OPPOSITION No B 3 065 877

Cactus S.A., Route d’Arlon, La Belle Etoile, L-8050 Bertrange, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon, B.P. 48, L-8001 Strassen, Luxembourg (professional representative)

a g a i n s t

ΚΩΝΣΤΑΝΤΙΝΟΣ Ν. ΑΝΑΣΤΑΣΙΟΥ ΚΑΙ ΣΙΑ ΕΕ, 3ο χλμ. Π.Ε.Ο. ΛΑΡΙΣΑΣ - ΒΟΛΟΥ, 41202 ΛΑΡΙΣΑ, Greece (applicant), represented by Dr. Helen G. Papaconstantinou and Partners, Law Firm, 2, Coumbari Street Kolonaki, 106 74 Athens, Greece (professional representative).

On 11/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 877 is partially upheld, namely for the following contested services:

Class 43: Services for providing food and drink.

2. European Union trade mark application No 17 933 016 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 933 016 for the figurative mark . The opposition is based on European Union trade mark registration No 2 532 083 for the word mark ‘BRUNO’. 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, namely European Union trade mark registration No 2 532 083 for the word mark ‘BRUNO’.

The date of filing of the contested application is 20/07/2018. 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 20/07/2013 to 19/04/2018 inclusive.

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.

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

Class 30: Coffee, tea, cocoa, chocolate and chocolate-based products, sugar, coffee substitutes.

Class 35: Advertising, business management, inter alia management of shops, supermarkets, hypermarkets or shopping centres; business administration, office functions, among other radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, distribution of publicity material, market studies, bill posting, business management assistance, demonstration of goods, distribution of samples, opinion polls, personnel recruitment, cost price analysis, public relations; retail services; retail sales services in relation to goods sold by a supermarket or hypermarket; retail sales services in relation to all everyday consumer goods, inter alia in relation to food, clothing (clothing, footwear and headgear), DIY and interior and exterior decorating (paints, ironmongery, tools and machine tools, DIY supplies), gardening, electrical and household electrical appliances, audio-visual, hi-fi, video, photography, sanitary apparatus and installations, in relation also to the field of computing (computers, accessories, programmes, software and hardware) and telephony, games and toys, sports articles, horological instruments and jewellery, in relation also to homes and furnishing, among other tableware, glassware and cutlery (knives, spoons, forks), household goods and toiletries, perfumery and cosmetics, sanitary preparations and articles, leather, imitations of leather, luggage and umbrellas, furniture, picture frames and mirrors, haberdashery and yarns and threads for textile use, fabrics and household linen, carpets and curtains, haberdashery and trimmings, carpets and floor and wall coverings, Christmas decorations, flowers, plants and seeds.

Class 40: Torrefaction.

Class 43: Dining services (food), bar, cafe, café, cafeteria services; catering services.

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.

On 23/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 28/07/2019 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 28/09/2019. On 02/09/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: an extract from www.cactus.lu (print date 22/07/2019) showing the history of the opponent’s company from 1900 to 2017.

• Annex 2: an undated photograph of the ‘Bruno’ roasting plant located in Luxembourg, as claimed by the opponent (Annex 2.1). The sign is visible on the front of the building; an extract from the opponent’s website www.cactus.lu (print date 22/07/2019) ‘My coffee roaster’ stating: ‘We serve only Bruno Bio Fairtrade coffee in all our restaurants. This is Fairtrade-certified organic coffee, produced by the Oro Verde Farming Cooperative, which represents several hundred small producers from Lamas province (Peru). We roast this coffee in our own plant in Windhof’. Furthermore, it states: ‘The coffee we roast in Windhof includes our own range of Cactus coffees, Leesch and Bruno coffees. You can find all your favourite blends in all our stores as well as in our Bruno Coffee Shops ….’ The sign is visible (Annex 2.2).

• Annex 3: undated pictures of Bruno coffee packaging bags, with the following indications: Costa Rica, Colombie, Bella Estrella, Ethiopie Sidamo, Felicidad, Guatemala, Décaféiné, Bio-Fairtrade, Espresso, Dessert, etc., of 200 g, 250 g or 500 g; some of the packaging includes the date of 06/09/2019 as the preferred consumption date. The sign is shown as or .

• Annex 4: an extract from www.cactus.lu (print date 19/08/2019) showing 56 supermarkets/shops including their addresses in Luxembourg and pictures of the same showing shop signs featuring ‘CACTUS’, some without but mostly with, the figurative element of a cactus, as well as shop signs featuring this figurative element together with the words ‘Marché’, ‘hobbi’ or ‘shoppi’.

