OPPOSITION Nо B 3 071 049

 

Aktiebolaget Electrolux, Sankt Göransgatan 143, 10545 Stockholm, Sweden (opponent), represented by Bergenstråhle & Partners AB, Ringvägen 100, Uppgång E, Plan 8, 118 60 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Lacefix UG (Haftungsbeschränkt), Andreasweg 28, 89079 Ulm, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte Partnerschaft mbB, Steinsdorfstr. 19, 80538 München, Germany (professional representative).

On 11/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 071 049 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 17 932 406 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods and services (in Classes 11, 21, 35) of European Union trade mark application No 17 932 406 (figurative mark). The opposition is based on European Union registration (EUTM) No 2 284 834, ‘BEEFEATER’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

  

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

 

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

 

The date of filing of the contested application is 18/07/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 18/07/2013 to 17/07/2018 inclusive.

 

Furthermore, the evidence must show use of the trade mark  for the good and services on which the opposition is based, namely the following:

 

Class 11:    Cooking and heating apparatus and appliances, namely barbecues, ovens, stoves, gas burners, gas lighters, heaters, heating elements, boilers, burners, chimneys, chimney blowers, fireplaces, wood burners and wood heating appliances and apparatus, foot warmers, furnaces, generators, grills, heat accumulators, heating and hot plates, kilns, microwave ovens, pressure cookers, deep fryers, rotisseries, roasting jacks, roasting spits, roasting hoods and other roasting apparatus, solar heaters, toasters, grilling apparatus, parts and fittings for such goods, and other heat reflecting apparatus and accessories included in this class; mobile trolley stands; frying pans; cooking utensils; ice boxes; deep frying baskets; smoke boxes.

Class 21:  Cooking pots and pans, cleaning instruments, cooking skewers, cooking utensils and cosmetic utensils and lemon squeezers; crumb trays; deep fryers, frying pans, kitchen utensils; kitchen utensils not of precious metals such as knives, forks, spoons, ladles, tongs, and spatulas; basting spoons; grills, grill supports, picnic baskets, scourers and scrubbing brushes; tableware not of precious metal, paper plates and brushes for cooking; food supports including grids, foldable grids, kebab racks, kebab skewers, individual vegetable support racks, meat cradles, baking dishes; cleaning brushes for cooking plates and grills. 

Class 30:    All spice, spices including cumin, coriander, paprika, pepper, chilli, turmeric, cinnamon, cloves, curry and ginger; alone and as blends; bastes, cooking pastes, marinades, oils, ketchup; sauces such as barbecue, chilli, satay, spicy sauce; condiments for flavouring food, sauces and marinade mixes including pre-blended dry seasoning sauce and gravy mixes to be prepared for use by adding oil, water, vinegar or other liquids; sauces including fruit sauce and vegetable sauce; guacamoles; salsas and dips including ready made salsas and dips. 

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

 

In accordance with Article 10(2) EUTMDR, the Office gave the opponent until 30/01/2020 (after an extension) to submit evidence of use of the earlier trade mark. On 29/01/2020, within the time limit, the opponent submitted evidence of use.

 

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

 

The evidence to be taken into account is the following:

 

 

 Appendix 1 – a written statement signed by the managing director of the opponent´s distributor stating that the earlier mark has been used in the EU since 2015 and mentioning the advertising expenditures and turnover figures for the goods sold under the earlier mark.

 Appendix 2 – advertising material the opponent refers to as display boards showing how the earlier mark is used. Trade mark depicted as follows: .

 Appendix 3 – price lists from the following years 2013/2014, 2014/2015, 2015/2016, 2017, 2018, 2018/2019 including distributor and retail prices. Trade mark depicted as follows on their cover pages:

Prices are in EUR and GBP. A large variety of goods mentioned including, mobile barbeques with trolleys; build in barbeques; outdoor kitchens; build in bars, doors, drawers, outdoor fridges; fridge boxes, gas fittings; pizza ovens; side burners; outdoor kitchen components; hoods; accessories including roast rack, baking dishes, rotisseries, poultry roasters, pizza stone sets, brass brushes, scrapers, scrubers, paper tower holder, digital thermometers, basting brush sets, kebab racks, apron and mitt sets, steel tongs, forks and spatulas. Trade mark is depicted on the goods, for example, as follows:

