OPPOSITION No B 3 077 709

Netaaf Royalties Company Ltd, 1 Oktovriou 18, 5330 Agia Napa, Cyprus (opponent)

a g a i n s t

Άνθιμος Δημητριάδης, Δρυάδων 1Δ, 14572 Δροσιά Αττικής, Greece (applicant), represented by Potolias Salemi & Associates Law Firm, Laskareos 55, 11473 Athens, Greece (professional representative).

On 23/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 709 is partially upheld, namely for the following contested goods and services:

Class 30: All the goods applied for in this class.

Class 43: Café services; Canteen services; Self-service cafeteria services; Snack-bar services; Bar services; Preparation of meals; Preparation and provision of food and drink for immediate consumption; Services for the preparation of food and drink; Food preparation services; Food preparation for others on an outsourcing basis; Providing of food and drink via a mobile truck; Providing food and drink in doughnut shops; Providing food and drink in Internet cafes; Providing food and drink in bistros; Providing food and drink for guests; Mobile restaurant services; Restaurant services; Cocktail lounge services; Tapas bars; Bar and restaurant services; Contract food services; Banqueting services; Teahouse services; Take-away food and drink services; Hospitality services [food and drink]; Hookah bar services; Salad bars; Take-out restaurant services; Delicatessens [restaurants]; Restaurant services incorporating licensed bar facilities; Ice cream parlour services; Take-away food services.

2. European Union trade mark application No 17 986 006 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 43: Rental of bar equipment; Rental of non-electric cooking heaters; Rental of kitchen worktops; Providing accommodation for functions; Information and advice in relation to the preparation of meals; Provision of information relating to bars; Providing information about bartending; Provision of information relating to the preparation of food and drink; Cookery advice; Providing information about bar services; Consultancy services relating to food preparation; Consultancy services relating to food; Consulting services in the field of culinary arts; Restaurant information services; Rental of internal furnishings; Rental of catering equipment; Rental of furniture; Hiring of furniture for presentations; Rental of chairs and tables; Rental of kitchen sinks; Rental of cutlery; Rental of lighting apparatus (Domestic -); Rental of kitchen worktops for preparing food for immediate consumption; Rental of crockery; Rental of lighting apparatus; Hire of interior tables; Rental of chairs, tables, table linen, glassware; Drink dispensing machines (rental of); Rental of drinking water dispensers; Rental of cooking apparatus.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 986 006 for the word mark ‘ΚΑΦΕΝΕΟ Ελ Γκρέκο’. The opposition is based on European Union trade mark registration No 16 773 822 for the figurative mark .

The opponent invoked Article 8(1)(a) and (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 applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

However, the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

Furthermore, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

In any event, in the present case, the date of filing of the contested trade mark is 18/11/2018.

Earlier trade mark No 16 773 822 was registered on 07/09/2017.

Therefore, the request for proof of use is inadmissible.

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

Class 30: Coffee.

Class 35: Retail services in relation to coffee.

The contested goods and services are the following:

Class 30: Ground coffee beans; Ground coffee; Coffee essences; Coffee based fillings; Coffee extracts; Malt coffee extracts; Extracts of coffee for use as flavours in foodstuffs; Extracts of coffee for use as flavours in beverages; Aerated beverages [with coffee base]; Roasted coffee beans; Cappuccino; Coffee; Coffee in whole-bean form; Mixtures of malt coffee extracts with coffee; Mixtures of malt coffee with coffee; Preparations for making beverages [coffee based]; Coffee-based beverages containing ice cream (affogato); Coffee bags; Coffee pods; Filters in the form of paper bags filled with coffee.

Class 43: Café services; Canteen services; Rental of bar equipment; Rental of non-electric cooking heaters; Rental of kitchen worktops; Self-service cafeteria services; Snack-bar services; Bar services; Preparation of meals; Preparation and provision of food and drink for immediate consumption; Services for the preparation of food and drink; Food preparation services; Food preparation for others on an outsourcing basis; Providing accommodation for functions; Information and advice in relation to the preparation of meals; Provision of information relating to bars; Providing information about bartending; Provision of information relating to the preparation of food and drink; Cookery advice; Providing information about bar services; Providing of food and drink via a mobile truck; Providing food and drink in doughnut shops; Providing food and drink in Internet cafes; Providing food and drink in bistros; Providing food and drink for guests; Mobile restaurant services; Restaurant services; Cocktail lounge services; Tapas bars; Bar and restaurant services; Contract food services; Consultancy services relating to food preparation; Consultancy services relating to food; Consulting services in the field of culinary arts; Restaurant information services; Banqueting services; Teahouse services; Take-away food and drink services; Hospitality services [food and drink]; Rental of internal furnishings; Rental of catering equipment; Rental of furniture; Hiring of furniture for presentations; Rental of chairs and tables; Rental of kitchen sinks; Rental of cutlery; Rental of lighting apparatus (Domestic -); Rental of kitchen worktops for preparing food for immediate consumption; Rental of crockery; Rental of lighting apparatus; Hire of interior tables; Rental of chairs, tables, table linen, glassware; Hookah bar services; Salad bars; Drink dispensing machines (rental of); Rental of drinking water dispensers; Rental of cooking apparatus; Take-out restaurant services; Delicatessens [restaurants]; Restaurant services incorporating licensed bar facilities; Ice cream parlour services; Take-away food services.

