OPPOSITION No B 3 098 279

Purogroup Worldwide, S.L., C/ Lagasca 88, 28001 Madrid, Spain (opponent), represented by Elisa Arsuaga Santos, Paseo Sauces 14, nº 22 Urb. Montepríncipe, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Ellezeta SRLS, Via A. De Pretis 62, 80133 Napoli, Italy (applicant), represented by Francesco Ambrosino, Via Alessandro Scarlatti 134, 80127 Napoli, Italy (professional representative).

On 09/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 279 is partially upheld, namely for the following contested goods and services:

Class 29: Fruit jellies; marmalade; drinks made from dairy products; chilled dairy desserts; dairy-based whipped topping; yoghurt; milk beverages, milk predominating; almond milk; almond milk-based beverages.

Class 30: Artificial coffee; cocoa; coffee; sponge cakes; confectionery; ice cream; puddings; sherbets [ices]; coffee-based beverages; brioches; tarts; chocolate; cocoa beverages with milk; cocoa-based beverages; cereal-based snack food; chocolate beverages with milk; petits fours [cakes]; tea; chocolate-based beverages; pastries; fried dough cookies; coffee-based beverage containing milk; ice beverages with a coffee base; ice beverages with a chocolate base; ice beverages with a cocoa base; instant dessert puddings; dessert mousses [confectionery]; ice cream desserts.

Class 32: Beer; mineral and aerated waters; fruit-based beverages; juices; syrups for beverages; sherbets [beverages]; fruit nectars, non-alcoholic; non-alcoholic fruit juice beverages; smoothies; fruit-flavoured beverages; beer-based beverages; non-carbonated soft drinks; fruit flavored soft drinks; iced fruit beverages; flavoured waters; flavored beers; flavoured mineral water; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea; coffee-flavored beer.

Class 35: Commercial administration of the licensing of the goods and services of others; administration of the business affairs of franchises; administration of the business affairs of retail stores; business project management; management of business projects [for others]; business consultation and management regarding launching of new products; business advice and consultancy relating to franchising; business management advisory services relating to franchising; business administration; business management consultancy; advisory services relating to business planning; advisory services for business management; business advisory services relating to the running of restaurants; on-line ordering services in the field of restaurant take-out and delivery.

Class 43: Serving food and drinks; ice cream parlour services; café services; hotel services; services for providing food and drink; food and drink catering; bar services; snack-bar services; self-service restaurant services; take-out restaurant services; take-away food and drink services.

2. European Union trade mark application No 18 091 712 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 18 091 712 for the word mark ‘WE LOVE PURO’. The opposition is based on, inter alia, European Union trade mark registration No 11 784 154 for the figurative mark and European Union trade mark registration No 14 612 477 for the figurative mark . The opponent invoked Articles 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 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 European Union trade mark registrations No 11 784 154 and No 14 612 477.

a) The goods and services

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

European Union trade mark registration No 11 784 154 for the figurative mark

Class 9: Compact discs, DVDs and other digital recording media.

Class 25: T-shirts for merchandising.

Class 33: Alcoholic beverages (except beers), wine.

Class 35: Advertising; business management; business administration; office functions, retailing and sale via global computer networks of merchandise (pencils, key rings, drinking glasses, cups, badges, handbags, stickers, ball-point pens, posters), import-export, business representation.

Class 41: Education; providing of training; entertainment; sporting and cultural activities, publication of music and music recording, production of musical recordings, production of entertainment in the form of audio recordings, live musical concerts, providing of entertainment in the form of live musical performances, directing of musical shows, artistic management of musical shows, nightclubs, discotheques.

Class 44: Medical services; hygienic and beauty care and treatments for human beings or animals; beauty care for human beings, providing of hot tub facilities, solariums, providing of saunas, consultancy relating to beauty treatments.

European Union trade mark registration No 14 612 477 for the figurative mark

Class 35: Advertising; Business management; Business administration; Office functions, retailing and sale via global computer networks of merchandise (pencils, key rings, drinking glasses, cups, badges, handbags, stickers, ball-point pens, posters), import-export, business representation.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Music publishing and music recording services; Production of musical recordings; Production of entertainment in the form of sound recordings; Live musical concerts; Services providing entertainment in the form of live musical performances; Directing of musical shows; Artistic management of musical shows; Club [discotheque] services; Discotheque services.

Class 43: Services for providing food and drink; Temporary accommodation, resort hotels, booking of hotels via the internet, accommodation in hotels, accommodation in tourist resorts, hospitality and catering, rental of rooms as temporary accommodation, rental of meeting rooms, catering for hospitality suites.

The contested goods and services are the following:

Class 29: Fruit jellies; marmalade; drinks made from dairy products; chilled dairy desserts; dairy-based whipped topping; yoghurt; milk beverages, milk predominating; almond milk; almond milk-based beverages.