• Annex 5: a copy of an invitation to attend a demonstration of the roasting of Bruno ‘Bio-Fairtrade’ coffee on 08/07/2008 in the opponent’s roasting plant ‘Kaffi Leesch’ (as claimed by the opponent), at the following address: route des 3 Cantons L- 8399 Windhof (Annex 5.1); an undated picture showing packaging of Bruno coffee and paper cups including the sign, (Annex 5.2); an extract of the ‘Luxembourger Wort’ (a Luxembourg daily newspaper in German), dated 02/02/2019-03/02/2019, titled ‘Engagement in Peru’. According to the information provided by the opponent in its submission, the evidence ‘reports on the opponent’s efforts to ensure the turnover of “Bruno” coffee and thereby the income of primary coffee producers by exclusively selling it in “Bruno” coffee shops and Cactus restaurants. Having been launched in 2008, this initiative has resulted in the average sale of 6.5 million cups of “Bruno” coffee per year’. A coffee package and a paper coffee cup are shown bearing (Annex 5.3).

• Annex 6: undated pictures of a coffee shop, coffee packaging, a coffee cup, a paper coffee cup, sugar stick packaging, all displaying , and a purchase receipt issued by Cactus S.A. in Beltrange, Luxembourg, for the sale of ‘Bruno’ Costa Ric. 250 g and ‘Bruno’ café tasse; a picture of the menu board displaying demonstrates the availability of the promotion of Bruno Bio- Fairtrade coffee grains 1 kg packaging until 17/08/2019.

• Annex 7: copies of promotions of ‘Bruno’ coffee packaging available in ‘Bruno’ Coffee Shops (e.g. ‘Bruno’ Bio-Fairtrade, ‘Bruno’ Espresso 500 g, ‘Bruno’ Déjeuner and ‘Bruno’ pur Colombie 250 g) showing promotions closing dates, for example, 02/03/2014, 09/03/2014, 16/03/2014, 23/03/2014, 30/03/2014, 11/05/2014, 08/06/2014, 05/04/2015, 09/07/2016, 26/11/2016, 18/02/2017, 14/10/2017, 10/02/2018 and 08/09/2018. The sign is shown as on coffee packaging and on some promotion boards.

• Annex 8: numerous promotional leaflets ‘Cactus News’, dated between 19/02/2013 and 09/09/2018, showing ‘Bruno’ coffee packaging available for sale in ‘Bruno’ Coffee Shops and in Cactus establishments. The sign is depicted on the packaging. There are also promotions of ‘Bruno’ coffee and a dessert available in Cactus Inn restaurants (e.g. on 05/11/2013). There are promotions of ‘Leonidas’ chocolates and pralines under the sign, some of which are free gifts (e.g. ‘Leonidas’ pralines with purchase of ‘Bruno’ coffee in ‘Bruno’ Coffee Shops, promotion available until 12/01/2014).

• Annex 9: an extract from the opponent’s website, www.cactus.lu (print date 14/08/2019), referring to daily menus available from 12/08/2019 to 17/08/2019 in the Cactus’ restaurants. There is no reference to the sign at issue.

• Annex 10: information on the dissemination of the opponent’s advertising leaflets (Annex 8) in Luxembourg for 2013-2017; in Germany for 2013-2014; in Belgium for 2013-2017 and in France for 2013-2017.

• Annex 11: internal documents (as stated by the opponent) concerning the selling of ‘Bruno’ coffees (e.g. ‘Bruno’ dejeuner 500 g, ‘Bruno’ choco latte, ‘Bruno’ amandes, ‘Bruno’ dessert 1 kg, ‘Bruno’ santos 250 g, ‘Bruno’ Colombie 250 g, ‘Bruno’ Mocca 500 g, ‘Bruno’ mini viennois, ‘Bruno’ decafeine 500 g, ‘Bruno’ mocca 500 g, ‘Bruno’ black, bio ‘Bruno’ fairtrade 1 kg, ‘Bruno’ dolce 1 kg, ‘Bruno’ Guatemala 250 g, ‘Bruno’ espresso 500 g, ‘Bruno’ Costa Rica 250 g, ‘Bruno’ Ethiopie Sidamo and ‘Bruno’ easter blend 500 g) and ‘Leonidas’ products, issued between 02/04/2013 and 08/04/2019. There are no details of a seller (name of business or contact information).

