OPPOSITION No B 2 468 877

Busi Cafes, S.L., Crta. Santpedor a Navarcles, Km. 4, 08251, Spain (opponent), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)

a g a i n s t

Cafea GmbH, Am Sandtorkai 2, 20457 Hamburg, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 468 877 is partially upheld, namely for the following contested goods:

Class 30: Coffee, coffee extracts, artificial coffee, malt coffee, malt coffee extracts, grain coffee, grain coffee extracts; tea; tea extracts, including all the aforesaid products in instant form; cocoa; chocolate; chocolate goods and confectionery, in particular bars, including the aforesaid goods with added milk products and fruit products, nuts and/or cereal products; flour and preparations made from cereals, pastry and confectionery, coffee-, tea-, cocoa- and chocolate-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products, including all the aforesaid goods in instant form; natural sweeteners and sweetening substances; coffee, cocoa and chocolate preparations for making non-alcoholic drinks, including in instant form.

Class 32: Non-alcoholic mixed milk beverages with a milk content of less than half, including with added cocoa and/or malt and/or chocolate; Non-alcoholic drinks, including with added coffee, cocoa, chocolate, including all the aforesaid goods in instant form.

2. European Union trade mark application No 13 263 504 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 263 504, namely against some of the goods in Classes 29 and 32 and all the goods in Class 30.The opposition is based on Spanish trade mark application No 3 522 046. The Opponent indicated that the earlier trade mark application had been registered and it submitted the corresponding evidence in this regard.

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.

PRELIMINARY REMARK

The opponent indicated in the Notice of Opposition that the opposition was based on all the goods and services covered by the Spanish trade mark application basis of the opposition. Those goods and services were, at the time of filing the application, in Classes 30, 35 and 43. However, the trade mark application was finally granted registration for Classes 35 and 43 only.

The opposition is, therefore, considered to be based on those services for which the mark was finally registered.

1. The goods and services

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

Class 35: Wholesaling and retail and via global computer networks sales services of coffee, tea, cocoa, artificial coffee, rice, tapioca, sago, flour, preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices and ice; advertising, advertising via computer network; organization of exhibitions and trade fairs for commercial purposes; business management; business administration; office functions; business assistance relating to franchising.

Class 43: Restaurant services (food); temporary accommodation.

The contested goods are the following:

Class 29: Coffee creamers, preparations made from vegetable raw materials for whitening coffee; mixed milk beverages, milk predominating or of half milk, including with added cocoa and/or malt and/or chocolate; including all the aforesaid goods in instant form.

Class 30: Coffee, coffee extracts, artificial coffee, malt coffee, malt coffee extracts, grain coffee, grain coffee extracts; tea; tea extracts, including all the aforesaid products in instant form; cocoa; chocolate; chocolate goods and confectionery, in particular bars, including the aforesaid goods with added milk products and fruit products, nuts and/or cereal products; flour and preparations made from cereals, pastry and confectionery, coffee-, tea-, cocoa- and chocolate-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products, including all the aforesaid goods in instant form; natural sweeteners and sweetening substances; coffee, cocoa and chocolate preparations for making non-alcoholic drinks, including in instant form.

Class 32: Non-alcoholic mixed milk beverages with a milk content of less than half, including with added cocoa and/or malt and/or chocolate; Non-alcoholic drinks, including with added coffee, cocoa, chocolate, including all the aforesaid goods in instant form.

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

The terms ‘in particular’ or ‘including’, used in the applicant’s lists of goods, indicate that the specific goods listed after them 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, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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, their distribution channels, their sales outlets, their producers, their method of use and whether or not they are in competition with each other or complementary to each other.

Contested goods in Class 29

The contested coffee creamers, preparations made from vegetable raw materials for whitening coffee; mixed milk beverages, milk predominating or of half milk, including with added cocoa and/or malt and/or chocolate; including all the aforesaid goods in instant form consist mainly of foodstuffs of animal or vegetable origin which are prepared for consumption.

The wholesaling and retail and via global computer networks sales services of coffee, tea, cocoa, artificial coffee, rice, tapioca, sago, flour, preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices and ice and the applicant’s goods in Class 29 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs in one go. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition with nor complementary to each other. The same reasoning is valid for the wholesaling services.

Similarity between the retail services of specific goods covered by one mark and specific goods covered by another mark can be found only where the goods involved in the retail services and the specific goods covered by the other mark are identical. The same reasoning is valid for the wholesaling services. This condition is not fulfilled in the present case, since the contested goods in Class 29 and the goods to which the opponent’s retail and wholesale services in Class 35 refer are not identical.

The rest of the opponent’s services in Class 35 (i.e. those different from retail and wholesale) are rendered by persons or organisations principally with the object of helping with the work or management of a commercial undertaking, or helping with the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of dissemination and concerning all kinds of goods or services. These are dissimilar to the contested goods in Class 29, since they differ in their nature, their purpose, their method of use, their distribution channels and their points of sale. They are neither complementary to nor in competition with each other, they do not target the same consumers and they are not likely to come from the same kinds of undertakings.