 Appendix 4 – marketing brochures/catalogues with contact details to sales representatives in UK; one catalogue from Woodoland Home Products Pty Ltd., Australia, with contact details also to Beefeater Europe (UK). On one of the catalogues it is mentioned that the BEEFEATER products are available in, inter alia, Finland, France, Germany, Greece, Ireland, Italy, Malta, Netherlands, Portugal, Spain, Sweden, UK, Cyprus, Denmark; telephone numbers for inside and outside UK given; a variety of goods mentioned, including knife sets, carving sets, plancha plates; trade mark appears for example as follows:

 Appendix 5 – photos from exhibitions, which according to the opponent, were taken in Köln, Germany on SPONGA held on the first weekend of September every year.

 Appendix 6 – photos of indoor store displays which the opponent claims were taken in Oaktree Nurseries, Bracknell, UK on 14/01/2018, 

 Appendix 7 – around 20 invoices from 2014-2016, the trade mark is depicted on the top of each invoice as follows: . Some of the invoices are issued by Woodland Home Products Pty Ltd., Australia and some by M Richards Limited (t/a BeefEater Europe), however, the consumers and the shipping addresses are (with one exception) within the European Union (France, Portugal, Germany, Finland, Ireland, Denmark, Sweden, Cyprus, Spain, Belgium). The goods mentioned in the invoices correspond to the ones form the catalogues (e.g. barbeques, hoods, outdoor fridges, paper holders, pizza ovens, cabinet trolleys, outdoor kitchen shelves, plates, rotisseries, warming racks, iron grills, grease trays).

Preliminary remarks

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from other companies.

 

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Therefore, the Office infers from such use, combined with the opponent’s ability to present evidence of it, that the opponent has given prior consent. The Court pointed out that it was unlikely that the proprietor of a trade mark would be in a position to submit evidence if the mark had been used against its wishes.

 

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant claim is unfounded.

 

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

 

As far as the written statement is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

 

However, this does not mean that such statements do not have any probative value at all.

 

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

 

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

 

Finally, the applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

 

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of genuine use

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145; 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant period. In the present case, all invoices, catalogues and pricelists are dated within the relevant period.

Furthermore, although some advertising material is not dated, if it is assessed together with the other evidence (namely the invoices dated within the relevant period), it could also be regarded as indirect proof that the mark must have been subject to genuine use during the relevant time, as this evidence may serve to show the type of goods the applicant manufactures and markets, and therefore cannot be ignored in the overall evaluation of the evidence (13/02/2015, T‑287/13, HUSKY, EU:T:2015:99, § 67-68).

Against this background, it is considered that the evidence contains sufficient indications concerning the time of use.

Place of use

The catalogues show use in the European Union (prices in EUR and GBP – years 2014-2018). The same can be said about the invoices, as their recipients and shipment addresses are within the EU (France, Portugal, Germany, Finland, Ireland, Denmark, Sweden, Cyprus, Spain, Belgium).

As for the applicant’s remarks that some of the invoices were issued by a company from Australia, it must be mentioned that import of goods bearing the earlier mark constitutes use of the mark and, as mentioned above, the goods were delivered to the European Union. Therefore, this evidence as well relates to the relevant territory.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use: public use as a trade mark in the course of trade

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods of different providers.

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

In this case, the evidence shows that the mark e.g. is depicted on the top of all the invoices, on the first page of all of the catalogues and on some goods. In the evidence, however, there is no indication that the sign was put directly on other goods e.g. small kitchen accessories. Nevertheless, it must be kept in mind that the use of a sign with relation to the goods, is not only when the applicant affixes the sign to the goods, but also when the applicant uses that sign in such a way that a link is established between the sign and the goods, even though the sign is not affixed to them (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23). The mentioned kitchen utensils are addressed in the applicant’s catalogues as BEEFEATER accessories, creating a sufficient link to the EUTM.

