OPPOSITION No B 3 068 424

The Honey Pot Pub Company Limited, 12 Helmet Row, EC1V 3QJ London, United Kingdom (opponent), represented by The IP Asset Partnership Limited, Prama House, 267 Banbury Road, OX2 7HT Oxford, United Kingdom (professional representative)

a g a i n s t

My Chef Ristorazione Commerciale S.P.A., Via Caldera 21, 20153 Milan, Italy (applicant), represented by Viviana Carini, Corso Cristoforo Colombo 10, 20144 Milan, Italy (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 424 is upheld for all the contested services.

2. European Union trade mark application No 17 931 022 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 931 022 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 094 613 for the word mark ‘BRICIOLE’. 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 United Kingdom trade mark registration No 3 094 613.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 35: Business management.

Class 43: Café, catering and restaurant services; preparation of foodstuffs or meals for consumption on or off the premises; food and drink takeaway services; providing prepared meals; information, advisory and consultancy services relating to all the aforesaid.

The contested services are the following:

Class 43: Serving food and drinks; services for the preparation of food and drink; serving food and drink in restaurants and bars; ice cream parlour services; café services; restaurants; cocktail lounge services; japanese restaurant services; self-service cafeteria services; pizza parlors; bistro services; bar services; snack-bars; pubs; wine bar services; catering for the provision of food and beverages; canteens; preparation and provision of food and drink for immediate consumption; mobile restaurant services; providing of food and drink via a mobile truck; services for providing food and drink (meals), in particular at airports and on-board aeroplanes; takeaway services; consultancy services relating to food preparation; management of hotels, boarding houses and guesthouses; providing facilities for fairs and exhibitions.

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

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Café services; restaurants; catering for the provision of food and beverages; takeaway services; consultancy services relating to food preparation are identically contained in both lists of services (including synonyms).

The contested serving food and drink in restaurants and bars; ice cream parlour services; cocktail lounge services; japanese restaurant services; self-service cafeteria services; pizza parlors; bistro services; bar services; snack-bars; pubs; wine bar services; canteens; mobile restaurant services; providing of food and drink via a mobile truck are included in the broad category of, or overlap with, the opponent’s café, catering and restaurant services. Therefore, they are identical.

The contested serving food and drinks; services for the preparation of food and drink; preparation and provision of food and drink for immediate consumption; services for providing food and drink (meals), in particular at airports and on-board aeroplanes include, as broader categories, or overlap with, the opponent’s catering services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested management of hotels, boarding houses and guesthouses are included in the broad category of the opponent’s business management in Class 35. Therefore, they are identical.

The contested providing facilities for fairs and exhibitions relate to the provision of various types of accommodation and accommodation auxiliary services. They often include services such as the opponent’s catering and restaurant services. Consequently, these services can have the same providers, distribution channels and relevant public. Therefore, they are similar.

2. Relevant public — degree of attention

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

In the present case, the 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 may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price. In particular, the attention will be high in the case of management services.

3. The signs

BRICIOLE
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Neither the common element ‘Briciole’ nor the remaining verbal elements of the contested sign, ‘dolci e salate’ have meaning for the relevant public and are, therefore, distinctive.

The stylised image of a loaf of bread of the contested sign is non-distinctive for part of the services, namely for the food and drinks related services in Class 43.

As regards the remaining figurative elements and aspects of the contested sign they are limited to the rather standard typeface, the arrangement of the elements, the shades creating the mirror effect and the colours used which are secondary and of a purely decorative nature. Furthermore, 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).

Finally, the verbal element ‘Briciole’ and the stylised image of a loaf of bread in the contested sign are the co-dominant elements as they are the most eye-catching, while the elements ‘dolci e salate’ are secondary due to their position and significantly smaller size.

