OPPOSITION No B 2 370 578

Mister Kebap S.L., Centro Comercial La Marina 3, 03509 Finestrat (Alicante), Spain (opponent), represented by Vanessa Peris Lull, C/ Marqués de Campo, 66, 10 A, 03700 Denia, Spain (professional representative)

a g a i n s t

Mr. Kebab s.r.o., Popradská 68, 040 11 Košice-západ, Slovakia (applicant), represented by Ivan Regina, Plzenská 15, 040 11 Košice, Slovakia (professional representative).

On 28/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 370 578 is partially upheld, namely for the following contested goods and services:

Class 29: Pork; bouillon; onions; potato chips; poultry, not live; fermented vegetable-based foods; sausages; croquettes; black pudding, blood sausage; meats; pickled vegetables; salted foods; crystallised, preserved, frozen and frosted fruits; tomato purée; foodstuffs prepared from meat products; salted foodstuffs; fruit salads, vegetable salads; charcuterie; dried and cooked vegetables.

Class 30: Tea, in particular iced tea; chocolate, chocolate drinks; bread; pastries; coffee substitutes, coffee-based beverages; petits fours [cakes]; farinaceous foods; unleavened bread; pancakes; sandwiches; tarts; cakes; buns.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 43: Preparation and home delivery of meals made to order and street food; restaurants and restaurant services; fast food, snack bars.

2. Community trade mark application No 12 551 214 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 551 214, namely against all the goods and services in Classes 29, 30, 32 and 43. The opposition is based on Spanish trade mark registration No 2 660 101. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

Following a limitation in the opponent’s observations dated 20/11/2014, the services on which the opposition is based are the following:

Class 43: Restaurant services (feeding); cafeterias; fast food restaurants (snack-bar); franchising of hotels and boarding houses, restaurants and other establishments providing food and drink for consumption.

The contested goods and services are the following:

Class 29: Pork; bouillon; onions; potato chips; poultry, not live; fermented vegetable-based foods; sausages; croquettes; black pudding, blood sausage; meats; pickled vegetables; salted foods; olive oil; crystallised, preserved, frozen and frosted fruits; tomato purée; foodstuffs prepared from meat products; salted foodstuffs; fruit salads, vegetable salads; charcuterie; dried and cooked vegetables; piccalilli.

Class 30: Sugar; candy; tea, in particular iced tea; chocolate, chocolate drinks; dressings for salad; mustard; bread; condiments; pastries; curry spices; coffee substitutes, coffee-based beverages; ketchup [sauce]; petits fours [cakes]; seasonings, spices; meat gravies; farinaceous foods; unleavened bread; sauces (condiments); pancakes; cake mixtures; essences for foodstuffs; sandwiches; soya sauce; meat gravies; tarts; cakes; buns.

Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 43: Preparation and home delivery of meals made to order and street food; restaurants and restaurant services; fast food, snack bars.

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 29

In accordance with the latest practice of the Office (based on the recent case-law of the Court, see judgment of 12/12/2014, T-405/13, ‘da rosa’, paragraphs 96 and further), the following goods in Class 29, pork; bouillon; onions; potato chips; poultry, not live; fermented vegetable-based foods; sausages; croquettes; black pudding, blood sausage; meats; pickled vegetables; salted foods; crystallised, preserved, frozen and frosted fruits; tomato purée; foodstuffs prepared from meat products; salted foodstuffs; fruit salads, vegetable salads; charcuterie; dried and cooked vegetables are similar to a low degree to the opponent´s restaurants and other establishments providing food and drink for consumption in view of the fact that the goods and services at issue are complementary and can be offered/provided by the same companies through the same channels.

However, this reasoning cannot be applied regarding olive oil; piccalilli. With regard to these, it should be noted that the mere fact that such foodstuffs are consumed in a restaurant is not enough reason to find similarity between them. The consumer is aware that these are manufactured by a different company (see judgment of 09/03/2005, T-33/03, ‘Hai’, paragraph 45 and decision of 20/10/2011, R 1976/2010-4, ‘THAI SPA/SPA et al.’, paragraphs 24-26). Moreover, the opponent did not submit convincing arguments and evidence to support a different conclusion. It follows that these contested goods are dissimilar to the opponent’s services related to provision of food in Class 43.

