OPPOSITION No B 2 477 423
M. van Houtven, Dennenbos 11, 2450 Meerhout, Belgium (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)
a g a i n s t
Maestro Gelatone S.r.l., Largo degli Abeti 3, 90141 Palermo, Italy (applicant).
Class 30: Ice cream drinks; Confectionery ices; Ice cream with fruit; Ices; Mixtures for making water ices; Sherbet mixes; Mixtures for making ice cream confections; Mixtures for making ice cream products; Sherbets [ices]; Sorbets [water ices]; Ice cream substitute; Ice cream gateaux; Ice cream desserts; Ice-cream cakes; Edible fruit ices; Dairy ice cream; Soya based ice cream products; Ice creams containing chocolate; Ice cream mixes; Non-dairy ice cream; Yoghurt based ice cream [ice cream predominating]; Fruit ices; Ice cream stick bars; Ice cream sandwiches.
Class 43: Provision of food and drink; Ice cream parlour services.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
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 3 943 537.
The goods and services
The goods and services on which the opposition is based are the following:
Class 11: Ice making machines.
Class 30: Edibles ices.
Class 35: Advertising; business mediation with regard to the purchase and sale of ice making machines and ices.
The contested goods and services are the following:
Class 25: Clothing; Headgear.
Class 30: Ice cream drinks; Confectionery ices; Ice cream with fruit; Ices and ice; Mixtures for making water ices; Sherbet mixes; Mixtures for making ice cream confections; Mixtures for making ice cream products; Sherbets [ices]; Sorbets [water ices]; Ice cream substitute; Ice cream gateaux; Ice cream desserts; Ice-cream cakes; Edible fruit ices; Dairy ice cream; Soya based ice cream products; Ice creams containing chocolate; Ice cream mixes; Non-dairy ice cream; Yoghurt based ice cream [ice cream predominating]; Fruit ices; Ice cream stick bars; Ice cream sandwiches.
Class 43: Provision of food and drink; Ice cream parlour services.
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 25
The contested clothing; headgear differ in all the relevant factors for the comparison from the opponent’s goods and services in Classes 11, 30 and 35. The contested goods’ primary purpose is to protect the body and the head against the elements and they are also used as fashion articles. The opponent’s goods and services are machines, foodstuffs (namely edible ices) and services related to the purchase and sale of those goods, as well as advertising services. The goods and services at issue have different natures and purposes, are not available through the same distribution channels and are not produced by the same undertakings. They are neither in competition nor complementary. Therefore, they are dissimilar.
Contested goods in Class 30
The contested ices are the same as the opponent’s edible ices; therefore, these goods are identical.
The contested confectionery ices; ice cream with fruit; sherbets [ices]; sorbets [water ices]; edible fruit ices; dairy ice cream; soya based ice cream products; ice creams containing chocolate; ice cream mixes; non-dairy ice cream; yoghurt based ice cream [ice cream predominating]; fruit ices; ice cream stick bars are included in the opponent’s broader category of edibles ices and are therefore identical.
The contested ice cream gateaux; ice-cream cakes are frozen desserts that incorporate ice cream. The contested ice cream sandwiches refer to a frozen dessert consisting of ice cream between two biscuits. These goods are highly similar to the opponent’s edible ices, as they have the same nature (being frozen confectionery made from ice cream) and purpose, are found in the same sections of supermarkets and are usually produced by the same undertakings. The target public is also the same and they are in competition.
The contested ice cream desserts include, as a broader category, the opponent’s edible ices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested ice cream drinks and the opponent’s edible ices have the same purpose, serving as sweet snacks, notwithstanding their different natures and methods of use (liquid food to be drunk versus solid food to be eaten). They are available through the same distribution channels, namely ice cream parlours, and may be provided by the same undertakings. The target public is the same. Therefore, they are similar to a high degree.
The contested ice cream substitute has the same purpose and target public as the opponent’s edible ices. These goods are available through the same distribution channels, have the same purpose and are in competition with each other. Therefore, they are similar to a high degree.
The contested sherbet mixes; mixtures for making water ices; mixtures for making ice cream confections; mixtures for making ice cream products are ready-made preparations in powder or liquid form for making ices. The opponent’s ice-making machines can refer to either machines for making cooling ice/ice cubes or machines for making edible ices. Despite the obvious differences in their natures and methods of use, these goods have significant points in common, since they are used for making edible ices and target same public, made up of either professionals or the general public (since such machines may be intended for household use). Both natural ingredients, such as milk, fruit, etc., and ready-made mixtures can be used to make ice cream with such machines. Indeed, some ready-made preparations are specifically for use with some machines. Use of a specific brand may even be recommended. These goods are, therefore, complementary and, because consumers may think – irrespective of the situation on the market – that such goods have the same commercial origin, they are considered similar to a low degree.