The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s references to the particular circumstances in which the goods in question are marketed and provided cannot be taken into account in the context of opposition proceedings as those circumstances may vary over time and depending on the wishes of the proprietors of the signs at issue (15/03/2007, C 171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; ).

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

The contested ground coffee beans; ground coffee; coffee based fillings; aerated beverages [with coffee base]; roasted coffee beans; cappuccino; coffee; coffee in whole-bean form; mixtures of malt coffee with coffee; coffee-based beverages containing ice cream (affogato); coffee bags; coffee pods; filters in the form of paper bags filled with coffee are coffee or coffee based products. They are identically contained in both lists (including synonyms) or they are included in, or overlap with, the opponent’s coffee or at least may coincide in producer, relevant public, distribution channels and method of use or be in competition with the opponent’s goods. Therefore, they are identical or at least similar to a high degree to the opponent’s coffee.

The contested coffee essences; coffee extracts; malt coffee extracts; extracts of coffee for use as flavours in foodstuffs; extracts of coffee for use as flavours in beverages; mixtures of malt coffee extracts with coffee are goods used to give a coffee flavour to other foodstuffs or beverages or mixtures of such flavourings with coffee. These goods are at least similar to a low degree to the opponent’s coffee as they have the same purpose and usually coincide in method of use.

The contested preparations for making beverages [coffee based] are similar to the opponent’s coffee as they have the same nature and usually coincide in producers, relevant public and distribution channels.

Contested services in Class 43

The contested café services; canteen services; self-service cafeteria services; snack-bar services; bar services; preparation of meals; preparation and provision of food and drink for immediate consumption; services for the preparation of food and drink; food preparation services; food preparation for others on an outsourcing basis; providing of food and drink via a mobile truck; providing food and drink in doughnut shops; providing food and drink in internet cafes; providing food and drink in bistros; providing food and drink for guests; mobile restaurant services; restaurant services; cocktail lounge services; tapas bars; bar and restaurant services; contract food services; banqueting services; teahouse services; take-away food and drink services; hospitality services [food and drink]; hookah bar services; salad bars; take-out restaurant services; delicatessens [restaurants]; restaurant services incorporating licensed bar facilities; ice cream parlour services; take-away food services are similar to a low degree to the opponent’s goods. The opponent’s goods are complementary to the contested services as such goods are used and offered as part of the services of restaurants, brasseries, cafés, bars and other similar establishments. Furthermore, nowadays, restaurants ‘not only sell but also produce their own beverages: coffee, wine …, beer … or … freshly squeezed juices, smoothies and cocktails’, and conversely, ‘many bakeries not only sell bread and pastries, but also offer coffee and small snacks, e.g. breakfasts, served at the table’ (01/01/2018, T-438/16, CIPRIANI, EU:T:2018:110, § 52). Likewise, numerous gastronomic establishments (e.g. bakeries or restaurants with meals to take away or for delivery) not only provide for the sale of foodstuffs produced by them as goods, but also for the provision of catering services and the providers of catering services diversify their offer with ready-to-serve meals or drinks. The goods and services under comparison are therefore closely related (23/11/2018, R 1931/2017-1, EST 1946 riQPrOE XAIZIRDQ MOY CHOCOLATES (fig.) / XtnOvptoiiou (fig.) et. Al. and the case-law cited therein). They are considered similar to a low degree.

However, the remaining contested rental of bar equipment; rental of non-electric cooking heaters; rental of kitchen worktops; providing accommodation for functions; information and advice in relation to the preparation of meals; provision of information relating to bars; providing information about bartending; provision of information relating to the preparation of food and drink; cookery advice; providing information about bar services; consultancy services relating to food preparation; consultancy services relating to food; consulting services in the field of culinary arts; restaurant information services; rental of internal furnishings; rental of catering equipment; rental of furniture; hiring of furniture for presentations; rental of chairs and tables; rental of kitchen sinks; rental of cutlery; rental of lighting apparatus (domestic -); rental of kitchen worktops for preparing food for immediate consumption; rental of crockery; rental of lighting apparatus; hire of interior tables; rental of chairs, tables, table linen, glassware; drink dispensing machines (rental of); rental of drinking water dispensers; rental of cooking apparatus are dissimilar to the opponent’s goods in Class 30 and services in Class 35. These goods and services have different natures and purposes. They are not complementary to or in competition with each other and they are provided/sold by different undertakings through different distribution channels.

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 identical or similar to varying degrees are directed at the public at large.

The degree of attention is average.

3. The signs

	ΚΑΦΕΝΕΟ Ελ Γκρέκο
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 contested sign is written in Greek characters and is composed of words meaningful for Greek-speaking consumers. The earlier mark is composed of words written in letters of the Latin alphabet which is known to the Greek-speaking consumers (16/12/2010, T-281/09, Chroma, EU:T:2010:537, § 34-35). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public.