Visually and aurally, the signs coincide in the letters and their sounds ‘BRICIOLE’, which form part of the element with the biggest impact of the contested sign. They differ in the figurative elements and aspects, which, however, are considered of weak or even no distinctive character and the additional letters and their sounds of the contested sign, ‘DOLCI E SALATE’, which are secondary. Furthermore, it should be taken into account that 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 or from top to bottom, which makes the part placed at the left or at the top of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar at least to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, taking into account that the stylised image of a loaf of bread has been considered to be non-distinctive for some of the services at issue and secondary, the impact of the conceptual perception of this element of the contested sign will be limited.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier 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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case the relevant services are partly identical and partly similar and they target the public at large and business customers whose degree of attention may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

In its observations, the applicant argues that the earlier trade mark has a ‘normal to low’ distinctive character given that many trade marks for restaurant services include ‘Briciole’ and that this is a common Italian word. In support of its argument the applicant refers to internet search results showing various establishments bearing similar names in Italy and one in the United Kingdom (the earlier right). However, the Opposition Division notes that the relevant territory in this specific case is the United Kingdom where the official language is English and Italian is not understood or spoken by the general public. Under these circumstances, the applicant’s claims must be set aside.

The signs are visually and aurally similar to at least an average degree. In particular, the sole element of the earlier mark is completely reproduced as the co-dominant element in the contested sign. Moreover the figurative aspects of the contested sign are of weak or no distinctive character, and secondary. Even if the additional verbal elements of the contested sign are distinctive, they have a limited impact on the overall comparison of the signs due to their significantly smaller size. Consequently, the Opposition Division is of the opinion that the differences cannot overweigh the existing similarities between the signs and, as a result, they are not sufficient to exclude a likelihood of confusion in the present case.

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. Indeed, it is highly conceivable that 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, for example provision of bakery products (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous judgments of the General Court to support its arguments.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings for the below reasons:

• 18/06/2013, T-338/12, K9 Products, EU:T:2013:327 – the comparison involves different dominant elements. However, in the present case, the co-dominant element of the contested sign is identical to the earlier mark’s sole element.

• 09/07/2003, T-156/01, Giorgio Aire, EU:T:2003:198 – the judgment finds that the earlier marks include figurative elements in an individual and original configuration. In the present case the figurative elements of the contested sign were found weak or non-distinctive.

• 12/12/2002, T-110/01, Hubert, EU:T:2002:318 and 09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199 – the judgments state that even though there is identity and similarity between the goods covered by the conflicting marks, the visual, aural and conceptual differences between the signs constitute sufficient grounds for holding that there is no likelihood of confusion in the mind of the targeted public. The judgments further state that the marks were aurally dissimilar and that there was no conceptual similarity between the signs as a whole. However, in the case at hand, the signs were found aurally similar at least to an average degree and conceptually not similar.

In its observations, the applicant argues that it owns an earlier Italian figurative trade mark, ‘Briciole dolci e salate’, registration No 1 404 921, which had been used in the market for ten years. In this regard, the Opposition Division notes that, the use of the applicant’s other trade marks is not the subject matter of the present opposition proceedings. Indeed, it is not relevant for the present proceedings whether or not the applicant is the owner of another earlier sign, which may be used in the course of trade in the European market, because the subject matter under the present examination is whether the EUTM, as applied for, falls under any of the relative grounds for refusal invoked by the opponent, in the light of its earlier right. Therefore, the applicant’s argument must be put aside.

The applicant further claims that the opponent operates a restaurant in London only while the applicant is part of the third global concessionary catering operator present in 14 countries in Europe and the USA. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark and if the earlier mark is not subject to proof of use, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T 568/12, Focus extreme, EU:T:2014:180, § 30 and the case law cited therein). The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the argument raised by the applicant is irrelevant.

Finally, the applicant argues that the two companies have headquarters in different States and operate in different markets (the opponent in the United Kingdom and the applicant in Italy) which excludes likelihood of confusion. However, pursuant to Article 1 EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union (EU). Therefore, a likelihood of confusion for only part of the European Union, in particular for the United Kingdom market in this specific case, is sufficient to reject the contested application. The fact that the applicant is seeking protection on an European Union level, for which protection may have been entirely granted, is to be taken into account and not the mere intention of use only in particular countries thereafter.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 094 613. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier United Kingdom trade mark registration No 3 094 613 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Valeria ANCHINI

Tzvetelina IANTCHEVA

Meglena BENOVA

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.