OPPOSITION No B 2 429 234

Pret A Manger (Europe) Limited, 1 Hudson's Place, London SW1V 1PZ, United Kingdom (opponent), represented by Dehns, St Bride's House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative)

a g a i n s t

Westbridge Foods Limited, Polonia House, Enigma Commercial Centre, Sandy's Road, Malvern, Worcestershire WR14 1JJ, United Kingdom (applicant), represented by Novagraaf UK., Suite 8b Lowry House 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative).

On 25/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 429 234 is upheld for all the contested goods.

2. Community trade mark application No 13 016 506 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 016 506. The opposition is based on, inter alia, Spanish trade mark registration No 3 091 612. The opponent invoked Article 8(1)(b) CTMR in relation to this earlier right. In relation to the other rights the opponent also claimed Article 8(1)(b), 8(4) and 8(5) 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.

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 Spanish trade mark registration No 3 091 612.

1. The goods and services

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

Class 29: Meat, fish, seafood, poultry, game and preparations made from the aforesaid; fillings for sandwiches; preparations for sandwiches; preserved, dried and cooked fruits and vegetables; jellies, jams, fruits, fruit salads; preserves; eggs, milk and milk products; edible oils and fats; meat and vegetable extracts; nuts; prepared and cooked meals and snacks; yoghurts; yoghurt drinks; salads; chips and crisps; soups.

Class 30: Coffee; tea; cocoa; sugar; cereals; flour and preparations made from cereals; bread; pretzels; pastry; cakes; buns; biscuits; pastries; cookies; muffins; croissants; couscous; rice; tapioca; sago; chocolate; confectionary; ices and ice creams; honey; treacle; salt; mustard; vinegar; sauces (condiments); salad dressings; spices; mayonnaise; pasta; pasties and pies; sandwiches; wrap sandwiches; puddings; sushi; tarts; prepared and cooked meals and snacks; popcorn.

The contested goods are the following:

Class 29: Meat, fish, seafood, game and poultry including chicken, turkey, duck and goose; roast chicken and roast chicken products; marinated and/or flavour-coated cooked chicken; food products made from or containing meat, fish, seafood, game and poultry including chicken, turkey, duck and goose; food products containing marinated or flavour-coated meat, fish, poultry and/or game; snack foods made from or containing meat, fish, seafood, game and poultry, including shish kebabs, satays and chicken nuggets; food products made from or containing potatoes; prepared vegetables including peppers, sweetcorn, onion and garlic; prepared meals consisting principally of vegetables; prepared stuffed peppers; tempura; dairy desserts; fruits; fruit desserts; fruit terrines; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption.

Class 30: Food products made from or consisting of flour, cereals, oats, maize, rice, soya, soya bean and/or dough; prepared meals and snack foods; pasta dishes; meat pies, vegetable pies, fruit pies; pasties; pizzas, mini-pizzas, vegetable pizzas; quiches; sweet and savoury tarts; cakes and pastries; salad dressings; dips; sauces (condiments); sauces for meat, fish, seafood, game, poultry vegetables and pasta; desserts and cheesecakes; chocolate desserts; ice cream and ice cream products; spring rolls; vegetable spring rolls; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of certain of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 29

The contested meat, fish, seafood, game and poultry including chicken, turkey, duck and goose; roast chicken and roast chicken products; marinated and/or flavour-coated cooked chicken; food products made from or containing meat, fish, seafood, game and poultry including chicken, turkey, duck and goose; food products containing marinated or flavour-coated meat, fish, poultry and/or game; snack foods made from or containing meat, fish, seafood, game and poultry, including shish kebabs, satays and chicken nuggets; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad categories of the opponent’s meat, fish, seafood, poultry, game and preparations made from the aforesaid and where the opponent’s poultry clearly includes the applicant’s chicken, turkey, duck and goose. Therefore, they are considered identical. It should be noted that while the applicant’s goods are subject to a limitation, the opponent’s specification does not contain one, and therefore the goods listed there cover all instances of such goods, including, but not limited to, frozen, ready to cook and ready for immediate consumption. This observation is valid for all the comparisons in both Class 29 and Class 30.

The contested prepared meals consisting principally of vegetables; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s prepared meals. Therefore, they are considered identical.

The contested fruits; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s fruits. Therefore, they are considered identical.

The contested food products made from or containing potatoes; prepared vegetables including peppers, sweetcorn, onion and garlic; prepared stuffed peppers; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption overlap with the broad categories of the opponent’s preserved, dried and cooked vegetables. This is because all the goods refer to vegetables and different methods in which to prepare and preserve them. Therefore, these lists of goods will share items which are identical, but may also have items which are not. However, since the Opposition Division cannot dissect ex officio the applicant’s goods, they are considered identical.

The contested dairy desserts; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s milk products. Therefore, they are considered identical.

The contested fruit desserts; fruit terrines; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption overlap with the broad categories of the opponent’s preserved, dried and cooked fruits. This is because all the goods refer to fruits and different methods in which to prepare and preserve them. Therefore, these lists of goods will share items which are identical, but may also have items which are not. However, since the Opposition Division cannot dissect ex officio the applicant’s goods, they are considered identical.

The contested tempura; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption (given that it is in Class 29 and not Class 30) refers to a frozen prepared meal consisting of meat, fish or vegetables coated in tempura flour. The meal may then be either partially precooked or not. It is included in the broad category of the opponent’s prepared meals. Therefore, they are considered identical.

Contested goods in Class 30

The contested food products made from or consisting of flour, cereals, oats, maize, rice; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are considered identical.

