OPPOSITION Nо B 3 115 315

 

The Pirate's Candies Company SAS, 138 avenue Vega, BP 42, 83310 Grimaud, France (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative) 

 

a g a i n s t

 

Csányi Karin, Haris Köz 4. 2.em 3., 1052 Budapest, Hungary (applicant).

On 13/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 115 315 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 159 300 is rejected in its entirety.

 

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

 

REASONS

 

On 03/04/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 159 300 . The opposition is based on, inter alia, French trade mark registration No 4 534 667, 'THE PIRATE'S CANDIES'. 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.

 

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 French trade mark registration No 4 534 667.

 

a) The goods and services

 

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

 

Class 30: Confectionery.

Class 35: Presentation of goods on all means of communication for retail purposes, retail services for confectionery.

The contested services are the following:

Class 35: Retail services in relation to confectionery; wholesale services in relation to confectionery.

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.

Retail services in relation to confectionery are identically contained in both lists of services (including synonyms).

The contested wholesale services in relation to confectionery are similar to the opponent's retail services for confectionery as they have the same purpose and nature. They usually coincide in provider.

 

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 or similar are directed at the public at large and also at the public with professional knowledge and expertise. 

 

The degree of attention is average.

 

c) The signs

 

THE PIRATE'S CANDIES
Earlier trade mark	Contested sign

 

The relevant territory is France.

 

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 mark is a word mark. The contested mark is a figurative mark.

The element THE in both marks can be either seen as misspelling of the French word THÉ, referring to the tea beverage or is more likely seen as a determiner used in the English language since it is a basic English term. The word is distinctive.

The word PIRATE in the contested sign refers to pirates, persons who commit piracy. This word is present in French and is also a commonly known English word for the relevant public.

The word PIRATE'S in the earlier mark is perceived also with the same meaning notwithstanding the apostrophe and additional letter S, or in addition, as an English word referring to the same concept as mentioned above, in possessive case. The words PIRATE'S and PIRATE are distinctive in relation to the services.

The word CANDIES is either perceived as a misspelling of the French word CANDI, CANDIE, which makes reference to a type of sugar or sugarcoated sweet, or it is perceived as a commonly known English word for sweets, in plural. The same applies for the word CANDY in the contested sign. Considering the services, which refer to the sales of confectionery, these words in both marks are to be considered non-distinctive.

The word SHOP in the contested mark is perceived as a commonly known English word for the sales establishment, it is also used in French as a loan word, and in the present case is considered to be non-distinctive, considering the sales services at hand.

The depiction of the pirate's scull and the crossed sword and a candy stick is perceived with the same meaning as the respective PIRATE word, as they merely reinforce one and another. The candy stick is non-distinctive, while the image as a whole has a normal level of distinctiveness.

The earlier mark as a whole is perceived as a simple English expression, making reference to sweets manufactured by or belonging to a pirate, while the contested sign makes reference to either a shop selling such sweets or to a sweets shop that belongs to a pirate, both expressions being understood by the relevant public.

The ribbon underneath the words in the contested sign is a mere embellishment and lacks any distinctive character.

The contested sign has no element that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, such as the contested sign, 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).

Visually, the signs coincide in the word elements THE PIRATE_ _ CAND_ . However, they differ in the elements 'S (of the word PIRATE'S), IES/y (Candies/Candy), SHOP and the figurative elements and stylisation of the contested mark. The words CANDIES/CANDY and SHOP were found non-distinctive. In the case of word marks, it is the word that is protected, not its written form.

Furthermore, the consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the syllables THE and in the letters PIRATE’S/ PIRATE and CANDIES/CANDY, which will be pronounced in a highly similar if not identical way taking into account that the French public is not likely to pronounce the possessive ’S in the earlier mark nor the final ES in CANDIES. Indeed, the possessive ’S could be perceived as a French plural and these are generally not pronounced in French. Moreover, the word CANDIES will be pronounced as CANDY. The pronunciation differs in any event in the sound of the word SHOP, of the contested mark. However, as this word, together with the words CANDIES/ CANDY were found non-distinctive, they do not materially affect this comparison.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will coincide in the concepts referring to sweets (however found non-distinctive) and the pirate, while the remaining or differing elements were found non-distinctive, the signs are conceptually highly 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. As indicated above, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

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 of a non-distinctive element 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 earlier mark and the contested sign have been found to be visually similar to at least a low degree, and aurally and conceptually highly similar. The marks coincide in their beginnings THE PIRATE’S/ THE PIRATE, and both refer conceptually to sweets of a pirate or, in the case of the contested sign, to a shop selling such sweets. The remaining word elements CANDIES /CANDY SHOP are considered to be non-distinctive. The contested sign’s figurative element depicting a pirate’s scull merely reinforces the concept of a pirate expressed in words. The differences between the marks originate mostly from the non-distinctive elements, and therefore the consumer will focus on the common distinctive elements referring to the pirate, and will associate the signs. 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 similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting services, which are identical or similar, come 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 534 667. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right, French trade mark registration No 4 534 667, leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

 

 

Martina GALLE

Erkki MÜNTER

Félix ORTUÑO LÓPEZ

 

 

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.