The contested ice is to be understood as cooling ice, namely just frozen water, which is used to preserve food or to cool liquids. The mere fact that ice and edible ices are frozen is not sufficient to establish even a low degree of similarity between them, given the differences between these goods as regards their purposes, methods of use, usual distribution channels and manufacturers. Furthermore, ice also has nothing in common with the opponent’s ice-making machines, even if this wording is interpreted as referring to machines for making ice cubes. The fact that these machines are used for making ice does not denote any link between the goods in terms of purpose (ice is for cooling, whereas the machine is for making ice) or complementarity (the machines are not required for making ice and the goods are not used reciprocally). Furthermore, the differences between them in nature and method of use are obvious and their producers and distribution channels are not the same. Ice also differs in all of the relevant criteria for the comparison, and in its intrinsic nature as a tangible good, from the opponent’s intangible services of advertising and of business mediation with regard to the purchase and sale of ices and ice-making machines. Therefore, the contested ice is dissimilar to all of the opponent’s goods and services.
Contested services in Class 43
The contested ice cream parlour services are similar to a low degree to the opponent’s edible ices. The opponent’s goods are offered in ice cream parlours, as are the contested services; therefore, their distribution channels are the same. It is common knowledge that some ice cream parlours make their own ices. Conversely, ice cream producers have developed services for providing these goods. Accordingly, the goods and services come from the same undertaking or from economically-linked undertakings.
Furthermore, as the contested provision of food and drink encompasses ice cream parlour services, and as the Opposition Division cannot dissect ex officio the broad category of the contested provision of food and drink, this contested service is also deemed to be similar to a low degree to the opponent’s edible ices.
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 identical or similar are directed at the public at large. The degree of attention is considered average.
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, which will immediately understand the expression ‘ICE CREAM’ in the earlier mark.
The earlier mark is a figurative mark. It includes the verbal elements ‘maestro gelato’ in lower case, followed by a dot, all in orange, and, underneath, the smaller words ‘ICE CREAM’ in a white upper case font. There is a red horizontal line between the two verbal elements, and all of the elements mentioned are placed within a black oval with an orange outline.
The expression ‘ICE CREAM’ is the usual way to refer in English to an edible ice, and its meaning therefore directly relates to the nature or the purpose of the relevant goods, since they are edible ices and machines for making ices.
The figurative elements, namely the oval, the dot, the line and the colours, as well as the almost standard fonts used, are clearly of a decorative nature and therefore are less distinctive than the verbal elements.
The word ‘MAESTRO’, of Italian origin, was originally used to refer to a great conductor or performer of classical music. Its meaning has now been extended to refer to a distinguished or particularly skilled person in any sphere, but it still conjures up the idea of the arts, such as music and painting. It connotes excellence and expertise and has, therefore, a laudatory value. It may be used as a noun or as a title before a name.
The word ‘GELATO’ in the earlier mark is the Italian word for ‘ice cream’. Given the success of Italian restaurants in the whole of the European Union and the fact that ice cream is one of the typical dishes of Italy, a significant part of the English-speaking public will understand the word with that meaning. Indeed, English dictionaries include entries for the word and define it as an ‘Italian-style ice cream’. On the other hand, the word is much less frequently used than other Italian words also related to foodstuffs that have become usual in English (and in many other languages) such as ‘pizza’ (which is indeed the only word to designate the dish in question). The word ‘gelato’ is within Frequency Band 3, meaning that it occurs between 0.01 and 0.1 times per million words in typical modern English usage (information extracted from Oxford English Dictionary online on 14/10/2016 at www.oed.com). By way of comparison, the words ‘pizza’ and ‘ice cream’ are in Frequency Band 5, meaning that they occur between 1 and 10 times per million words in typical modern English usage. It cannot therefore be excluded that part of the English-speaking public may be unfamiliar with the word ‘gelato’ and will perceive the word as fanciful, most probably as a family name, given that it is preceded by the title ‘MAESTRO’.
The contested sign is a figurative mark. It is formed of two concentric circles, the outer one being dark grey and the inner one being light grey. The words ‘MAESTRO GELATONE’ are written in white in a semi-circle in the upper half of the space between the two circles. A series of five abstract figurative elements is depicted at the beginning and at the end of the verbal elements. The central part of the inner circle contains the rough outline of a the head of a man wearing a cap.
The word ‘MAESTRO’ will be perceived with the laudatory meaning indicated above. The word ‘GELATONE’, although it does not exist as such, will be perceived by a part of the English-speaking public, by analogy, in the same way as the very similar word ‘GELATO’ in the earlier mark, namely as referring to ice cream. Another part of the public will not associate it with any meaning, or at most will perceive it as a name, since it comes after the title ‘MAESTRO’.