The contested food products made from or consisting of dough; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption includes, as a broader category, the opponent’s bread; pretzels; pastry; cakes; buns; biscuits; pastries; cookies; muffins and pasta, all of which are food products made from dough. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested prepared meals and snack foods; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s prepared meals and snacks. Therefore, they are considered identical.

The contested meat pies, vegetable pies, fruit pies; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s pies. Therefore, they are considered identical.

The contested pasties; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s pasties. Therefore, they are considered identical.

The contested cakes and pastries; cheesecakes; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad categories of the opponent’s cakes and pastries. Therefore, they are considered identical.

The contested salad dressings; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s salad dressings. Therefore, they are considered identical.

The contested sauces (condiments); sauces for meat, fish, seafood, game, poultry vegetables and pasta; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s sauces (condiments). Therefore, they are considered identical.

The contested ice cream; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s ice creams. Therefore, they are considered identical.

The contested pasta dishes; pizzas, mini-pizzas, vegetable pizzas; quiches; sweet and savoury tarts; spring rolls; vegetable spring rolls; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s prepared and cooked meals and snacks. Therefore, they are considered identical.

The contested desserts; chocolate desserts; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are included in the broad category of the opponent’s puddings as it is a synonymous term for desserts. Therefore, they are considered identical.

The contested ice cream products; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are considered to be similar to a high degree to the earlier right’s ice creams. The goods are likely to be produced by the same manufacturers, target the same customers via the same distribution channels and are likely to be used in combination.

The contested food products made from or consisting of soya, soya bean; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are, being in Class 30, considered to be similar to the earlier right’s preparations made from cereals. The earlier goods are food products based on soya beans which are a species of legume. Soya is high in protein, fats and is gluten free and can, and is, made into flour, amongst other items. It is widely used in preparations made of flour such as breads, cakes, etc. Consequently whilst having a different nature, these goods have the same purpose, can target the same end users via similar distribution channels and are interchangeable, in competition with one another and can be used in combination.

The contested dips; all the aforesaid goods being frozen and ready to cook or to defrost prior to, and therefore not immediately available for, consumption are similar to the opponent’s sauces (condiments); mustard and mayonnaise. The nature is the same, because they can have the same ingredients and are both liquid/semi-solid foods. Furthermore, the purpose of the goods is the same, namely to act as a complement for foods to add to the flavour. They may be produced by the same producers and sold via the same distribution channels.

2. The signs

PRET	APÉRO ’PRÊT
Earlier trade mark	Contested sign

The relevant territory is Spain.

Visually, the signs are similar to the extent that they coincide in the letters ‘P-R-E-T’ which form a four letter verbal element ‘PRET’, which is the entirety of the earlier mark and the second word in the contested sign. However, they differ in the other elements of the contested sign namely the word ‘APÉRO’ and the apostrophe that precedes the letter ‘P’ and the circumflex which appears on the ‘E’ of the verbal element ‘PRET’.

Aurally, the pronunciation of the signs coincides in the syllable /PRET/ as the preceding apostrophe and the circumflex will not alter the pronunciation. The pronunciation differs in the syllables /A/PE/RO/, which have no counterparts in the earlier mark.

Conceptually, the element ‘PRET’ (with or without apostrophe and/or circumflex) has no meaning for the relevant public. The element ‘APÉRO’ has no meaning for a part of the relevant public. However, another part of the relevant public will see the Spanish word apero [note: which has no accent] meaning the set of tools used in the process of cultivation of land. (Spanish definition taken from the Real Academia Española online, www.rae.es).

Consequently, for that part of the public which does not associate either sign with a meaning and since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, for that part of the public which associates one of the signs with a meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, 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.

The marks under comparison have no elements which could be considered clearly more distinctive or 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 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. 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 identical or similar to various degrees are directed at the public at large. The degree of attention will be average as the goods are frequent purchases.

6. Global assessment, other arguments and conclusion

The contested goods are identical or similar to various degrees to the goods covered by the opponent’s earlier Spanish right. The earlier mark is distinctive to an average degree.

The signs under comparison are visually and aurally similar, as they coincide in the shared verbal element ‘PRET’ which is the entirety of the earlier mark and, albeit with an apostrophe and a circumflex, the entire second verbal element of the contested sign. This element has an independent distinctive role in the contested sign, and as seen above in section d) is of normal distinctiveness in the earlier right.

The main difference between the marks lies in the additional verbal element of the contested sign, ‘APÉRO’.

It must be noted that 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’ (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.).

As seen above in section b) of this decision, at least a part of the relevant consumers will understand the ‘APÉRO’ verbal element of the contested sign. However, regardless of whether this element is understood or not, it is of normal distinctiveness as it will not be perceived as somehow characterising the goods or the element it precedes, ‘PRET’. The general principle that differences at the beginning of the marks are to be given more weight cannot change the finding of overall similarity between the marks in the present case, because, as has been set out above, the ‘PRET’ element has an independent distinctive role in both signs under comparison (judgment of 06/10/2005, C-120/04, ‘Thomson Life’, paragraph 30). Therefore, given the reproduction of the word ‘PRET’ in the contested mark, and given that this is the entirety of the earlier mark, it is very likely that the relevant public will, at least, associate the contested sign with the earlier mark.

In addition, Article 8(1)(b) CTMR states that, upon opposition, a CTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand or line of goods provided under the opponent’s mark.

Therefore, since the relevant public may believe that the identical or similar goods at issue come from the same or from economically-linked undertakings, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 091 612. It follows that the contested trade mark must be rejected in its entirety.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’) and since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) CTMR.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Vita VORONECKAITĖ

Ric WASLEY

Gailė SAKALAITĖ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.