All the contested goods in Class 29 are also dissimilar to the opponent’s restaurant services (food); temporary accommodation services in Class 43, since they differ in their nature, their purpose, their method of use, their distribution channels and their points of sale. They are neither complementary to nor in competition with each other, they do not target the same consumers and they are not likely to come from the same kinds of undertakings.

The opponent’s restaurant services (food) in Class 43 cover mainly services such as catering, cafeterias and snack bars. These services are intended to serve food and drinks for direct consumption. The mere fact that food and drinks are consumed in a restaurant is not sufficient to find similarity between them. In this case, the contested goods in Class 29 are not indispensable or important for the opponent’s services, in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertakings.

The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc., does not in itself lead consumers to think that responsibility for the production of those goods and the provision of those services lies with the same undertaking (e.g. salt in restaurants). In this case, the contested goods are not commonly offered by restaurants under the same trade mark.

Contested goods in Class 30

The contested coffee, artificial coffee; tea; cocoa; flour and preparations made from cereals, pastry and confectionery are identical to some of the goods for which the opponent’s wholesale and retail services in Class 35 are offered. Retail (and wholesale) services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places in which the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested coffee, artificial coffee; tea; cocoa; flour and preparations made from cereals, pastry and confectionery are similar to a low degree to the opponent’s wholesaling and retail and via global computer networks sales services of coffee, tea, cocoa, artificial coffee, flour, preparations made from cereals, pastry and confectionery in Class 35.

The indication including all the aforesaid products in instant form specifies that those goods listed before it are also covered in a different form (i.e. in instant form). Therefore, the above finding is not altered, since this form is also covered by the broad specifications (e.g. coffee in instant form is covered by the category of coffee, and, therefore, the identity referred to above is maintained).

The contested chocolate goods and confectionery, in particular bars, including the aforesaid goods with added milk products and fruit products, nuts and/or cereal products are identical to confectionery, to which the wholesaling and retail services refer, since the category of confectionery includes the contested goods. Therefore, and according to the reasoning above, these contested goods are similar to a low degree to the opponent’s wholesaling and retail and via global computer networks sales services of confectionery.

The contested coffee-, tea-, cocoa- and chocolate-based beverages are identical to some of the goods to which the retail and wholesale services of the opponent relate. The coffee-based beverages are identical to coffee. The tea-based beverages are identical to tea. The cocoa-based beverages are identical to cocoa, as are the chocolate-based beverages are identical to cocoa as well (as they are covered by the broad category). Therefore, the opponent’s wholesaling and retail and via global computer networks sales services of coffee, tea, cocoa are similar to a low degree to the contested coffee-, tea-, cocoa- and chocolate-based beverages, including with added milk and/or fruit products and/or flavourings and/or sweeteners and/or nuts and/or cereal products, including all the aforesaid goods in instant form.

The contested natural sweeteners and sweetening substances cover, as broad categories (therefore identical to), sugar and honey, to which the retail and wholesale services of the opponent relate. Also in this case, the contested natural sweeteners and sweetening substances are similar to a low degree to the opponent’s wholesaling and retail and via global computer networks sales services of sugar; honey.

The contested coffee extracts, malt coffee, malt coffee extracts, grain coffee, grain coffee extracts; tea extracts, including all the aforesaid products in instant form; chocolate; coffee, cocoa and chocolate preparations for making non-alcoholic drinks, including in instant form are similar to a low degree to the opponent’s restaurant services (food) in Class 43. These goods and services are complementary, they coincide in their distribution channels and their points of sale, and they are likely to be offered by the same kinds of undertakings.

Contested goods in Class 32

The contested non-alcoholic mixed milk beverages with a milk content of less than half, including with added cocoa and/or malt and/or chocolate; non-alcoholic drinks, including with added coffee, cocoa, chocolate, including all the aforesaid goods in instant form consist mainly of drinks that contain no alcohol and which are composed of a mixture of different ingredients (e.g. milk, cocoa, etc.) These goods are similar to a low degree to the opponent’s restaurant services (food) in Class 43, for the same reasons detailed above, namely that the goods and services are complementary, they coincide in their distribution channels and their points of sale, and they are likely to be offered by the same kinds of undertakings.

2. 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 similar to a low degree are directed at the general public. The degree of attention paid by consumers during their purchase is likely to vary from average to lower than average, since some of them (to which a lower than average degree of attention will be paid) are purchased daily and are usually low in price.

3. The signs

	LAROMA
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 mark is a figurative mark formed of the sequence of letters ‘lAroma’, in a slightly stylised typeface, in which the ‘l’ and ‘A’ are separated by an apostrophe, and of a line underneath the entire word. The sign is depicted in black and white.

The contested sign is a word mark, ‘LAROMA’.

The words ‘L’aroma’ and ‘LAROMA’ do not exist in Spanish. However, Spanish-speaking consumers will perceive concepts in them, for the following reasons.