• Annex 12: a table, showing, according to the opponent, sales figures for ‘BRUNO’ coffee products (including ‘Bruno’ Pur Costa Rica 250 g, ‘Bruno’ Maragogype 250 g, ‘Bruno’ Pur Santos Tristar 250 g, ‘Bruno’ Pur Guatemala 250 g, ‘Bruno’ Felicidad Fairtrade, ‘Bruno’ Dessert 500 g, ‘Bruno’ Dejeuner 500 g, ‘Bruno’ Decafeine Grains 500 g, ‘Bruno’ Mocca 500 g, ‘Bruno’ Espresso 1 kg, ‘Bruno’ Coffee To Go, ‘Bruno’ Pur Colombie 250 g, ‘Bruno’ 100 % Arabica Fairtrade 1 kg and ‘Bruno’ Black 1 kg), between 01/2014 and 10/2018. According to the information in the opponent’s submission, the turnover figures refer to the ‘Bruno’ products sold in Cactus supermarkets, ‘Bruno’ Coffee Shops and various corners available in Cactus supermarkets, in Luxembourg.

• Annex 13: the minutes of the Extraordinary Shareholders Meeting of 21/11/2008 (Annex 13.1). This Annex also includes invoices issued between 10/2013 and 08/2018 by the opponent to various clients in Luxembourg, concerning the sale of ‘Bruno’ coffee (Annex 13.2). There are some references to the earlier mark, such as Bio Bruno Fairtrade 1 kg, Bruno Dessert 1 kg, Bruno Dolce 1 kg, Bruno Espresso 1 kg, Bruno Black 1 kg and Bruno Descafeine Grains 500 g.

In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the adequacy of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

The documents submitted show that the place of use is, inter alia, Luxembourg. This can be inferred, in particular from some addresses or names of towns in Luxembourg (e.g. Annexes 12 and 13.2). Therefore, the evidence relates to the relevant territory.

The evidence submitted shows constant and regular use of the mark during the relevant period. Therefore, the evidence proves the time of use.

The documents filed, namely the invoices, the purchase receipts (Annex 11) and the list of sales transactions (Annex 12), provide the Opposition Division with sufficient information on the commercial volume, territorial scope, duration, and frequency of use. The evidence demonstrates that the opponent’s use of the mark at issue was such as to maintain an outlet for the goods and that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark within the relevant period. Therefore, the Opposition Division considers that the opponent provided sufficient indication on the extent of use of the earlier mark in Luxembourg.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of 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. According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The fact that in some of the evidence submitted, the mark at issue is depicted in a slightly stylised font together with additional elements is not considered of a nature to alter the distinctiveness of the word mark ‘BRUNO’. In particular, the additional expression ‘Torréfaction artisanale maison’ and the crown figurative element, do not call into question the conclusion on use of the mark at issue. The expression ‘Torréfaction artisanale maison’ (as translated by the opponent: ‘homemade roasting’) is descriptive of the relevant goods for those who understand it. The crown figurative element is of reduced distinctiveness as it may be indicative of the superior quality of the goods. In addition, all these elements are in ancillary positions underneath the element ‘BRUNO’, prominently appearing in large letters. Moreover, the different colour has only a minor effect as compared to the verbal element ‘BRUNO’. The figurative element above the letter ‘O’ of ‘BRUNO’ is a commonly used depiction of the scent of coffee. Therefore, it is of reduced distinctiveness in relation to coffee. Even if not perceived this way, it is likely that a significant part of the public will perceive it as a decorative element, this having quite minimal impact overall. As a consequence, it is considered that the joint use of these elements does not undermine the function of the mark ‘BRUNO’ as a means of identifying the goods at issue. The word ‘BRUNO’ is the prominent element of the analysed figurative signs, which the public would perceive as an origin identifier. Therefore, contrary to the applicant’s allegations, the appearance of these additional verbal and figurative elements do not call into question the conclusion on use of the word mark.

Consequently, the evidence shows that the mark has been used in accordance with its function and as registered.

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. From the submitted evidence, it can be seen that the mark at issue was used for coffee in Class 30. However, the evidence submitted does not demonstrate use for the services in Class 43.

Even though there are numerous promotional materials referring to ‘BRUNO’ Coffee Shops, these materials essentially demonstrate that at these establishments consumers can buy certain goods. In this sense, the promotional materials do not indicate whether these establishments also provide services for food and drink. Even if this evidence is coupled with the pictures of ‘BRUNO’ Coffee Shops, which demonstrate that drinks and food services are also offered there, the evidence based on these undated photos is not enough for the extent of use requirement. In particular, there is no information provided on turnover or other data showing provided services. It is true that the opponent has submitted till receipts said to be for drinks sold at ‘BRUNO’ Coffee Shops, but the receipts themselves do not indicate this and none of the remaining materials back up this statement of the opponent. In particular, the exemplary purchase receipts in Annex 6 and the invoices in Annex 13.2, demonstrate the opponent, Cactus S.A., as the seller of the ‘BRUNO’ coffee goods. Therefore, the evidence submitted is not considered sufficient to cover at least the extent of use requirement. Since the factors of time, place, extent and nature of use are cumulative, the evidence must provide sufficient indication of all these aspects in order to prove genuine use. Failure to fulfil any of the conditions means that genuine use has not been proved. Since the extent of use has not been proven, it is concluded that the evidence does not support the conclusion that the mark at issue has been used in relation to the services in Class 43.