As regards the figurative elements of the contested sign, the circles will be perceived by the relevant public simply as a decorative background, whereas the depiction of a man’s head, which is not so clearly decorative, will be perceived as a depiction of the ‘maestro’ to which the verbal element refers. Therefore, this element is ancillary to the word, as it supports or illustrates its meaning.
In view of the above, that is, the decorative or ancillary role of the figurative elements in both marks and the non-distinctive character of ‘ICE CREAM’ in the earlier mark, the Opposition Division considers that the expressions ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’ will be perceived by the public as the elements of the signs having most trade mark value, that is, as the most distinctive elements.
The public will either perceive these expressions as referring to a person who is an expert (‘maestro’) in the field of ice cream or as an expert person whose name is ‘Gelato’ or ‘Gelatone’.
When perceived as ‘expert in the field of ice cream’, the expressions ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’ clearly relate to the relevant goods and services. However, not only the meaning but also how obvious this meaning is must be taken into account in the assessment of distinctiveness. In the present case, in both of the signs, the two words are juxtaposed in a way that does not follow the syntactic rules of English, and it is only by deduction, or at least after a further mental step, that the meaning ‘expert in ice cream’ will be understood. In addition, none of the words is the most obvious or the one that first comes to mind to denote the meanings in question. First, the words are of Italian origin; second, ‘MAESTRO’ connotes the field of music or art, not foodstuffs; finally, the word ‘gelato’, although it may be known, is much less common than the English word ‘ice cream’, which is also used to refer to ices of Italian origin. Therefore, even when both ‘MAESTRO’ and ‘GELATO’ or ‘GELATONE’ are understood, the distinctiveness of the expressions as a whole is close to average because of the multiple deviations from the typical wording used to refer to an expert in ice cream.
The average distinctiveness of the expressions as a whole makes no doubt when ‘GELATO’ and ‘GELATONE’ are perceived as names, despite the laudatory character of ‘MAESTRO’.
Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘MAESTRO’ and in the letters ‘GELATO’. They differ in their figurative elements, in the verbal elements ‘ICE CREAM’ of the earlier mark and in the letters ‘NE’ of the contested sign. As regards the verbal elements ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’, which are the most distinctive parts of the signs, the difference between them is not only reduced (since it lies in 2 letters, whereas the signs have 13 letters in common) but also barely noticeable because the difference is at the end of the verbal expressions, whereas the identical letters form the string of letters at the beginning, the part on which the public’s attention will focus, since the relevant consumers read from left to right.
Given the non-distinctive character of the verbal elements ‘ICE CREAM’, the main differences between the signs lie in their figurative elements, which are of reduced relevance because, 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). In addition, the figurative elements of the oval, the dot and the line in the earlier mark and the circles in the contested sign are essentially of a decorative nature, and the man’s head in the contested sign will be perceived by the public as supporting or illustrating the meaning of the verbal element ‘MAESTRO’.
Indeed, the obvious graphic differences between the signs do not outweigh the coinciding letters, ‘MAESTRO GELATO’, which remain clearly perceptible, given their prominent position in the oval or circular background.
Furthermore, as explained above, the public will perceive these elements as the main indicators of the commercial origin of the goods and services in question.
In view of the above, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables /MA-ES-TRO-GE-LA-TO/ and, given that figurative elements are not subject to phonetic assessment, the pronunciation differs in only the sounds of the descriptive expression ‘ICE CREAM’ of the earlier mark and of the syllable /NE/ of the contested sign. The former difference has hardly any weight in the comparison, given that the public will not confer any trade mark value on that expression. The difference in ‘NE’ is also of reduced relevance, since it is placed at the end of the contested sign and therefore is less likely to attract the public’s attention than the identical beginnings of the marks.
In view of the above, and bearing in mind that ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’ are the most distinctive parts of the signs, it is considered that the signs are aurally similar to a high degree.
Conceptually, for part of the public, the signs coincide in the fact that they evoke the concept of an expert (with a very similar name). The concept of expertise is laudatory but retains distinctiveness given the specific word used (‘MAESTRO’, of Italian origin and related to the arts world rather than to foodstuffs). For part of the public, the coincidence is greater, as both signs evoke the concept of an expert in ice cream, using the same two unusual words combined in the same, syntactically incorrect, manner.
The contested sign also conveys the concept of a man’s head; however, the ensuing difference is limited because the depiction will be understood as relating to the verbal element ‘MAESTRO’.
The earlier mark will be immediately associated with the concept of ice cream through the additional verbal expression ‘ICE CREAM’, but this is of hardly any relevance, if any at all, given that this concept will be related not to the commercial origin of the goods but to their nature or purpose, since the relevant goods are ice cream or machines for making ice cream.