Class 30: Artificial coffee; cocoa; coffee; sponge cakes; confectionery; ice cream; sugar; puddings; sherbets [ices]; coffee-based beverages; brioches; honey; tarts; chocolate; caramels [candy]; cocoa beverages with milk; cake powder; powders for making ice cream; vegetal preparations for use as coffee substitutes; cocoa-based beverages; cereal-based snack food; chocolate beverages with milk; petits fours [cakes]; tea; chocolate-based beverages; binding agents for ice cream; pastries; frosting mixes; frozen brownie dough; biscotti dough; fried dough cookies; brownie dough; pizza crust; coffee-based beverage containing milk; sweetmeats [candy]; preparations for making bakery products; cake mixes; ice beverages with a coffee base; ice beverages with a chocolate base; ice beverages with a cocoa base; instant dessert puddings; dessert mousses [confectionery]; foodstuffs made of sugar for sweetening desserts; ice cream desserts.

Class 32: Beer; mineral and aerated waters; fruit-based beverages; juices; syrups for beverages; sherbets [beverages]; fruit nectars, non-alcoholic; non-alcoholic fruit juice beverages; non-alcoholic preparations for making beverages; smoothies; fruit-flavoured beverages; beer-based beverages; non-carbonated soft drinks; fruit flavored soft drinks; iced fruit beverages; flavoured waters; flavored beers; flavoured mineral water; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea; coffee-flavored beer.

Class 35: Commercial administration of the licensing of the goods and services of others; administration of the business affairs of franchises; administration of the business affairs of retail stores; business project management; management of business projects [for others]; business consultation and management regarding launching of new products; business advice and consultancy relating to franchising; business management advisory services relating to franchising; business administration; business management consultancy; advisory services relating to business planning; advisory services for business management; business advisory services relating to the running of restaurants; on-line ordering services in the field of restaurant take-out and delivery.

Class 43: Serving food and drinks; ice cream parlour services; café services; hotel services; services for providing food and drink; food and drink catering; bar services; snack-bar services; self-service restaurant services; take-out restaurant services; take-away food and drink services.

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.

Furthermore, contrary to the applicant’s argument, 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 this comparison, since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

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 Classes 29 and 30

The opponent’s services for providing food and drink in Class 43 mainly cover restaurant services or similar services, such as catering, cafeterias and snack bars. These services are intended for serving food and drinks directly for consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient to find a similarity between them (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010‑4, THAI SPA / SPA et al., § 24-26).

Nevertheless, in certain situations these goods and services can be 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 the responsibility for the production of those goods or the provision of those services lies with the same undertaking.

Consumers may think that responsibility lies with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of these goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in their pubs). In such cases, there is a low degree of similarity.

Therefore, the contested fruit jellies; marmalade; drinks made from dairy products; chilled dairy desserts; dairy-based whipped topping; yoghurt; milk beverages, milk predominating; almond milk; almond milk-based beverages in Class 29 are similar to a low degree to the opponent’s services for providing food and drink in Class 43 (EUTM No 14 612 477) as they usually coincide in producers and distribution channels. Furthermore, they are complementary. A restaurant may cultivate a vegetable/fruit plot and use those goods to make its dishes. It may also make some dishes to take away (for example, fruit jellies, marmalade, etc.). There are also country restaurants which make conserves, place them on shelves by the till and sell them to their customers. The same applies to dairy desserts, toppings, yoghurt and milk beverages, which are often produced and sold by the same undertakings, such as ice cream and yoghurt parlours.

The same applies to the contested artificial coffee; cocoa; coffee; sponge cakes; confectionery; ice cream; puddings; sherbets [ices]; coffee-based beverages; brioches; tarts; chocolate; cocoa beverages with milk; cocoa-based beverages; cereal-based snack food; chocolate beverages with milk; petits fours [cakes]; tea; chocolate-based beverages; fried dough cookies; pastries; coffee-based beverage containing milk; ice beverages with a coffee base; ice beverages with a chocolate base; ice beverages with a cocoa base; instant dessert puddings; dessert mousses [confectionery]. These goods are all similar to a low degree to the opponent’s services for providing food and drink in Class 43 (EUTM No 14 612 477), for the reasons explained above.

