OPPOSITION No B 3 088 212

Modelo Continente Hipermercados, S.A., Rua João Mendonça, 505, 4464-503 Senhora da Hora, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

YUMMIIYUMMII, Tulipanvej 30, 8240 Risskov, Denmark (applicant), represented by Martin Breum Sønder, Mindet 2, 8000 Aarhus C, Denmark (professional representative).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 212 is partially upheld, namely for the following contested goods:

Class 8: Cutlery, and food preparation implements being kitchen knives, cutting and grinding implements; table cutlery [knives, forks and spoons].

Class 21: Household or kitchen utensils; tableware, cookware and containers; cookware and tableware, except forks, knives and spoons; glassware; ceramic hollowware; porcelain; porcelain ware; lunch boxes; bento boxes; Japanese nests of food boxes [jubako]; insulating flasks; glass flasks [containers]; drinking bottles.

2. European Union trade mark application No 18 042 823 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 042 823 for the word mark ‘YUMMII YUMMII’. The opposition is based on European Union trade mark registration No 13 594 783 for the figurative mark . 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.

1. The goods

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

Class 7: Electrical apparatus for preparing food for household purposes; electromechanical apparatus for preparing food for household purposes; food preparation machines (electric); electrical machines for preparing food for kitchen purposes.

Class 11: Apparatus for heating, steam generating, cooking and refrigerating; appliances for cooking foodstuffs.

The contested goods are the following:

Class 8: Cutlery, and food preparation implements being kitchen knives, cutting and grinding implements; table cutlery [knives, forks and spoons].

Class 21: Household or kitchen utensils; tableware, cookware and containers; cookware and tableware, except forks, knives and spoons; glassware; ceramic hollowware; porcelain; porcelain ware; lunch boxes; bento boxes; Japanese nests of food boxes [jubako]; insulating flasks; glass flasks [containers]; drinking bottles; straws for drinking.

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

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 8

Cutlery includes any hand implement used in preparing, serving, and eating food. The opponent’s electrical apparatus for preparing food for household purposes are various small apparatus used to prepare and process food, including cutting, chopping and grinding devices. Consequently, they coincide in their purpose with the contested cutlery, and food preparation implements being kitchen knives, cutting and grinding implements; table cutlery [knives, forks and spoons]. Furthermore, they have the same relevant public and are sold in the same outlets and may be manufactured by the same entities. Consequently, these goods are similar.

Contested goods in Class 21

The contested household or kitchen utensils; tableware, cookware and containers; cookware and tableware, except forks, knives and spoons; glassware; ceramic hollowware; porcelain; porcelain ware; lunch boxes; bento boxes; Japanese nests of food boxes [jubako]; insulating flasks; glass flasks [containers]; drinking bottles are various tableware, cookware and containers that are similar to the opponent’s apparatus for cooking. These goods are aimed at the same relevant public via the same distribution channels and can be produced by the same manufacturers.

The contested straws for drinking are dissimilar to the opponent’s goods. They have different natures (drinking straws v apparatus for cooking and for preparing food), methods of use and purposes. Furthermore, they are not produced by the same entities and they are neither complementary nor in competition with each other.

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 found to be similar are directed at the public at large whose degree of attention is considered to be average.

3. The signs

	YUMMII YUMMII
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 elements ‘yämmi’ and ‘YUMMII’ are not meaningful in certain territories and are, therefore, distinctive, for example in those countries where Bulgarian, Greek, Latvian, Lithuanian and Spanish are spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Greek-, Lithuanian- , Latvian- and Spanish-speaking part of the public for which likelihood of confusion is more likely to occur.

As long as the second element ‘YUMMII’ of the contested sign is concerned, it will be perceived as a simple repetition of the first element and, consequently, will have reduced impact.

Despite being a figurative mark, the earlier sign does not possess any original and eye-catching stylisation and figurative elements, but rather banal black colour and standard font. Therefore, the consumers will perceive the earlier mark as a simple word.

Visually and aurally, the signs coincide in the letters, their sounds and positions ‘Y*MMI*’. However, they differ in the second letter and its sound ‘ä’ of the earlier mark replaced by another vowel, ‘U’, in the contested sign. The signs further differ in the final ‘I’ and the second verbal element and their sounds, present only in the contested sign. However, due to its graphic representation and position at the end of the term, their impact will be reduced.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods have been found partly similar and partly dissimilar to the goods of the opponent. They are directed at the public at large whose degree of attention is average.

The signs are visually and aurally similar to a high degree. In particular, the marks coincide in all letters and their positions except for the second one and the final letter of the contested sign, which is a repetition of the penultimate one (‘ii’) and does not result in a different sound. Additionally, the signs do not convey any concept that would help the consumer to distinguish them.

As analysed above, the figurative aspect of the earlier mark will be disregarded by the relevant public. These elements will, therefore, have a limited impact as indicators of commercial origin for the public in the relevant territory. As a result, they are not sufficient to exclude a likelihood of confusion between the marks in question.

The earlier mark is inherently distinctive to a normal degree.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The opponent claims that the applicant’s arguments dated 13/09/2019 were filed ‘outside the term established’. However, as per the Office’s Communication dated 19/07/2019, the time limit for the applicant to submit observations was set on 24/01/2020. Consequently, the submission on 13/09/2019 was made within this time limit and is admissible.

The applicant claims that the earlier mark targets the Portuguese market while the products marketed under their trade mark will not target the Portuguese market. However, pursuant to Article 1 EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union (EU). The fact that the applicant is seeking protection on an European level, for which protection may have been entirely granted, is to be taken into account and not the mere intention of use only in particular countries thereafter.

The applicant further claims that the products sold under the trade mark are ‘for single, or very few, purchase by each consumer’, while the products sold under the trade mark ‘YUMMII YUMMII’ are ‘for repeated purchases by the consumer’. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Furthermore, the applicant’s goods can also be purchased seldom, a set of cutlery for example. Consequently, the applicant’s claim must be set aside.

In its observations, the applicant argues that there are many registered trade marks which include similar verbal elements, but the opponent has not opposed them. In support of its argument the applicant refers to several European Union trade mark registrations.

The Opposition Division notes first that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Furthermore, it is the opponent’s decision, based on its business strategy, which trade mark applications to oppose or not. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-, Greek-, Lithuanian-, Latvian- and Spanish-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 13 594 783. 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 found to be similar to those of the earlier trade mark.

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

The Opposition Division

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

Meglena BENOVA

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.