Regarding the earlier mark, the beginning formed by ‘L” is meaningless, since the apostrophe is not used in Spanish, and the isolated ‘L’ has no concept besides the letter it represents. However, the word “aroma” is a Spanish word used to refer to a pleasant odour or fragrance. Even if the earlier mark, as a whole, constitutes an invented term, consumers will mentally divide the sign into the meaningless beginning ‘L” and the word ‘aroma’.

The element ‘aroma’ in the earlier mark is of low distinctive character for the services for which similarity (low degree) has been considered to exist in section a) above. The reason for this is that it is allusive of the characteristics of the goods in relation to which the services are offered, namely of the way they smell. Considering that they consist of edible goods, this constitutes an important indication regarding their characteristics, since a pleasant odour is frequently related to a pleasant taste. However, the earlier sign cannot be considered devoid of distinctive character because the addition of the element ‘L’ ’ before the word ‘aroma’ makes the mark, as a whole, an invented term.

Although the contested mark, ‘LAROMA’, does not exist in Spanish, Spanish-speaking consumers will mentally divide it into either ‘L AROMA’ or ‘LA ROMA’. This is because they will identify either the Spanish word ‘aroma’ (meaning a pleasant odour or fragrance) or the word ‘Roma’ (the name of the capital city of Italy) preceded by the Spanish article ‘la’.

The contested sign, if perceived as ‘L AROMA’, will be seen as being formed of the distinctive element ‘L’ ’ and the word ‘AROMA’, which has the same meaning referred to above. This word is of low distinctive character for the goods for which similarity (low degree) is considered to exist, for the same reasons detailed above in relation to the earlier mark.

The contested sign, if perceived as ‘LA ROMA’, is of average distinctive character in relation to all the goods.

The marks have no element that could be considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in their first letter, ‘L’ (reading from left to right), and in the sequence of letters ‘aroma’. The signs differ in the apostrophe, the slightly stylised typeface and the underlining of the earlier mark, which have no counterparts in the contested mark.

For all the above, it is considered that the signs in comparison are visually similar to an average degree.

Aurally, as the apostrophe is not used in Spanish, consumers will pronounce the earlier mark as if it were not present, namely as ‘la/ro/ma’. The contested mark is pronounced, by the part of the public that perceives it as formed of ‘l’ and ‘aroma’, as ‘la/ro/ma’. For these consumers, the signs are aurally identical.

For the part of the public that perceives the contested mark as formed of the linked words ‘LA’ and ‘ROMA’, the letter ‘r’ will be pronounced with a stronger emphasis on account of being the first letter of the word ‘ROMA’ and being followed by a vowel. In this case, the signs are aurally highly similar, since they will differ only in the stress placed on the letter ‘r’.

Conceptually, as explained above, both signs are formed of a combination of elements that create invented words for Spanish-speaking consumers. However, they will perceive the marks as being formed of linked elements, namely ‘L’’ and ‘aroma’ in the earlier mark, and as either ‘L’ and ‘AROMA’ or ‘LA’ and ‘ROMA’, in the contested sign.

If the word ‘aroma’ is perceived in both marks, the signs are conceptually identical.

If the contested sign is perceived as ‘LA’ and ‘ROMA’, the signs are not conceptually similar, as they are perceived as having different concepts.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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 an element of low distinctive character in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs are visually similar to an average degree. The visual differences, namely the apostrophe, the typeface and the underlining in the earlier mark, are not visually striking.

The signs are, for the part of the public that perceives the word ‘aroma’ in the contested mark, aurally and conceptually identical. For the part of the public that perceives the contested mark as ‘LA ROMA’, they are aurally similar and conceptually dissimilar.

For this part of the public, the signs are differentiated aurally only by the stress placed on the letter ‘r’. It is unlikely that consumers will perceive this difference and, therefore, both marks will be pronounced in the same way.

As explained above, the degree of attention paid by consumers during the purchase of the goods considered similar (to a low degree) to the opponent’s services is deemed to vary from average to lower than average.

According to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Based on the principle of imperfect recollection, consumers might believe that the conflicting goods and services come from the same or from economically-linked undertakings. With regard to the principle of interdependence, the commonalities between the signs outweigh their dissimilarities and may induce at least part of the public to believe that the contested goods come from the same or economically-linked undertakings as the opponent’s services.

The above finding is reinforced for the part of the public paying a lower than average degree of attention during the purchase of the goods, since these consumers pay less attention to the marks and, therefore, will more easily overlook the possible differences between them.

The significant commonalities between the marks are clearly sufficient to counteract their dissimilarities, despite the low similarity between the goods and services.

It is frequent practice nowadays for companies to make variations of their trade marks (e.g. by adding elements to them or by altering their colours or typefaces) in order to obtain new versions of them (e.g. to modernise them) or to name new lines of goods. In this case, the marks can be perceived by part of the public as two different depictions of one sign.

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 partly well-founded on the basis of the opponent’s Spanish trade mark registration.

The contested trade mark must be rejected for the goods found to be similar (to a low degree) to the services of the earlier trade mark.

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 against these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

María del Carmen SUCH SANCHEZ

Victoria DAFAUCE MENÉNDEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.