In view of the above, it is considered that 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, since the element ‘ICE CREAM’ of the earlier mark is non-distinctive and since the figurative elements are merely decorative, and therefore have a very limited degree of distinctive character, the distinctiveness of the earlier mark essentially relies on the distinctiveness of the remaining verbal elements, ‘MAESTRO GELATO’.
As explained above, the Opposition Division is of the opinion that, for part of the English-speaking public, the expression ‘MAESTRO GELATO’ will evoke an expert named ‘GELATO’ and is therefore distinctive, given that the concept of expertise is evoked through a word of Italian origin that is normally used in the context of fields other than that of foodstuffs. For this part of the public, the earlier mark as a whole is of average distinctiveness.
However, for the part of the public that perceives the expression as meaning ‘expert in ice cream’, it indicates, albeit in an unusual manner, that the goods and services, all related to ice cream, are produced or provided by an expert or, as far as the machines are concerned, allow expert manufacturing of ice cream. It is not, however, devoid of distinctiveness, given that the words used (‘MAESTRO’ and ‘GELATO’) are, as regards the former, not used in the usual context and, as regards the latter, very seldom used compared with the existing English words with the same meaning, ‘ice cream’. Furthermore, the two words are juxtaposed in such a way that they are not syntactically correct in English; therefore, the overall meaning will be perceived only after some reflection. In view of this, the distinctiveness of the expression, and of the earlier mark as a whole, is considered, for this part of the public, just slightly below average.
Global assessment, other arguments and conclusion
The goods and services are partly identical or similar to various degrees, and partly dissimilar. The degree of attention of the public is considered average.
The signs are similar to various degrees from the three perspectives of the comparison; they are visually and conceptually similar to an average degree and aurally similar to a high degree.
The degrees of similarity established are based not only on the relevance of the commonalities between the signs – which varies according to the parts of the public taken into consideration, especially with regard to the perception of the word ‘GELATO’ or ‘GELATONE’ – but also on the relevance of the differences, which is limited for the entire relevant public. The figurative elements are either decorative or ancillary to the verbal elements; the descriptive element ‘ICE CREAM’ (in the earlier mark) and the additional letters ‘NE’ (in the contested sign) are of limited relevance; therefore, these differences do not suffice to outweigh the significant coincidences between the verbal elements ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’. The Opposition Division emphasises, once again, that, even when these elements are understood as ‘expert in ice cream’, the expressions are not plainly descriptive because, first, the words are not the ordinary words used to convey this meaning and, second, their combination does not follow the rules of English syntax and this syntactical ‘error’ (namely the absence of the article ‘of’ or the inversion of the words) is reproduced in both signs.
Even for the part of the public for which the distinctiveness of the expressions ‘MAESTRO GELATO’ and ‘MAESTRO GELATONE’ is slightly below average, it is those expressions that will remain in the public’s mind. This applies a fortiori for the part of the public that sees ‘GELATO’ and ‘GELATONE’ as names.
Furthermore, it must be borne in mind that likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the goods/services covered are from the same or economically linked undertakings. In the present case, the differences between the signs, lying essentially in figurative elements, cannot dispel the risk that the public might perceive the contested sign as a variant of the earlier mark used by the same undertaking or by economically-linked undertakings to market a specific range of ice cream-related goods and services.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of confusion, on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 3 943 537.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark. 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). In the present case, the degree of similarity between the signs also results in a likelihood of confusion for the goods and services that are similar to a low degree.
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 at these goods cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
International trade mark registration designating Denmark, Germany, Spain, France, Italy, Austria, Sweden and the United Kingdom No 798 862 ‘MAESTRO, GELATO’, for the following goods and services:
Class 30: Ice cream, ice cakes, waffles, cones, rolled wafers and other confectionery for use in combination with ice cream.
Class 35: Business mediation in the purchase and sale of the goods mentioned in Class 30.
Benelux trade mark registration No 599 377, also for the word mark ‘MAESTRO, GELATO’, for the same goods and services.
The goods and services for which the above trade marks are registered are dissimilar to the remaining contested goods, namely clothing, headgear in Class 25 and ice (cooling ice) in Class 30. The latter have already been compared with, and found to be dissimilar to, the abovementioned services and to edible ices (or ice-creams). The remaining contested goods are not similar either to the opponent’s cakes, waffles, cones, rolled wafers and confectionery for use in combination with ice creams, which are also foodstuffs, and, therefore, differ in their purpose, method of use, nature, distribution channels and producers from cooling ice and articles for protecting the body from the elements.
Therefore, no likelihood of confusion exists with respect to clothing, headgear and ice.
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 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
Begoña URIARTE VALIENTE
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.