The applicant argues that the use of the abovementioned sign on the invoices issued by M Richards Limited (t/a BeefEater Europe) was as an ‘indication of company name’ and not as a trade mark. In this regard it must be stated that although ‘BEEFEATER’ is used as a trade name of the company making use of the trade mark on account of the proprietor, this does not preclude the finding that the same sign could, at the same time, also be used as a trade mark. This is because the use of a sign can serve more than one purpose at the same time.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T 209/09, Alder Capital, EU:T:2011:169, § 55-56). In general, this is not the case when the company name appears on the back of a catalogue or as an incidental indication on a label (18/01/2011, T 382/08, Vogue, EU:T:2011:9, § 47). However, as explained above this is not the case here, as there is an obvious link between the sign and the goods, also because some of them directly bare the trade mark. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark for the goods at issue.

This assertion is not put into doubt by the applicant’s arguments challenging part of the evidence submitted (namely the price lists), on the grounds that the sign was not used publicly and outwardly on those documents, as the price lists are not directed at end consumers but distributors. In this regard it must be noted that the proprietor is not obliged to prove how the goods reached the final consumers. It is sufficient that it submits proof that the goods entered the market with its consent, as outward use does not necessarily imply use aimed at end consumers. Relevant evidence can also validly come from distribution companies or an intermediary (21/11/2013, T‑524/12, RECARO, EU:T:2013:604, § 25-26). Therefore, the applicant’s arguments must be put aside.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered.

Article 18 EUTMR states that use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

Therefore, it is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character.

In the present case, the earlier mark is a word mark composed of one verbal element ‘BEEFEATER’. On the market, however, it is often divided into two elements by a figurative device of a bull’s head . This figurative element is reinforcing the concept conveyed by the verbal element of the sign (for the part of the public that understands the meaning of the latter), therefore, it is not sufficiently important in the perception of the mark as a whole as to alter its distinctive character (11/10/2017, C‑501/15 P, CACTUS OF PEACE CACTUS DE LA PAZ (fig.) / CACTUS, EU:C:2017:750, § 69). In any case, the figurative element is very simple, as it is formed by one curved line, and so it does not overshadow the verbal element. The same applies to the frame and the red background which have a limited impact on the distinctiveness of the sign as used (being commonly used in marketing and advertising). In such case, it cannot be reasonably argued that the figurative elements have such a significant impact on the overall impression created by the sign that they alter its distinctive character.

The applicant argues that the verbal elements of the sign are of weak distinctiveness, and therefore, all changes to the registered form alter its distinctive character. The Opposition Division disagrees. Although it is true that an allusion to eating meat, particularly beef, is undisputable for the English speaking public, this allusion is not of the kind that would affect the distinctive character of the sign as a whole. On the contrary, the term ‘BEEFEATER’ can well serve trade mark functions as it is unreasonable to conclude that any part of the public will perceive this expression as direct information on the goods at issue, and not a badge of origin. It is not a market practice to refer to any kitchen apparatus or utensils as meat or vegetable eaters. This word conjunction creates an allusion fanciful enough to well serve trade mark functions as the association to the goods requires several mental steps. Therefore, the applicant’s arguments must be put aside.

Finally, the evidence submitted shows that the sign was also used as a word mark or in a very scarce stylisation, for example . It must be noted that as the EUTM is a word mark, the word as such is protected and not its written form. It is therefore irrelevant, if it is written in lower-case letters or in upper-case letters. Consequently, the alteration of upper and lower case letters in the versions used and registered, is considered to fall within the category of ‘used as registered’. Moreover, the scarce stylization or red background, if present, does not have any impact on the distinctive character of the sign as mentioned above.

Therefore, the mark is considered to have been used in a way that sufficiently corresponds to the registered version, that is, without altering its distinctiveness.

Nature of use: Use in relation to the registered goods

The goods on which the trade mark was used can be inferred directly from the invoices, catalogues and pricelists. From the listing above it is therefore clear that the evidence filed by the opponent does show genuine use of the trade mark for some, but not all, the goods covered by the earlier trade mark (no evidence whatsoever refers to, for example, solar heaters, foot warmers, furnaces).

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Moreover, the opponent proved use for a large variety of goods all belonging to the same broad categories. Therefore, following the established case-law and taking into consideration that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration, the Opposition Division finds that the opponent managed to prove the use of its trade mark for some of broad categories of the goods on which the opposition is based (14/07/2005, T 126/03, Aladin, EU:T:2005:288, § 45-46). Therefore, the evidence shows genuine use of the trade mark for, at least, for the following goods:

Class 11: Cooking apparatus and appliances, namely barbecues, ovens, gas burners, burners, grills, rotisseries, roasting jacks, roasting spits, roasting hoods and other roasting apparatus, grilling apparatus, parts and fittings for such goods; mobile trolley stands; cooking utensils; ice boxes.