However, the contested sugar; honey; caramels [candy]; cake powder; powders for making ice cream; vegetal preparations for use as coffee substitutes; binding agents for ice cream; frosting mixes; frozen brownie dough; biscotti dough; brownie dough; pizza crust; sweetmeats [candy]; preparations for making bakery products; cake mixes; foodstuffs made of sugar for sweetening desserts; ice cream desserts are not similar to the opponent’s services in Class 43. As far as these goods and the opponent’s services in Class 43 are concerned, consumers will not think that responsibility for them lies with the same undertaking; it is not a market reality that the provision of food and drinks and the manufacture of these goods are commonly offered by the same undertaking under the same trade mark. These goods are also not similar to the opponent’s remaining goods and services in Classes 9 (recording media), 25 (clothing), 33 (alcoholic beverages), 35 (business services and retailing of merchandising), 41 (education, entertainment, sporting and cultural activities), 43 (services for providing food and drink; temporary accommodation) and 44 (medical services; hygienic and beauty care). These goods and services have a different nature, a different purpose and a different method of use. They are neither complementary nor in competition. Furthermore, they are not provided by the same undertakings, are distributed through different channels and target a different relevant public.

Contested goods in Class 32

The contested beer; beer-based beverages; flavored beers; coffee-flavored beer are similar to the opponent’s alcoholic beverages (except beers) in Class 33 (EUTM No 11 784 154), as they have the same nature. Moreover, they usually coincide in producers, relevant public and distribution channels.

The contested mineral and aerated waters; fruit-based beverages; juices; syrups for beverages; sherbets [beverages]; fruit nectars, non-alcoholic; non-alcoholic fruit juice beverages; smoothies; fruit-flavoured beverages; non-carbonated soft drinks; fruit flavored soft drinks; iced fruit beverages; flavoured waters; flavoured mineral water; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea are similar to a low degree to the opponent’s services for providing food and drink in Class 43 (EUTM No 14 612 477), as explained above, as they usually coincide in producers and distribution channels. Furthermore, they are complementary.

The contested non-alcoholic preparations for making beverages are dissimilar to all the opponent’s goods and services, including the goods in Class 33 as the contested goods are not beverages but preparations for producing non-alcoholic beverages and beer, while the opponent’s goods in Class 33 are final products, namely alcoholic beverages. Therefore, the contested goods are dissimilar to all the opponent’s goods in Classes 9 (recording media), 25 (clothing), 33 (alcoholic beverages), 35 (business services and retailing of merchandising), 41 (education, entertainment, sporting and cultural activities), 43 (services for providing food and drink; temporary accommodation) and 44 (medical services; hygienic and beauty care), as they have a different nature, purpose and method of use. They are neither in competition nor complementary. Furthermore, they are not provided by the same undertakings, are distributed through different channels and target a different relevant public.

Contested services in Class 35

The contested commercial administration of the licensing of the goods and services of others; administration of the business affairs of franchises; administration of the business affairs of retail stores; business project management; management of business projects [for others]; business consultation and management regarding launching of new products; business advice and consultancy relating to franchising; business management advisory services relating to franchising; business administration; business management consultancy; advisory services relating to business planning; advisory services for business management; business advisory services relating to the running of restaurants are all included in one of the broad categories of the opponent’s business management or business administration (EUTM No 14 612 477). Therefore, these services are identical.

The contested on-line ordering services in the field of restaurant take-out and delivery are considered a business intermediary service. On the other hand, the opponent’s office functions (EUTM No 14 612 477) are intended to provide active help with the internal day-to-day operations of other undertakings, including the administration and support services in the ‘back office’, for example compilation of information in computer databases and administrative processing of purchase orders. These services are similar, as they have the same purpose, namely the proper running and success of an undertaking. They are addressed to the same public and are offered by the same kind of specialised undertakings.

Contested services in Class 43

The contested serving food and drinks; ice cream parlour services; café services; hotel services; services for providing food and drink; food and drink catering; bar services; snack-bar services; self-service restaurant services; take-out restaurant services; take-away food and drink services are all included in one of the broad categories of the opponent’s services for providing food and drink or temporary accommodation (EUTM No 14 612 477). Therefore, these services are identical.

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 goods and services found to be identical or similar (to varying degrees) are directed at the public at large and at a professional public with specific knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

(1) (2)	WE LOVE PURO
Earlier trade marks	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 element ‘PURO’, common to all the signs, is meaningful in certain languages, for example in Italian, Portuguese and Spanish, where it means ‘pure, clean, flawless, free of pollutants’, and therefore has a low degree of distinctiveness in relation to the relevant goods and services. However, in Finnish, ‘PURO’ means ‘a stream, a brook’ and has a normal degree of distinctiveness. Furthermore, this element is not meaningful in other languages, such as Dutch or English. It is not likely that this verbal element will be associated with ‘pure’ in these languages. The last letter, ‘o’ (instead of ‘e’ in English), has a major impact in this short word and makes it fanciful, while in Dutch ‘puro’ is far removed from the equivalent word ‘puur’.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-, English- and Finnish-speaking part of the public, for whom ‘puro’ is either meaningless or has no direct relation to the goods and services concerned, and is therefore distinctive.