These contested goods are also dissimilar to the earlier mark’s further services in class 43, as these do not have the same nature. They also do not target the same end users. They are not in competition with or complementary to any of the contested goods. The goods of the contested sign are foodstuffs which will not be provided with franchising services of hotels and boarding houses, restaurants and other establishments providing food and drink for consumption.

Contested goods in Class 30

In accordance with the latest practice of the Office (based on the recent case-law of the Court, see judgment of 04/06/2015, T-562/14, ‘YOO’, paragraphs 25 and further), the following goods in Class 30, tea, in particular iced tea; chocolate, chocolate drinks; bread; pastries; coffee substitutes, coffee-based beverages; petits fours [cakes]; farinaceous foods; unleavened bread; pancakes; sandwiches; tarts; cakes; buns are similar to a low degree to the opponent´s restaurants and other establishments providing food and drink for consumption in view of the fact that the goods and services at issue are complementary and can be offered/provided by the same companies through the same channels.

However, this reasoning cannot be applied regarding sugar; candy; dressings for salad; mustard; condiments; curry spices; ketchup [sauce]; seasonings, spices; meat gravies; sauces (condiments); cake mixtures; essences for foodstuffs; soya sauce; meat gravies. With regard to these, it should be noted that the mere fact that such foodstuffs are consumed in a restaurant is not enough reason to find similarity between them. The consumer is aware that these are manufactured by a different company (see judgment of 09/03/2005, T-33/03, ‘Hai’, paragraph 45 and decision of 20/10/2011, R 1976/2010-4, ‘THAI SPA/SPA et al.’, paragraphs 24-26). Moreover, the opponent did not submit convincing arguments and evidence to support a different conclusion. It follows that these contested goods are dissimilar to the opponent’s services related to provision of food in Class 43.

These contested goods are also dissimilar to the earlier mark’s further services in class 43, as these do not have the same nature. They also do not target the same end users. They are not in competition with or complementary to any of the contested goods. The goods of the contested sign are foodstuffs which will not be provided with franchising services of hotels and boarding houses, restaurants and other establishments providing food and drink for consumption.

Contested goods in Class 32

In accordance with the latest practice of the Office (based on the recent case-law of the Court, see judgment of 04/06/2015, T-562/14, ‘YOO’, paragraphs 25 and further, and judgment of 16/01/2014, T-304/12, ‘Absacker’, paragraph 29), the goods in Class 32, mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages are similar to a low degree to the opponent´s restaurants and other establishments providing food and drink for consumption in view of the fact that the goods and services at issue are complementary and can be offered/provided by the same companies through the same channels.

Contested services in Class 43

The contested preparation and home delivery of meals made to order and street food are included in the broad category of the opponent’s restaurant services (feeding). They are, therefore, identical.

The contested restaurants and restaurant services are identical to the opponent´s restaurant services (feeding).

The contested fast food, snack bars are identical to the opponent´s fast food restaurants (snack-bar), as these are synonyms.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

The earlier mark is a figurative mark consisting of the word elements ‘MISTER’ and ‘KEBAP’ written in a bold, slightly stylised, black upper case. These two words are separated by a figurative device composed by a yellow circle which contains a big red upper case letter ‘K’ in its middle and, superimposed on the middle of the latter, a smaller word element, ‘Mr.’, written in slightly stylised white characters.

The contested sign is a figurative mark consisting of the word element ‘Mr.’ written in small, bold, yellow characters, where the ‘M’ is in upper case, and the word element ‘KEBAB’ written in bigger bold, slightly stylised white upper case, where the ‘M’ is in upper case. Both elements are placed on a red rectangular background, the element ‘Mr.’ superimposed on a figurative device resembling a man’s hat and a collar with yellow and black lining.

Visually, the signs coincide in the verbal sequences ‘Mr.’ and ‘KEBA, although represented differently in each sign. Moreover, the signs use a similar combination of colours albeit in different proportions: red, yellow, black and white. The signs also differ in the last letter of the word elements ‘KEBAB’/’KEBAP’, i.e. ‘P’ of the earlier mark versus ‘B’ of the contested sign, in the string of letters ‘M-I-S-T-E-R’ and in the letter ‘K’ within the yellow circle, present only in the earlier mark. Moreover, they differ in their respective figurative devices and in their stylisation.