For procedural economy reasons, it will be assumed that use has been proven for the remaining goods and services in Classes 30, 35 and 40, since, as it will be seen below, this may not have any impact on the outcome.

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.

1. The goods and services

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

Class 30: Coffee, tea, cocoa, chocolate and chocolate-based products, sugar, coffee substitutes.

Class 35: Advertising, business management, inter alia management of shops, supermarkets, hypermarkets or shopping centres; business administration, office functions, among other radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, distribution of publicity material, market studies, bill posting, business management assistance, demonstration of goods, distribution of samples, opinion polls, personnel recruitment, cost price analysis, public relations; retail services; retail sales services in relation to goods sold by a supermarket or hypermarket; retail sales services in relation to all everyday consumer goods, inter alia in relation to food, clothing (clothing, footwear and headgear), DIY and interior and exterior decorating (paints, ironmongery, tools and machine tools, DIY supplies), gardening, electrical and household electrical appliances, audio-visual, hi-fi, video, photography, sanitary apparatus and installations, in relation also to the field of computing (computers, accessories, programmes, software and hardware) and telephony, games and toys, sports articles, horological instruments and jewellery, in relation also to homes and furnishing, among other tableware, glassware and cutlery (knives, spoons, forks), household goods and toiletries, perfumery and cosmetics, sanitary preparations and articles, leather, imitations of leather, luggage and umbrellas, furniture, picture frames and mirrors, haberdashery and yarns and threads for textile use, fabrics and household linen, carpets and curtains, haberdashery and trimmings, carpets and floor and wall coverings, Christmas decorations, flowers, plants and seeds.

Class 40: Torrefaction.

The contested services are the following:

Class 43: Services for providing food and drink; providing temporary accommodation.

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

The contested services for providing food and drink cover services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended for serving food and drinks directly for consumption. These contested services are similar to a low degree to the opponent’s coffee, as they usually coincide in producer and distribution channels. Consumers may think that responsibility lies with the same undertaking as the market reality is that the manufacture of such goods is commonly offered by the same undertaking under the same trade mark. Furthermore, the contested services and the opponent’s coffee are complementary (17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

The contested providing temporary accommodation are services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation. These services are dissimilar to the opponent’s coffee in Class 30, since they do not have anything in common that could justify finding a level of similarity between them. They have a different nature, given that services are intangible whereas goods are tangible. Furthermore, the method of use of the contested services and the opponent’s goods is different. They have a different purpose, are neither complementary nor in competition, and do not usually originate from the same producers/providers.

The use has been assumed proven for the remaining goods in Class 30 and the services in Classes 35 and 40. These opponent’s goods and services are also dissimilar to the contested providing temporary accommodation services. The opponent’s foods and beverages in Class 30 have a different nature, method of use and purpose. Furthermore, they differ in producers/providers, distribution channels and are neither complementary nor in competition. The opponent’s services in Class 35 that include services with the object of help in the working or management of a commercial undertaking; help in the management of the business affairs or commercial functions of an industrial or commercial enterprise; services rendered by advertising establishments as well as retail services, and torrefaction services in Class 40, are all dissimilar to the contested providing temporary accommodation services. These services differ in their nature, method of use, purpose and are neither complementary nor in competition. Furthermore, they differ in distribution channels and the usual providers.

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 goods and services found to be similar to a low degree are directed at the public at large.

The degree of attention is considered average.

3. The signs

BRUNO
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 contested sign are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as Ireland, Malta and the United Kingdom.

The common element ‘BRUNO’ will be recognised as ‘a male name’ (01/10/2018, R 2499/2017‑5, BRUNO (fig.) / BRUNOX, § 24). The applicant claimed that this verbal element will be understood by the English-speaking public as ‘referring to the colour brown’, according to its meaning in Italian. Notwithstanding the applicant’s allegations as regards the weakness of the verbal element ‘BRUNO’ for the mentioned reasons, this verbal element will not be perceived as having the claimed meaning and, therefore, as descriptive by the English-speaking part of the relevant public. As explained above the verbal element ‘BRUNO’ will be perceived as ‘a male given name’ for this part of the relevant public, having no connotations with the goods and services in question.