Class 21: Cleaning instruments, cooking skewers, cooking utensils, crumb trays; kitchen utensils; kitchen utensils not of precious metals such as knives, forks, tongs and spatulas; grills, grill supports, scrubbing brushes; brushes for cooking; food supports including grids, kebab racks, kebab skewers, baking dishes; cleaning brushes for cooking plates and grills.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In the witness statement, the opponent’s distributor presents turnover numbers and advertisement expenditures for the goods under the earlier trade mark. Even if those numbers cannot be regarded as fully credible, they give the Opposition Division some idea regarding the marketing effort the opponent has been undertaking to promote its brand. The opponent submitted evidence that the goods have been offered for sale for many years. Not only did the opponent prepare catalogues over the years but it sold the goods to different recipient across the European Union. In the view of the evidence assessed as a whole, it is clear that the invoices are a selection, a sample, rather than an exhaustive list of sales of the aforementioned goods. Therefore, the evidence as a whole provides sufficient information concerning the extent to which the earlier mark has been used, as it can be deduced from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market.

Overall assessment

Considering all the foregoing and taking into account the evidence in its entirety, the Opposition Division finds that that the evidence submitted by the opponent does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory at least for the goods mentioned above.

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 on which the opposition is based and for which the use was proven, are the following:

Class 11: Cooking apparatus and appliances, namely barbecues, ovens, gas burners, burners, grills, rotisseries, roasting jacks, roasting spits, roasting hoods and other roasting apparatus, grilling apparatus, parts and fittings for such goods; mobile trolley stands; cooking utensils; ice boxes.

Class 21: Cleaning instruments, cooking skewers, cooking utensils, crumb trays; kitchen utensils; kitchen utensils not of precious metals such as knives, forks, tongs and spatulas; grills, grill supports, scrubbing brushes; brushes for cooking; food supports including grids, kebab racks, kebab skewers, baking dishes; cleaning brushes for cooking plates and grills.

The contested goods and services are the following:

 

Class 11: Food and beverage cooking, heating, cooling and treatment equipment; Barbecues; Roasting devices; Parts and accessories for all the aforesaid goods, included in this class.

Class 21: Tableware, cookware and containers; Oven mitts; Barbecue tongs; Barbecue forks; Gridiron supports; Griddles [cooking utensils]; Non-electric griddles; Non-electric griddles; Kitchen utensils; Cleaning brushes for barbecue grills.

Class 35: Retailing and wholesaling, including via the internet, in relation to apparatus and equipment for cooking, heating, refrigerating or otherwise treating foodstuffs and beverages, grills, griddles (cooking appliances), parts and fittings for all of the aforesaid goods, dishes, cooking pot sets and containers, oven mitts, barbecue tongs, barbecue forks, grill supports, griddles (cooking utensils), griddle plates (non-electric), grill pans (non-electric), kitchen utensils, cleaning brushes for griddles.

 

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

 

The term  ‘including’, used in the applicant’s list of goods and 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).

 

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

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.

 

Contested goods in Class 11

The contested food and beverage cooking, heating, cooling and treatment equipment; barbecues; roasting devices; parts and accessories for all the aforesaid goods, included in this class are identical to the opponent’s cooking apparatus and appliances, namely barbecues, ovens, gas burners, burners, grills, rotisseries, roasting jacks, roasting spits, roasting hoods and other roasting apparatus, grilling apparatus, parts and fittings for such goods; ice boxes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

 

Contested goods in Class 21

The contested goods (tableware, cookware and containers; oven mitts; barbecue tongs; barbecue forks; gridiron supports; griddles [cooking utensils]; non-electric griddles; non-electric griddles; kitchen utensils; cleaning brushes for barbecue grills) are either identical with the opponent´s goods in this Class (such as the contested barbecue tongs; barbecue forks, cleaning brushes for barbecue grills) or are at least similar to the opponent’s goods such as kitchen utensils not of precious metals such as forks, knifes, tongs and spatulas; grills, grill supports, scrubbing brushes; baking dishes; cleaning brushes for cooking plates and grills. All goods under comparison assist to prepare, serve and store food. They are aimed at the same consumers, are often produced by the same manufactures and are usually sold together in the same retail outlets or sections of supermarkets.