Aurally, as it is general knowledge that the title ‘Mr.’ stands for ‘MISTER’, the contested sign will be pronounced /MIS-TER/-/KE-BAB/. Taking into account that the element ‘Mr. K’, present in the earlier mark is not likely to be pronounced as it will merely be perceived as an abbreviated illustration of the wording ‘MISTER KEBAP’, the earlier mark will be pronounced /MIS-TER/-/KE-BAP/, albeit it that it cannot be totally excluded that the earlier mark be pronounced /MIS-TER/-/MIS-TER/-/K/-/KE-BAP/ or /MIS-TER/-/K/-/MIS-TER/-/KE-BAP/ or even /MIS-TER/-/KE-BAP/-/MIS-TER/-/K/.

It follows that for the vast majority of the public the signs are almost identical aurally in their verbal elements ‘MISTER KEBAB/P’, taking further into account that the last syllables ‘BAP’ and ‘BAB’ are pronounced in an almost identical way, given that both words end in bilabial consonants that are formed and articulated in a very similar manner. The signs differ aurally only to the extent that the earlier mark should be pronounced MIS-TER/-/MIS-TER/-/K/-/KE-BAP/ or /MIS-TER/-/K/-/MIS-TER/-/KE-BAP/ or even /MIS-TER/-/KE-BAP/-/MIS-TER/-/K/ which is considered unlikely. In any event, even in this case, the signs remain similar in their verbal elements ‘MISTER KEBAB/P’.

Conceptually, the elements ‘KEBAP’ and ‘KEBAB’ of the signs will both be perceived as referring to ‘pieces of meat roasted on a skewer’ (see dictionary ‘Real Academia Española’ online, http://buscon.rae.es/drae/, and Oxford English Dictionary, www.oed.com), despite the fact that the correct Spanish spelling of the name of this dish is with the final letter ‘B’.

The element ‘Mr.’ present in both signs is short for the English word ‘MISTER’ which also appears in the earlier mark and both elements refer to a ‘title prefixed to the surname or first name of a man’ in the English language (Oxford English Dictionary, www.oed.com). Both elements form part of the basic English vocabulary and have found their way in Spanish where they are used to refer to the winner of a beauty contest and, colloquially, to identify a sports trainer, in particular a football trainer (See Real Academia Española online: http://buscon.rae.es/drae/).

Consequently, despite the different spellings, the signs have the same semantic content to the extent that they both refer to the same male title and the same dish, and when taken as a whole, to the winner of a culinary contest involving kebabs or to the best producer of kebabs.

In view of the foregoing, the figurative device of the earlier sign with the wording ‘Mr. K’ will be seen as an abbreviated illustration of the words ‘MISTER KEBAP’.

The figurative device of the contested sign will be seen, at least by a part of the relevant public, as a man’s hat and a collar, which may be seen as reinforcing the meaning of the word element ‘Mr.’. For the remaining part of the relevant public, these elements will be meaningless graphic elements of a decorative nature.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

‘KEBAP’ in the earlier mark and ‘KEBAB’ in the contested sign will be perceived as indications of the type of goods the services in Class 43 relate to and, in addition, in combination with the words ‘Mister’ in the earlier mark and ‘Mr.’ in the contested sign, the elements ‘Mister KEBAP’ and ‘Mr. KEBAB’ may be perceived as referring to the winner of a culinary contest involving kebabs or to the best producer of kebabs. Therefore, these elements are weak as a whole in relation to the respective services in Class 43 and, hence, the distinctive character of the marks, in relation to those services, proceeds from the combination of said elements with the remaining elements of the signs at issue, namely the graphic and figurative elements.

Likewise, the word ‘KEBAB’ in the contested sign will be understood by the Spanish public as referring to ‘pieces of meat roasted on a skewer’. Therefore, this term is descriptive of some of the goods in Class 29, namely pork; poultry, not live; sausages; black pudding, blood sausage; meats; salted foods; foodstuffs prepared from meat products; salted foodstuffs; charcuterie. Regarding the remaining goods in Class 29 and the goods in Classes 30 and 32, whereas ‘Mr.’ will still be perceived in combination with ‘KEBAB’ as a laudatory element referring to the winner of a culinary contest involving kebabs or to the best producer of kebabs, it remains that the word ‘KEBAB’ is the distinctive verbal element (the figurative elements being comparatively rather decorative).