The applicant argued that the earlier trade mark has a low degree of distinctiveness given that many trade marks consist of or contain the verbal element ‘BRUNO’. In support of its argument, the applicant referred to some trade mark registrations, such as EUTMs, French and Romanian trade marks.

The Opposition Division notes that the applicant also submitted printouts, showing use of ‘BRUNO’ for coffee and food provision services. Although it seems that some of the shown uses are of the registered marks listed by the applicant, nonetheless a few instances of use related to the territories in focus does not suffice to prove widespread use. It follows that the evidence filed does not demonstrate that the English-speaking part of the public has been exposed to widespread use of, and has become accustomed to trade marks that include the verbal element ‘BRUNO’. Under these circumstances, the applicant’s claims must be set aside.

The verbal elements ‘COFFEE STORES’ of the contested sign will be understood as retail establishments selling a drink made from the roasted beans of the coffee plant to the public. It has at most a weak distinctive character, considering that the services may include coffee services.

The two concentric circles in the contested sign will be perceived by the relevant public as being commonplace. Even if they are not negligible in terms of their size and the use of the yellow colour of the centre circle, this figurative element will be perceived by consumers essentially as a mere decorative element, and not as an element indicating the commercial origin of the services. Therefore, this element is considered of reduced distinctiveness.

The contested sign includes the figurative element in the form of a stylised human figure, wearing an Indian headdress and holding a cup. At least part of the public will perceive this figurative element in conjunction with the expression ‘COFFEE STORES’ as a male figure holding a coffee cup. The overall figurative device has a normal degree of distinctiveness. 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).

The applicant claimed that the centre yellow circle with the reddish-brown, stylised, human figure in the contested sign is the dominant element of the sign. The Opposition Division considers that the verbal element ‘BRUNO’, the concentric circles and the human figure of the contested sign, by virtue of their large size, and the bold typeface utilised for the verbal element ‘BRUNO’, placed in a prominent position above the figure of the man, are the co-dominant elements as they are the most eye-catching when compared to the remaining elements in the sign.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive verbal element ‘BRUNO’. The signs differ in the verbal elements ‘COFFEE STORES’ of the contested sign, which have no counterparts in the earlier mark. The signs also differ in the figurative elements of the contested sign, which, however, have less impact on the consumer’s perception since, as noted above, consumers tend to focus on the verbal elements of signs. The differing verbal elements ‘COFFEE STORES’ are at most weakly distinctive and are secondary, because of their smaller size and their ancillary position in the arrangement of the sign.

Although, as claimed by the applicant, the structure of the contested sign is different, the verbal element ‘BRUNO’ is clearly the dominant verbal element. This verbal element is the sole element in the earlier mark. Therefore, since the earlier mark is fully included in the contested sign as a distinctive and co-dominant verbal element, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BRUNO’. The pronunciation differs in the sound of the letters ‘COFFEE STORES’ in the contested sign, which have at most a weak distinctive character and a secondary position in the contested sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept evoked by the verbal element ‘BRUNO’, which is distinctive in relation to the goods and services at issue. To that extent, the signs are similar to a high degree. That conclusion is not affected by the presence of the additional elements in the contested sign, for the reasons stated above.

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 has no meaning for the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarities between the marks, on the basis of 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).

Furthermore, 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).

The contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods and services. They target the public at large, whose degree of attention is average. The earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to a high degree. Indeed, the contested sign reproduces the sole element of the earlier mark, ‘BRUNO’, which is distinctive from the perspective of the relevant public. Furthermore, it is the dominant verbal element of the contested sign. The differences between the verbal elements of the signs are limited to the elements of at most weakly distinctive character. As regards the figurative elements of the contested sign, although they are co-dominant, they will have a lesser impact than the verbal element ‘BRUNO’ since, as explained above in section c) of this decision, when signs consist of both verbal and figurative components, the verbal element usually has a stronger impact on the consumer than the figurative component.

Therefore, in an overall assessment, taking into account that the distinctive verbal element of the earlier mark is entirely contained in the contested sign as a distinctive and dominant verbal element, it is reasonable to assume that when confronted with the contested sign in relation to services which are similar to a low degree, consumers are likely to confuse the marks and believe that these services come from the same undertaking or, as the case may be, economically linked undertakings. Indeed, according to the principle of interdependence mentioned before, the important similarity between the signs compensates for the low similarity between the goods and services.

It is settled case-law that 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, in the present case, 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 services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

The rest of the contested services 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.