OPPOSITION No B 3 082 763

Lood Is Good sp. z o.o., Pl. Wolnica 11, 31-060 Kraków, Poland (opponent), represented by Krzysztof Wasilewski, Twarda 4, 00-105 Warszawa, Poland (professional representative)

a g a i n s t

Lucky Lood Ilona Cholewa, Dolnych Wałów 1, 44-100 Gliwice, Poland (applicant), represented by Łukasz Korga, ul. Stefana Batorego 48/406, 41-506 Chorzów, Poland (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 763 is upheld for all the contested services.

2. European Union trade mark application No 17 950 921 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 17 950 921 for the figurative mark . The opposition is based on, inter alia, Polish trade mark registration No 293 564 for the word mark ‘LOOD’. 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 Polish trade mark registration No 293 564.

a) The services

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

Class 43: Cafés; gastronomic services with its own facilities, products and transport.

The contested services are the following:

Class 43: Café services; ice cream parlour services; catering for the provision of food and beverages; café services.

Contested services in Class 43

Café services are identically contained in both lists of services (including synonyms).

The contested ice cream parlour services; catering for the provision of food and beverages and the opponent’s gastronomic services with its own facilities, products and transport are all services intended for serving food and drinks directly for consumption. Therefore, these services most likely overlap and cannot be clearly separated from each other. In any case, it is clear that they have the same nature, purpose and method of use. In addition, they can coincide in provider, relevant public and distribution channels. Therefore, they are considered at least highly similar.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical or at least highly similar are directed at the public at large. The degree of attention is average.

c) The signs

LOOD
Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

Firstly, the relevant public in the various EU Member States mainly speak the languages predominant in their respective territories (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 27). These languages are normally the official languages of the relevant territory.

While it cannot be automatically excluded that the relevant public in a particular territory only knows that territory’s language (03/06/2009, C‑394/08 P, Zipcar, EU:C:2009:334, § 51) it cannot be assumed – in the case of English – that that public has anything beyond a rudimentary or basic knowledge of English, except in Member States where particular emphasis is given to teaching and diffusion of English among the general public such as Denmark, the Netherlands, Finland and Sweden (09/09/2019, R 2447/2018-5, SpringBet (fig) / SPIN & BET (fig), § 40).

Knowledge of English on the part of the Polish public is not a well-known fact and the sector in question (services of provision of food and drinks) is not one of those in which English is frequently or normally used. Therefore, it was for the parties to provide, in the course of the administrative proceedings, evidence to highlight the relevant public’s knowledge of a language other than its mother tongue (by analogy, 29/04/2020, T‑108/19; TasteSense By Kerry (fig.) / Multisense et al., EU:T:2020:161, § 63). Even assuming that a part of the relevant public knows some English, the Opposition Division is of the opinion that a substantial part of the Polish public will perceive the contested sign’s verbal element ‘LUCKY’ as meaningless. For the same reasons, this part of the public will not read the coinciding and meaningless verbal element ‘LOOD’ in accordance with English pronunciation rules, as argued by the opponent, but in accordance with Polish pronunciation rules. Considering that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the substantial part of the Polish public for which these terms are meaningless.

The earlier word mark consists of the sole verbal element, ‘LOOD’, which is meaningless and, therefore, inherently distinctive to an average degree. The Opposition Division disagrees with the opponent that the relevant public will perceive the element ‘LOOD’ as referring to the English word ‘good’.

The contested sign consists of the meaningless verbal elements ‘LUCKY’ and ‘LOOD’, which are inherently distinctive to an average degree, and a figurative element portrayed above them. Bearing in mind the type of the contested services in Class 43, this figurative element will be perceived as a stylised image of an ice cream in a cone. Consequently, for this part of the public it is weak for the relevant services, since they all pertain to the foodstuff provision market sector and will indicate to the consumers that they relate to ice creams. The sign’s verbal elements are depicted in black, standard and non-distinctive upper-case letters of an essentially ornamental nature, which will not detract the consumers’ attention from the words themselves.

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 contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘LOOD’, which constitutes the entire earlier mark and the second verbal element of the contested sign, where it performs an independent distinctive role. However, they differ in the first verbal element of the contested sign, ‘LUCKY’, which has no counterpart in the earlier mark. The difference between the signs also lies in the contested sign’s figurative element and stylisation, which however does not outweigh the visual similarity between them, since consumers usually afford more trade mark significance to the verbal element of a sign, as explained above.

Despite their differing lengths and taking into account the abovementioned differences and similarities between the conflicting signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛LO-OD’, present identically in both signs. The pronunciation differs in the syllables ‛LU-CKY’ at the contested sign’s beginning. The figurative elements of the contested sign are not subject to a phonetic assessment.

Despite their differing lengths, considering that the verbal element ‘LOOD’, which has an independent distinctive role in the contested sign, entirely reproduces the only verbal element of the earlier mark, the signs are similar to an average degree.

Conceptually, neither of the verbal elements of the signs has any meaning for part of the public in the relevant territory on which examination focuses. However, this public will perceive the concept of an ice cream in a cone in the contested sign which has no counterpart in the earlier mark. Therefore, the signs are conceptually not similar. Nevertheless, this conceptual difference should not be overestimated as it stems from an element with a weak inherent distinctiveness for the contested services.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

The opponent argued that the earlier trade mark enjoys ‘an exceptional degree of inherent distinctiveness’ because it is uses word play between Polish and English and an entirely fanciful word that does not exist in either of the languages. However, a word mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Consequently, the inherent distinctive character 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).

The earlier mark has a normal degree of inherent distinctiveness. The relevant public is the public at large and the degree of attention is average.

The services are identical and at least highly similar, and they are conceptually not similar. In addition, 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).

The signs are visually and aurally similar to an average degree. The earlier mark is entirely included as the contested sign’s second verbal element, where it plays an independent and distinctive role. The additional figurative elements of the contested sign, as explained above, have a lesser impact on comparison of signs than the verbal elements, as the figure above the verbal elements is weak, whereas the stylisation of the verbal elements is standard. Even though the signs are conceptually not similar, this difference should not be overestimated because it stems from the figurative element of weak inherent distinctiveness.

Although the public may perceive certain differences between the marks, likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the goods/services covered are from the same or economically linked undertakings. Therefore, even if the marks were not directly confused with one another, there is a likelihood of confusion, for the purposes of Article 8(1)(b) EUTMR, when average consumers, although aware of the differences between the signs, nevertheless assume, owing to the use of an identical and distinctive word ‘LOOD’ for identical and (at least) highly similar services, that they are derived from the same undertaking or economically linked undertakings.

The relevant services in Class 43 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional words and figurative elements. This may be to differentiate between various locations of establishments of the same provider in the field of food-related services or type of services offered, for example. Indeed, due to the use of the identical element ‘LOOD,’ 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 (ice creams).

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, the differences between the signs, in particular the fact that they are conceptually not similar, are offset by (at least) a high degree of similarity and identity between the services.

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association, on the part of the Polish public for which the verbal elements ‘LUCKY’ and ‘LOOD’ are meaningless. 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 and, consequently, it is not necessary to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 293 564. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Polish trade mark registration No 293 564 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Jakub MROZOWSKI

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.