A, 81369 München, Germany (professional representative).

On 31/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 882 is partially upheld, namely for the following contested goods and services:

Class 21: All the goods applied for in this class.

Class 35: Retail services relating to dishes; wholesale services relating to dishes.

Class 43: All the services applied for in this class.

2. European Union trade mark application No 17 930 322 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent initially filed an opposition against all the goods and services of European Union trade mark application No 17 930 322 for the figurative mark , later limited to the goods and services in Classes 21, 35 and 43. The opposition is based on Spanish trade mark registration No 3 656 101 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

Class 21: Tableware, glassware, kitchenware and containers; tableware, kitchenware and containers made of polypropilene.

Class 35: Wholesale and retail services, including on the internet of tableware, glassware, cookware and containers.

Class 43: Rental of catering equipment; rental of crockery; rental of cutlery; rental of glassware; rental of furniture and household goods; rental of tents.

The contested goods and services are the following:

Class 21: Dishes and cups, in particular plastic dishes and plastic cups.

Class 35: Leasing of reverse vending machines for empties; arrangement of contracts for third parties on the retail of reverse vending machines; retail services relating to dishes; wholesale services relating to dishes.

Class 43: Service for providing food and drinks; catering services in coffeeshops, cafeterias, restaurants, staff cantineens, bars, snackbars, self-service restaurants, sales stalls; catering; event catering; gastronomical service for events; leasing of dishes.

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 terms ‘in particular’ and ‘including’, used in the applicant’s and the opponent’s lists of goods and services indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a further remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 21

The contested dishes and cups, in particular plastic dishes and plastic cups are included in the broad category of the opponent’s tableware. Therefore, they are identical.

Contested services in Class 35

The contested retail services relating to dishes; wholesale services relating to dishes are included in the broad category of the opponent’s wholesale and retail services, including on the internet of tableware. Therefore, they are identical.

However, the contested leasing of reverse vending machines for empties; arrangement of contracts for third parties on the retail of reverse vending machines are business support services that have no relevant factors in common with the opponent’s goods and services.

The fact that the opponent’s services in Class 43 include rental services, namely of catering equipment, is not enough to find any similarity with the applicant’s leasing of reverse vending machines for empties. The latter service concerns a particular business model of providing specific machines that facilitate the recycling of recipients within a network of businesses, and which is clearly removed from the opponent’s rental services. In particular, these services do not coincide in purpose, distribution channels or providers, and are not complementary or in competition with each other.

Likewise, the mere fact that the subject matter of the applicant’s arrangement of contracts services is related to retail services is also certainly insufficient to render these services and the opponent’s retail services similar. The applicant’s service is a sort of business intermediary service whereby a third party puts sellers and buyers in contact, negotiates between them and gets commission for this service. This is a service aimed at supporting or helping other businesses to do business or to improve their businesses, and as such has nothing to do with the opponent’s retail services.

The abovementioned contested services are even more removed from the opponent’s goods, differing in nature, purpose and method of use. None of the opponent’s goods and services and the contested services are complementary or in competition with each other. They do not necessarily share distribution channels or target public and are usually produced and provided by different undertakings. Therefore, the contested leasing of reverse vending machines for empties; arrangement of contracts for third parties on the retail of reverse vending machines are dissimilar to all the opponent’s goods and services in Classes 21, 35 and 43.

Contested services in Class 43

The contested leasing of dishes is included in the broad category of the opponent’s rental of crockery. Therefore, they are identical.

The contested service for providing food and drinks; catering services in coffeeshops, cafeterias, restaurants, staff cantineens, bars, snackbars, self-service restaurants, sales stalls; catering; event catering; gastronomical service for events have some relevant factors in common with the opponent’s rental of catering equipment. These services have the same distribution channels and target public and are usually provided by the same type of undertakings. Therefore, they are similar.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark includes the verbal elements ‘RE’ and ‘CUP’, depicted on two levels in a rather standard uppercase typeface and separated by a short line. These verbal elements have no meaning in relation to the relevant goods and services, and are therefore distinctive. Four consecutive green arrows frame the whole forming a geometric shape, which, taking into account the goods and services concerned, could be perceived at least by part of the public as an interpretation of the recycling cycle, leading this public to think that the relevant goods are recycled or recyclable. For this part of the public, the degree of distinctive character of the figurative device would be limited, while for the rest of the public, the figurative device’s degree of distinctiveness would be average.

