OPPOSITION No B 3 108 052

Carlos Olmedo Sánchez, Calle Linaje, 2, 29001 Málaga, Spain (opponent), represented by Segura & Maclean S.L., Calle Linaje, 2, 3º Izquierda, 29001 Málaga, Spain (professional representative)

a g a i n s t

Kauai Juice (Pty) Ltd., Ground Floor, West Tower, Canal Walk, Century City, 7441 Cape Town, South Africa (applicant), represented by Ladas & Parry LLP, Temple Chambers, 3‑7 Temple Avenue, London EC4Y 0DA, United Kingdom (professional representative).

On 21/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 052 is upheld for all the contested services, namely:

Class 43: Catering services; restaurants; cafes; cafeterias; canteens; sandwich shops; snack bars; take-away food services.

2. European Union trade mark application No 18 111 619 is rejected for all the contested services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 07/01/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 111 619 ‘KAUAI’ (word mark), namely against all the services in Class 43. The opposition is based on Spanish trade mark registration No 3 708 661 (figurative mark). 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.

a) The services

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

Class 43: Services for providing food and drink.

In its observations, the applicant claimed that the services had not been translated into the language of the proceedings in the notice of opposition. However, it is acceptable if the goods and services on which the opposition is based have been translated in documents attached to the notice of opposition, or submitted later within the time limit, in order to substantiate the opposition. In this case, the services covered by the earlier mark were translated in the observations filed together with the notice of opposition. The opponent translated the abovementioned services as ‘Services for providing food and drink’, which, contrary to the applicant’s opinion, is a valid translation for ‘Servicios de restauración’.

The contested services are the following:

Class 43: Catering services; restaurants; cafes; cafeterias; canteens; sandwich shops; snack bars; take-away food services.

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.

The contested catering services; restaurants; cafes; cafeterias; canteens; sandwich shops; snack bars; take-away food services are all included in the opponent’s broad category of services for providing food and drink. Therefore, they are identical. Contrary to the applicant’s view, the verbal element ‘BAR’, included in the earlier trade mark, is irrelevant for the purposes of the comparison between the conflicting services, since the similarity or dissimilarity must be determined on an objective basis and without taking into account the signs.

b) Relevant public – degree of attention

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

In the present case, the services found to be identical are directed at the public at large and the degree of attentiveness will be average.

c) The signs

	KAUAI
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier sign comprises the verbal components ‘BAR’ and ‘KAÜAI’, depicted in different sized fonts, and a figurative element depicting a mermaid in front of the sea, where a wave and the sun are also visible. All the components of this sign are depicted in blue. The figurative element of the earlier trade mark overshadows the verbal elements of the mark by virtue of its central position and size. Therefore, it is the visually dominant element of the earlier trade mark, as the applicant correctly stated.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element ‘BAR KAÜAI’ has more impact on the consumer than the figurative element.

The verbal component ‘KAÜAI’ of the earlier trade mark is not meaningful for most of the Spanish public. However, for part of the Spanish public, it would be associated with the name of the volcanic island in Hawaii, ‘KAUAI’. Nevertheless, it is distinctive for the relevant services, as it does not relate to them or their characteristics. The umlaut over the letter ‘U’ is practically imperceptible and of a purely decorative nature, since its use in this letter combination does not follow any Spanish grammatical rule. In Spanish, the umlaut is only used to indicate that the letter ‘u’ should be pronounced in the letter combinations ‘gue’ and ‘gui’.

The verbal component ‘BAR’ will be understood by the relevant public as an establishment where food and drinks are provided and, therefore, is non-distinctive for the relevant services.

The contested sign is a word mark, ‘KAUAI’. As previously indicated, this verbal element will be understood by part of the public as the name of the volcanic island in Hawaii, while it may have no meaning for another part of the public. Nevertheless, it is distinctive for the relevant services.

Visually, the marks coincide in the distinctive verbal element ‘KAUAI’, irrespective of the umlaut over the letter ‘U’ of the earlier trade mark, which is practically imperceptible. This is the only element of the contested mark and plays an independent and distinctive role in the earlier trade mark. They differ in the verbal component ‘BAR’, the figurative element and colour of the earlier trade mark. Therefore, the marks are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘KAUAI’, present identically in both signs. Contrary to the applicant’s view, the umlaut over the letter ‘U’ is irrelevant in the way the relevant public will pronounce the verbal elements. As previously indicated, in Spanish the umlaut is only used to indicate that the letter ‘u’ should be pronounced in the letter combinations ‘gue’ and ‘gui’ and, therefore, has no impact when comparing the pronunciation of the verbal elements ‘KAUAI’ and ‘KAÜAI’.

The pronunciation differs in the verbal component ‘BAR’ of the earlier mark (one syllable), if indeed it is pronounced at all, due to its very small font. It has no counterpart in the contested sign. In this regard, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43‑44) and that they tend to shorten marks containing several words.

Therefore, the signs are aurally similar to a high degree, or even identical if ‘BAR’ is not pronounced.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As regards the verbal element ‘KAUAI’, for the part of the public that identifies it as the name of the volcanic island in Hawaii, the signs will be associated with the same meaning, which is not altered by the other elements of the earlier sign. Therefore, they are conceptually similar to an average degree.

For the part of the public for which the word ‘KAUAI’ is not meaningful, since only the earlier mark has a meaning, the signs are conceptually not 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 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence the non-distinctive element ‘BAR’ in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The services are identical. The degree of attention of the relevant public, which is the public at large, will be average, and the earlier mark enjoys a normal degree of distinctiveness.

The signs are visually, aurally and conceptually similar to the degrees explained above, on account of the coinciding and distinctive verbal component ‘KAUAI’. The differences between the marks are limited to elements that have less impact on consumers (i.e. the colour, the figurative elements, the umlaut over the letter ‘U’ of the earlier trade mark and the non-distinctive element ‘BAR’). Therefore, they are not sufficient to outweigh the similarities of the element ‘KAUAI’.

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, in this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark (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 on the relevant public and, therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 708 661. It follows that the contested trade mark must be rejected for all the contested services.

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

Begoña URIARTE VALIENTE

Fernando AZCONA DELGADO

Loreto URRACA LUQUE

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.