OPPOSITION No B 2 536 574
Service-Bund GmbH & Co. KG, Friedhofsallee 126, 23554 Lübeck, Germany (opponent), represented by Preu Bohlig & Partner, Leopoldstr. 11a, 80802 Munich, Germany (professional representative)
a g a i n s t
Melius Catering, Via Guglielmo Pepe 117, 84010 Sant'Egidio del Monte Albino, Italy (applicant).
On 20/05/2016, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods
European Union trade mark application No
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 European Union trade mark registration No 9 273 129.
The goods and services
The goods and services on which the opposition is based are the following:
Class 29: Meat products and charcuterie; steaks, steak spices; meat and sausage preserves; fish, poultry and game; meat, fish.
Class 30: Spices; sauces (including salad dressings); steak sauces.
Class 43: Services for providing food and drink; catering services.
The contested goods are the following:
Class 29: Meats; Meat spreads; Salted meats; Chicken nuggets; Steaks of meat; Smoked meats; Beef slices; Beef jerky; Beef; Veal; Fresh meat; Mincemeat [chopped meat]; Sausage meat; Frozen meat; Dried meat; Luncheon meats; Saveloys; Meat, preserved; Bacon rinds; Meat extracts; Pork; Pork preserves; Game; Turkey meat; Liver; Foie gras; Fresh poultry; Deep-frozen poultry; Chicken; Chicken pieces; Cooked chicken; Dehydrated chicken; Fried chicken; Deep frozen chicken; Meatballs; Salami; Sausages; Smoked sausages; Hotdog sausages; Brawn; Knuckle of ham; Meat substitutes; Turkey; Tripe.
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.
Meat(s) are identically contained in both lists of goods and services.
The contested Meat spreads; Salted meats; Chicken nuggets; Steaks of meat; Smoked meats; Beef slices; Beef jerky; Beef; Veal; Fresh meat; Mincemeat [chopped meat]; Sausage meat; Frozen meat; Dried meat; Luncheon meats; Saveloys; Meat, preserved; Bacon rinds; Meat extracts; Pork; Pork preserves; Game; Turkey meat; Liver; Foie gras; Fresh poultry; Deep-frozen poultry; Chicken; Chicken pieces; Cooked chicken; Dehydrated chicken; Fried chicken; Deep frozen chicken; Meatballs; Salami; Sausages; Smoked sausages; Hotdog sausages; Brawn; Knuckle of ham; Turkey; Tripe are included in the broad categories of the opponent’s meat products and meat. Therefore, they are identical.
The contested meat substitutes are similar to the opponent’s meat, because the goods are in competition with each other. Their method of use is similar and they are directed at the same end consumers. Finally, the distribution channels can be the same, for example the section of refrigerated processed goods in a super market.
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 are directed at the public at large. The degree of attention is considered to range from low to average, depending on the price of the product.
Earlier trade mark
The relevant territory is the European Union.
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark and is therefore also protected in capital letters. It has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark consisting of the word elements “RODEO RANCH” in blue colour and the stylised representations of a cowboy hat and a flag featuring stars and stripes in red and blue colours.
The figurative element of a stylised flag featuring stars and stripes in the contested sign will be associated with the flag of the United States of America. Bearing in mind that the relevant goods are foodstuffs, this element is weak for these goods, because the flag indicates the geographical origin of the goods.
The verbal element ‘RANCH’ in the contested sign will be associated with ‘a large farm or estate for breeding cattle, horses, or sheep, esp. in the western United States’ (see Oxford English Dictionary Online). Bearing in mind that the relevant goods are meat products and meat substitutes, this element is weak for these goods, as it alludes to the origin of the goods.
The contested mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘RODEO’ although the contested mark represents these letters in blue colour. However, the signs differ in the additional word ‘RANCH’, the stylised American flag and the cowboy hat. As explained above, the word ‘RANCH’ and the American flag are weak elements for all relevant goods and thus, their impact is limited.
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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is particular true in the case at hand because the figurative element of the American flag is weak and the cowboy hat illustrates the meaning of ‘RODEO’ and ‘RANCH’, which are places where cowboy hats are typically worn.
The initial verbal element of the contested sign is the word ‘RODEO’, as it is positioned above the word ‘RANCH’. Therefore, the first verbal element of the contested sign coincides with earlier mark ‘RODEO’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the three initial syllables ‛ro-de-o’, present identically in both signs. The pronunciation differs in the sound of the syllable ‛ranch’ of the contested mark. Therefore, the signs are aurally highly similar.
Conceptually, the public in the relevant territory will perceive the earlier sign as ‘a public exhibition or competition demonstrating traditional cowboy kills, such as riding bulls or unbroken horses, roping calves, and wrestling steers’ (see Oxford English Dictionary Online). This meaning is also conveyed by the contested mark, which in addition also contains the concepts of ‘a large farm or estate for breeding cattle, horses, or sheep, esp. in the western United States’ (‘RANCH’), the flag of the United States of America and a cowboy hat. While the word ‘RANCH’ and the American flag are clearly less distinctive, the cowboy hat is distinctive for the relevant goods. However, its concept is closely related to the concept of the word element ‘RODEO’, in fact the device of the cowboy hat illustrates the meaning of ‘RODEO’. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
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).
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.
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 goods are identical or similar. They are directed at the public at large whose level of attention is low to average.
From the perspective of the English‑speaking public, the signs are visually and conceptually similar to an average degree. Aurally, the degree of similarity is even higher.
The earlier sign is fully included in the contested sign where the coinciding element has a prominent position at the beginning of the sign.
Although the coincidences in the signs are visually less obvious than the differences, a likelihood of confusion still exists, as the coinciding element ‘RODEO’ plays an independent distinctive role in both signs. The additional elements of the contested sign are either less distinctive (namely the elements ‘RANCH’ and the flag) or, in the case of the cowboy hat, the element is distinctive but merely illustrates the concept of the coinciding element ‘RODEO’.
Consequently, in spite of the differences due to the additional elements in the contested sign, there is a likelihood of confusion.
Considering all the above, there is a likelihood of confusion on the part of the public.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 273 129. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right ‘Rodeo’ 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 (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
The applicant did not file any observations in reply to the opposition.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
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.
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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.