The applicant argues that the verbal element ‘PURO’ is descriptive because it is commonly used in commercial practice and appears in many EUTM registrations, but no evidence was submitted to support this claim. With regard to possible trade mark registrations containing the word ‘PURO’, it must be noted 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. As such, mere trade mark registrations do not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘PURO’. Under these circumstances, in the absence of any evidence, the applicant’s claim must be set aside.

The verbal elements ‘WE LOVE’ in the contested sign will be understood by the entire relevant public as ‘having a strong attachment to, like or enjoy very much’, as this will immediately be perceived as a laudatory statement referring to the word ‘PURO’ that follows. For the contested goods and services, these words are less distinctive than the word ‘PURO’.

The verbal element ‘OASIS URBANO’ in earlier mark (2) will be perceived by the relevant public who is familiar with English as ‘a pleasant place or situation in a town or city’ (as ‘URBANO’ is close to the English equivalent ‘urban’). It has a normal degree of distinctiveness in relation to the relevant services. However, as it is significantly smaller than the verbal element ‘PURO’ and is placed underneath that element, it is less eye-catching than the verbal element ‘PURO’, which is dominant.

The contested sign is a word mark. The word as such is protected. Therefore, it is irrelevant, for the purposes of the comparison, whether it is written in upper- or lower-case letters.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in the verbal element/sound ‘PURO’, which constitutes the entirety of earlier mark (1) and the dominant and first element of earlier mark (2), and is fully reproduced as the most distinctive element in the contested sign.

The signs differ in the additional elements/sounds ‘WE LOVE’ in the contested sign, which is however less distinctive, and the additional words/sounds ‘OASIS URBANO’ in earlier mark (2). However, the latter additions in earlier mark (2) are less eye-catching and might not even be pronounced. The signs also differ visually in the slight stylisation of the earlier marks, although it is not unusual and merely decorative.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, part of the relevant public (i.e. the Finnish-speaking public) will associate the signs with a similar meaning on account of the element ‘PURO’. Therefore, for this part of the relevant public, the signs are conceptually similar to at least an average degree.

For the remaining part of the relevant public, although the public in the relevant territory will perceive the meaning of the contested sign (‘WE LOVE’) and of earlier mark (2), the signs are not conceptually similar.

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 marks

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

According to the opponent, the earlier marks have been extensively used, which might imply that they enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, neither of the earlier trade marks as a whole has any relevant meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier marks have an average degree of distinctiveness. The relevant public is the public at large and a professional public. The degree of attention varies from average to high.

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar.

The signs are visually and aurally similar to at least an average degree. Conceptually, they are similar to at least an average degree for part of the relevant public, and not similar for another part of the relevant public.

As the most important element of the earlier marks is fully included as the most distinctive element of the contested sign, the relevant public might be led to believe that the identical and similar goods and services come from the same or economically linked undertakings. This would also be the case for the goods and services found to be similar only to a low degree, as the low degree of similarity between some of the goods and services is outweighed by the higher degree of similarity between the signs.

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, 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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for the Dutch-, English- and Finnish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 11 784 154 and No 14 612 477. 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 marks.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess a possible enhanced degree of distinctiveness of the opposing marks due to their extensive use in relation to goods that are identical and similar (to varying degrees) . The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess a possible enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 4 934 303 for the figurative mark , registered for services in Classes 35 and 43.

 European Union trade mark registration No 9 661 331 for the word mark ‘Puro Beach’, registered for services in Classes 41, 42 and 43.

 European Union trade mark registration No 11 784 147 for the figurative mark , registered for goods and services in Classes 9, 25, and 41.

 European Union trade mark registration No 9 661 307 for the word mark ‘Puro Hotel’, registered for goods and services in Classes 16, 35, 36, 37, 39, 41, 42, 43 and 45.

Since these marks are less similar to those that have been compared (because they contain additional verbal and/or figurative elements) and cover the same or a narrower scope of goods and services (EUTM No 4 934 303, EUTM No 11 784 147), the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The other earlier rights invoked by the opponent cover, apart from goods and services already covered by the earlier marks assessed in this case, goods and services in Classes 16 (printed matter), 36 (finance and insurance services), 37 (cleaning services), 39 (transport services) and 42 (scientific, technological, industrial, research and design services), which are clearly different to those applied for in Classes 30 and 33 (preparations for making beverages, sugar, honey, cake mixes, etc). These goods and services have a different nature, purpose, and method of use. They are neither in competition nor complementary. Furthermore, they are not provided by the same undertakings, are distributed through different channels and target a different relevant public. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on the ground under Article 8(1)(a) EUTMR and directed against the remaining goods, 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

Marzena MACIAK

Saida CRABBE

Chantal VAN RIEL

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.