OPPOSITION No B 3 077 042

Bolero Co. Ltd., 1, Dragalevska str., Office No. 2, 1407 Losenetz, Sofia, Bulgaria (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Bolero Holding GmbH, Clemens-Schultz-Straße 3, 20359 Hamburg, Germany (applicant), represented by Fortmann Tegethoff Patent- und Rechtsanwälte, Oranienburger Strasse 39, 10117 Berlin, Germany (professional representative).

On 02/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 042 is upheld for all the contested goods and services

2. European Union trade mark application No 17 978 505 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 of European Union trade mark application No 17 978 505 for the word mark ‘BOLERO’. The opposition is based on international registration No 1 415 394 designating Austria, Benelux, Croatia, Denmark, Finland, Czech Republic, France, Germany, Greece, Hungary, Italy, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden for the word mark ‘BOLERO’. The opponent invoked Article 8(1)(a) and (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 present opposition is based on the earlier international registration designating Austria, Benelux, Croatia, Denmark, Finland, Czech Republic, France, Germany, Greece, Hungary, Italy, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden. However, for reasons of procedural economy, the Opposition Division will first focus on the international registration designating France.

a) The goods and services

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

Class 30: Coffee, tea, cocoa and coffee substitutes; aniseed; aromatic preparations for food; artificial coffee; baking powder; baking soda [bicarbonate of soda for cooking purposes]/bicarbonate of soda for cooking purposes [baking soda]; flavourings, other than essential oils, for beverages/flavorings, other than essential oils, for beverages; cake powder; flavourings, other than essential oils, for cakes/flavorings, other than essential oils, for cakes; cereal bars; cereal-based snack food; chewing gum; chicory [coffee substitute]; chocolate beverages with milk; chocolate-based beverages; cinnamon [spice]; cocoa beverages with milk; cocoa-based beverages; coffee flavourings/coffee flavorings; unroasted coffee; coffee beverages with milk; coffee-based beverages; crackers; curry [spice]; custard; dough; dressings for salad; edible ices; essences for foodstuffs, except etheric essences and essential oils; ferments for pastes; fondants [confectionery]; frozen yoghurt [confectionery ices]/ frozen yogurt [confectionery ices]; fruit jellies [confectionery]; garden herbs, preserved [seasonings]; ginger [spice]; golden syrup; groats for human food; halvah; ham glaze; high-protein cereal bars; hominy; honey; husked oats; ice, natural or artificial; ice for refreshment; iced tea; leaven; liquorice [confectionery]; lozenges [confectionery]/pastilles [confectionery]; malt for human consumption; maltose; marinades; mint for confectionery; dessert mousses [confectionery]; mustard; nutmegs; pancakes; pasta sauce; pepper; peppers [seasonings]; popcorn; powders for making ice cream; puddings; sandwiches; sea water for cooking; seasonings; sherbets [ices]/sorbets [ices]; soya sauce; spices; star aniseed; sushi; natural sweeteners; tea-based beverages; tomato sauce; vanilla flavourings for culinary purposes/vanilla flavorings for culinary purposes; vegetal preparations for use as coffee substitutes; vinegar; waffles.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; aloe vera drinks, non-alcoholic; preparations for making beverages; cocktails, non-alcoholic; fruit juices/fruit juice; ginger beer/ginger ale; isotonic beverages; sport beverages; energy drinks; energy shots; kvass [non-alcoholic beverage]; lemonades; preparations for making liqueurs; malt beer; mineral water [beverages]; non-alcoholic fruit juice beverages; non-alcoholic beverages; non-alcoholic honey-based beverages; pastilles for effervescing beverages; powders for effervescing beverages; seltzer water; sherbets [beverages]/sorbets [beverages]; soda water; syrups for beverages; syrups for lemonade; vegetable juices [beverages]; waters [beverages]; whey beverages; preparations for making aerated water; aerated water; aperitifs, non-alcoholic; beer wort; cider, non-alcoholic; essences for making beverages; fruit nectars, non-alcoholic; grape must, unfermented; extracts of hops for making beer; lithia water; malt wort; preparations for making mineral water; must; non-alcoholic fruit extracts; orgeat; sarsaparilla [non-alcoholic beverage]; smoothies; table waters; tomato juice [beverage]; ice tea beverages; children beverages.

Class 33: Alcoholic beverages (except beers); anise [liqueur]; anisette [liqueur]; aperitifs; bitters; cocktails; digesters [liqueurs and spirits]; distilled beverages; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; liqueurs; peppermint liqueurs; pre-mixed alcoholic beverages, other than beer-based; rum; spirits [beverages]; vodka; whisky; wine.