Despite being stylised, the letters of the words ‘EL GRECO’ of the earlier figurative mark are clearly identifiable, including the final letter ‘O’ which can be considered as stylised into a coffee bean. The Greek-speaking consumers will perceive the expression ‘EL GRECO’ of the earlier mark as a transliteration into Latin characters of the Greek words ‘Ελ Γκρέκο’, present in the contested sign. Both versions have a clear and specific semantic content, namely that of a famous painter. As this meaning is not related to the relevant goods, both ‘EL GRECO’, of the earlier mark, and ‘Ελ Γκρέκο’, of the contested sign, are distinctive. The concept of a coffee bean created by a stylisation of the letter ‘O’ is related to the relevant goods and cannot be given much weight.

The element ‘EL GRECO’ is the visually dominant (the most eye-catching) element of the earlier mark. Therefore, irrespectively of whether the relevant public understands the English expression ‘Roasting company’, written in relatively small letters at the bottom of the sign, it is the element ‘EL GRECO’ that will attract more attention in that mark.

The contested sign is a word mark. Therefore, it has no elements that could be considered more visually dominant (eye-catching) than other elements. However, taking into account that the Greek word ‘ΚΑΦΕΝΕΟ’ will be perceived as a misspelling of the Greek word ‘ΚΑΦΕΝΕΙΟ’ meaning ‘a coffeehouse’ or it will be considered as referring to ‘new coffee’. Since these meanings are related to the relevant goods and services, the attention of the relevant public will be focused on the words ‘Ελ Γκρέκο’ (‘El Greco’) which form the most distinctive element of the contested sign.

Visually, as the signs do not visually coincide in any element, it is concluded that they are not visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘EL GRECO’ of the earlier mark and ‘Ελ Γκρέκο’ of the contested sign. The pronunciation differs in the sound of the other words of the signs, ‘Roasting company’ of the earlier mark and ‘ΚΑΦΕΝΕΟ’ of the contested sign. These differing elements have less impact for the reasons explained above.

As the pronunciation of the signs coincides in the sound of the words that have the strongest impact on the consumers, the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs coincide in the concept of the distinctive elements and differ in the concepts transpiring from elements that have less impact on the consumer, the signs are conceptually similar to a high degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical or similar to varying degrees to the opponent’s goods in Class 30 and partly dissimilar to the opponent’s goods and services.

The signs are visually dissimilar, aurally similar to an above average degree and conceptually similar to a high degree. The degree of distinctiveness of the earlier mark is normal and the consumers’ attention is average.

Taking all the above into account it is considered that, despite the fact that the signs are visually dissimilar as the element that coincides phonetically and conceptually is written in Latin letters in the earlier mark and Greek characters in the contested sign, the phonetic and conceptual similarities between the earlier mark, which is distinctive to a normal degree, are sufficient for the reasonably well informed and reasonably observant and circumspect consumers to believe that the identical and similar goods and services (including those similar only to a low degree) come from the same undertaking or, as the case may be, from economically linked undertakings.

In its observations, the applicant argues that the goods of the contested application complement a line of coffee preparation devices also sold under the mark ‘ΕΛ ΓΚPEΚΟ’ (‘EL GREKO’) registered prior to the contested sign, inter alia, for goods in Class 30.

First, it is important to note that the Opposition Division is in principle restricted in its examination to the trade marks in conflict.

Second, according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In this respect, the evidence submitted by the applicant show pictures of ‘Ελ Γκρέκο’ goods (including in delivery vehicles) and their advertisements, an illustration showing two persons sitting in front of a painting, discussing ‘El Greco’ and coffee preparation devices (according to the translation of the text in speech bubbles), tables with information concerning marketing and R&D expenses of the contested goods (without dates or sources indicated), evidence related to confirmation of purchase of domain names (www.kafeneo.gr, www.kafeneo-elgreko.gr, www.kafeneoelgreko.gr), list of services marketed under the contested sign and evidence related to the opponent’s mark and goods, namely pictures of menu pages, a list of retail stores with an indication ‘Captured from “http://www.elgrecocaffe.com/el/metro-home-el/” July 13, 2019. Most of the pieces of evidence presented by the applicant are undated and/or consist of unsigned documents of unknown origin and/or nature. Even if this evidence is assessed together with the evidence submitted by the opponent in its observations (screenshots and links) in order to prove that the opponent delivers its goods to consumers and a copy of licence agreement and of an extract from the commercial registry (the latter documents submitted in reply to the applicant’s inquiry about relations between the opponent and the company retailing the opponent’s goods), it gives very little information, in particular in relation to extent and timeframe of use of the signs on the market. This evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks which include the element ‘Ελ Γκρέκο’ (‘EL Greco’).

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Furthermore, the applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-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 No 16 773 822. 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 (to varying degrees) 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are obviously not identical.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Justyna GBYL

Aurelia PEREZ BARBER

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.