As regards the contested sign, it is composed of the verbal element ‘RECUP’ depicted in standard uppercase typeface and a figurative element that resembles a stylised depiction of a hot beverage. If perceived this way, the figurative device would be of limited distinctiveness in relation to the relevant goods and services, while it would be distinctive otherwise. All these elements are depicted against a round background of a purely decorative nature.

The element ‘RECUP’ has no meaning as such for the relevant public. Even if some might associate it with the Spanish verb ‘recuperar’ (to recover) that can be related to recycling, given the fact that the element as such does not exist as a word in the relevant language and also that it is not customary as an abbreviation, it is considered distinctive.

At the bottom of the contested sign, three additional verbal elements (‘return’, ‘reuse’ and ‘recycle’) are depicted in lowercase italics and each followed by a dot. Contrary to the applicant’s views, the Opposition Division considers it likely that the relevant public will perceive the meanings behind these English words because the Spanish equivalents are close to them (i.e., ‘return’ – ‘retornar’; ‘reuse’ – ‘re-usar’ (reutilizar); ‘recycling’ – ‘reciclar’). It is therefore likely that the relevant public will perceive them as an indication that the relevant goods and services are related to recycling and, as such, these elements would be of limited distinctiveness.

Neither sign has any element that can be clearly perceived as dominant or more eye-catching than the rest of the elements.

Finally, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the verbal element(s) ‘RE CUP’ / ‘RECUP’ (depicted on two levels in the earlier mark), which conform the only verbal elements in the earlier mark and the most distinctive verbal element in the contested sign. The signs differ in the contested sign’s additional verbal elements ‘return. reuse. recycle.’ (of limited distinctiveness) and in the figurative elements and graphic aspects of both signs (of less impact).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is therefore relevant that the coincidences between the signs are located at the beginning of the contested sign.

In the light of the aforementioned, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘RE-CUP’, which form the only verbal elements of the earlier mark and the most distinctive verbal element of the contested sign. The pronunciation of the signs differs in the sound of the contested sign’s additional verbal elements, which are of limited distinctiveness for the relevant public due to their proximity to the equivalent terms in Spanish as explained above.

Given the limited distinctive character of the contested sign’s elements ‘return’, ‘reuse’ and ‘recycle’, and the tendency of consumers to shorten the marks composed by several verbal elements (30/11/2006, T-43/05, Brothers by Camper, EU: T: 2006: 370, § 75), the Opposition Division considers it likely that the public will not pronounce them.

Therefore, the signs would be aurally highly similar.

Conceptually, for the part of the public in the relevant territory that will perceive only the meaning(s) of the contested sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the part of the public that perceives meanings in both signs (the recycling cycle in the earlier mark and the meanings in the contested sign, in particular those conveyed by the verbal elements related to recycling), the signs are conceptually similar to an average degree.

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 an element of limited distinctiveness (for part of the public) 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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services have been found partly identical, partly similar and partly dissimilar. Those found identical or similar target both the general public and the professional one, whose degree of attention is average. The signs are considered visually similar to an average degree, aurally highly similar, and conceptually either not similar or similar to an average degree, depending on the perception of some of the elements by the relevant public. The distinctiveness of the earlier mark is normal, and account is 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).

Therefore, in an overall assessment, taking into account that the sole and distinctive verbal elements of the earlier mark form the most distinctive element of the contested sign, the differing elements and aspects being of limited distinctiveness and/or of less impact, it is reasonable to assume that when confronted with the contested sign in relation to identical or similar goods and services, consumers are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings.

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 Spanish trade mark registration No 3 656 101.

It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services, namely leasing of reverse vending machines for empties; arrangement of contracts for third parties on the retail of reverse vending machines in Class 35 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 services 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 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

Saida CRABBE

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

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.