Contested services in Class 35

The contested services, namely retailing and wholesaling, including via the internet, in relation to apparatus and equipment for cooking, heating, refrigerating or otherwise treating foodstuffs and beverages, grills, griddles (cooking appliances), parts and fittings for all of the aforesaid goods, dishes, cooking pot sets and containers, oven mitts, barbecue tongs, barbecue forks, grill supports, griddles (cooking utensils), griddle plates (non-electric), grill pans (non-electric), kitchen utensils, cleaning brushes for griddles are retail and wholesale of the applicant´s goods in Classes 11 and 21, which have been compared above to the opponent’s goods and were found identical or at least similar to those goods.

In the current Office practice, retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

 

Moreover, there is a low degree of similarity between the retail services concerning specific goods and other goods which are similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

 

Therefore, all the contested services are at least similar to a low degree to the opponent’s goods in Classes 11 and 21.

 

b) Relevant public — degree of attention

 

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

 

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

 

c) The signs

 

BEEFEATER
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

The verbal elements of the trade marks are meaningful at least for the English-speaking public which will easily split both marks into ‘BEEF EATER’ and ‘BEEF HEATER’, respectively, and associate them with the corresponding notions. Conceptual differences between the marks often counteract similarities in other aspects if at least one of the two signs at issue has a clear and specific meaning (22/06/2004, T 185/02, Picaro, EU:T:2004:189, § 56; 12/01/2006, C 361/04 P, Picaro, EU:C:2006:25, § 20), therefore the Opposition Division will assess the signs from the perspective of the public that does not understand the meaning of the verbal elements of the marks, such as Spanish-speaking consumers, for whom the aural similarity between the signs is also the greatest as will be seen below.

From the perspective of the public in focus, the verbal elements of both signs are meaningless and distinctive. The stylization of the letters in the contested sign is very simple and non-distinctive.

The contested sign additionally contains a simple figurative element of a bull’s head, which is distinctive for the goods at issue. However, 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 string of letters ‘BEEF(*)EATER’. They differ in the additional letter ‘H’ in the middle of the contested sign. They also differ in the slight stylisation and the figurative element of the contested sign.

Therefore, as the verbal elements of the signs are relatively long and all of the letters of the earlier sign are included in the same order in the contested sign (with just one additional letter in the middle), the signs are similar to an above average degree, even despite the additional figurative element of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BEEF(*)EATER’. The additional letter ‘H’ in the contested sign is mute is Spanish so for a large of the public (pronouncing the signs according to the Spanish pronunciation rules), the signs are aurally identical. However, even if part of the public will pronounce the letter ‘H’, recognising that the words are not Spanish, the signs are still highly similar.

Conceptually, although the public will associate the contested sign with a bull’s head, the other sign has no meaning for the public in focus. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

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 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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, all eight letters of the earlier mark are included in the same sequence in the contested sign. The signs differ in the additional letter ‘H’ in the middle of the contested sign, which usually attracts less attention and might be not spotted by the public. Phonetically, ‘BEEFEARTER’ and ‘BEEFHEATER’ will either be pronounced identically or almost identically as explained in section c) of the decision. It must be borne in mind 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, it must be considered that a difference in the middle letter of meaningless words could be easily overlooked, even by the professional public.

As for the stylisation and the additional figurative element of the contested sign, it is conceivable that the differences will be noticed by the consumers. Nevertheless, this does not exclude the possibility of a likelihood of confusion on the part of the public. This is because it is common practice for manufacturers and service providers to make variations in their trade marks, for example by altering the font or colours, or by adding verbal or figurative elements to endow them with a new, modern image. Consumers are well accustomed to marks being stylised and embellished with logotypes and other devices (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). 

 

Therefore, considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 2 284 834. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

COSTS

 

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

 

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

 

 

Claudia MARTINI

Marta Maria CHYLIŃSKA

Renata COTTRELL

 

 

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.