Class 43: Services for providing food and drink; temporary accommodation; accommodation bureau services [hotels, boarding houses]; bar services; boarding house services; boarding house bookings; boarding for animals; café services; cafeteria services; providing campground facilities; canteen services; rental of chairs, tables, table linen, glassware; rental of cooking apparatus; day-nursery [crèche] services; rental of drinking water dispensers; food and drink catering; food sculpting; holiday camp services [lodging]; hotel services; hotel reservations; rental of lighting apparatus; rental of meeting rooms; motel services; reception services for temporary accommodation [management of arrivals and departures]; restaurant services; retirement home services; self-service restaurant services; snack-bar services; rental of temporary accommodation; temporary accommodation reservations; rental of tents; tourist home services; rental of transportable buildings; washoku restaurant services; juice bar services; sport supplements nutrition bar services; sport foods bar services; protein shake juice bar services; protein shake juice bar and café services; dietary products bar services; smoothies bar services; raw juice bar services.

Further to the Decisions in opposition B3076915 and B3077202, that have already become final, the contested goods and services are the following:

Class 30: Burritos; chalupas; chimichanga; crisps made of cereals; crackers made of prepared cereals; crackers flavoured with meat; crackers flavoured with vegetables; crackers flavoured with cheese; crackers flavoured with herbs; crackers flavoured with spices; empanadas; enchiladas; fajitas; vegetable flavoured corn chips; corn chips; nachos; cereal based savoury snack foods; corn-based savoury snacks; popcorn; quesadillas; cereal-based snack food; snack food products made from maize flour; taco chips; tacos; pasta containing stuffings; tortilla snacks; tortilla chips; tortillas; wholewheat crisps.

Class 33: Alcoholic beverages (except beer); pre-mixed alcoholic beverages; spirits and liquors; cocktails; gin; cachaca; rum; liqueurs; brandy; whisky; vodka; spirits [beverages]; alcoholic punches; alcopops; alcoholic cocktail mixes; alcoholic cocktails containing milk; alcoholic cocktails in the form of chilled gelatins; prepared alcoholic cocktails.

Class 43: Bars, restaurants; banqueting services; banqueting services; bar services; bars; beer bar services; beer garden services; bistro services; brasserie services; café services; cafés; cafeterias; canteen services; canteens; takeaway restaurants; catering; cocktail lounge buffets; cocktail lounge services; cocktail lounges; coffee bar services; café services; coffee shops; food and drink catering; services for the preparation of food and drink; food preparation; delicatessen (restaurants); food preparation services; grill restaurants; pizza restaurants; providing of food and drink in internet cafés; providing of food and drink in bistros; providing food and drink for guests; providing of food and drink in restaurants and bars; providing of restaurant services; pubs; restaurant and bar services; restaurants; salad bars; self-service cafeteria services; self-services restaurant services; snack-bars; take-away meals and beverages; takeaway restaurants; wine bars; tapas bars; tea rooms.

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 30

Cereal-based snack food is identically contained in both lists of goods.

The opponent’s goods cover products belonging to the same sector of foodstuff. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods or that they are even identical, these goods clearly belong to one homogeneous sector of products on the market and for the majority of them they are - at least - produced by the same companies, target the same end user and are being sold in the same places through the same channels of distribution. Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that the rest of the contested goods are at least similar to a low degree to the opponent’s goods.

Contested goods in Class 33

Alcoholic beverages (except beer) and pre-mixed alcoholic beverages are identically contained in both lists of goods.

The contested cocktails contain as a broader category the opponent’s cocktails, non-alcoholic. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The rest of the contested goods, namely, spirits and liquors; gin; cachaca; rum; liqueurs; brandy; whisky; vodka; spirits [beverages]; alcoholic punches; alcopops; alcoholic cocktail mixes; alcoholic cocktails containing milk; alcoholic cocktails in the form of chilled gelatins; prepared alcoholic cocktails are all included in the opponent’s broader category of Alcoholic beverages (except beer). Therefore, they are identical.

Contested services in Class 43

All the contested services in this Class are, broadly speaking, bar services and services for preparing and providing food and drinks. To that extent, they fall into the opponent’ s broader category of, or overlap with, services for providing food and drink. Therefore, they are identical.

b) The signs

BOLERO	BOLERO
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

In the present case, the goods and services have been found to be partly identical and partly at least similar to a low degree.

The signs are identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s international registration designating France. 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 goods and services found to be identical or similar , even to a low degree,to those of the earlier trade mark.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Helen Louise MOSBACK

Yaelle Davina COHEN HAZAN

Marzena MACIAK

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.