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 in relation to any of the goods and services at hand from the perspective of the public in the relevant territory due in particular to the presence of the elements ‘Mr. K’ and the figurative elements of the sign. In view of the latter, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the weak element ‘Mister KEBAP’ in the mark as stated above in section c) of this decision.

5. Relevant public – level 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 level 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 and the goods found to be similar to a low degree are directed at the public at large whose level of attention is deemed average.

6. 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” (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraphs 22 and further.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraphs 17 and further.).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their minds. It should also be borne in mind that the average consumers’ level of attention is likely to vary according to the category of goods or services in question (see judgment of 22/06/1999, C‑342/97, ‘Lloyd’, paragraph 26).

The contested services are identical whereas the contested goods are partly similar to a low degree and partly dissimilar. The earlier sign is distinctive to a normal degree despite the presence of some weak or descriptive element.

The verbal elements ‘MISTER’ and ‘Mr.’ are variations of the same term and are referred to or pronounced by the relevant public in the same way, ‘mister’, despite the visual differences in the additional letters which make the earlier sign longer. This entails that the signs share the same semantic concept as, despite the visual differences, they will be perceived merely as or including ‘MISTER KEBAP’ and as ‘MISTER KEBAB’, respectively. Taking further into account that the phonetic difference in the last letters is practically unnoticeable on account of the fact that the two consonants ‘P’ and ‘B’ are formed and articulated in a very similar way which makes them easy to mistake one for the other, the signs are aurally similar as well. Therefore, the signs make a very similar overall impression on the relevant consumer.

With regard to the graphical and figurative elements of the signs at issue, they do not detract attention from the verbal components and it should be noted that when a mark consists of both word and figurative components, such as in this case, the word 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 most readily refer to a sign by its verbal component. Therefore, in the case at hand, that the similarity between the signs should lie precisely in the word components of the signs is of utmost relevance and such despite the fact that they are not particularly distinctive.

In addition, it cannot be ignored that even the graphical stylisations of the signs present also certain similarities, such as the use of the colours black, white, yellow and red and the similar stylisation of the word elements ‘MISTER KEBAP’ in the earlier mark and ‘KEBAB’ of the contested sign.

In its observations, the applicant argues that there are many trade marks that include the element ‘KEBAP’ or ‘KEBAB’. In support of its argument the applicant refers to a number of trade mark registrations in Spain and in the European Union which contains such words.

First of all, it should be stressed again that the signs at issue are not only similar in the words ‘KEBAP’ and KEBAB’. Indeed, the similarities go further than the mere reference to the same dish as, apart from the use of the colours black, white, yellow and red and the similar stylisation of the word elements, both signs use these words in association with the same concept (title) in order to create an expression which will be perceived by the relevant public as referring the winner of a culinary contest involving kebabs or to the best producer of kebabs.

Moreover, the Opposition Division notes 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 data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘KEBAP’ or ‘KEBAB’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also argues that its trade mark is already in use and filed various pieces of evidence to substantiate this claim. In this respect, it should be noted that the right to a Community trade mark begins on the date when said mark is filed and not before, and from that date on the mark has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the contested sign falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the contested sign are irrelevant because the rights of the opponent, insofar as they predate the contested sign, are earlier than the applicant’s contested sign.

To sum up, it is considered that the high degree of aural similarities between the signs and the fact that they have the same semantic concept and also share certain visual similarities is enough to counteract the dissimilarities deriving from the remaining graphical features. It is likely, therefore, that the relevant public might think that the goods and services provided under the conflicting marks come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark. In view of the principle of interdependence, whereby a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services and vice versa, the Opposition Division considers that the contested trade mark must also be rejected for the contested goods found to be similar to a low degree to some of the opponent´s services in Class 43 despite the weak character of the elements ‘Mister KEBAP’ and ‘Mr. KEBAB’. Indeed, for the consumers, the signs refer to the same semantic concepts in these elements. In view of this and taking into account the principle of imperfect recollection, as explained above, the Opposition Division considers that likelihood of confusion, including the likelihood of association, cannot be safely excluded in relation to these goods.

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Pedro JURADO MONTEJANO

Martina GALLE

Catherine MEDINA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.