OPPOSITION No B 2 536 673
The Bar Leisure Limited, No 35, Balluta Buildings, Main Street, St. Julians, Malta (opponent), represented by Jeanine Rizzo, Fenech & Fenech Advocates, 198, Old Bakery Street, Valletta VLT1455, Malta (professional representative)
a g a i n s t
Global Supplements Spółka z ograniczoną odpowiedzialnością Spółka komandytowa, uk. Konna 40, 80-174 Otomin, Poland (applicant), represented by Traset Rzecznicy Patentowi Czabajska Szczepaniak Sp.P., ul. Piecewska 27, 80-288 Gdańsk, Poland (professional representative).
On 15/10/2018, the Opposition Division takes the following
1. Opposition No B 2 536 673 is partially upheld, namely for the following contested goods:
Class 29: Milk products and beverages.
2. European Union trade mark application No 13 722 814 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 722 814 for the word mark ‘BAD ASS’, namely against some of the goods in Classes 5, 29, 30 and all the goods in Class 32. The opposition is based on European Union trade mark registrations No 10 980 092 for the word mark ‘BADASS’ and No 10 029 833 for the word mark ‘BADASS BURGERS’ as well as on the Maltese non-registered trade figurative mark . The opponent invoked Article 8(1)(b) EUTMR with regard to the EUTMs and Article 8(4) EUTMR with regard to the Maltese non-registered trade mark.
Following a parallel opposition decision No B 2 536 624 all of the goods in Classes 29, 30 and 32 with the exception of milk products and beverages (Class 29) of the aforementioned EUTM application against which the current opposition was also directed, were refused and removed from the specification. The opponent in the present proceedings was duly informed and the opposition was maintained. Consequently, the opposition at hand is directed against the remaining goods in Classes 5 and 29.
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 10 980 092.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Ready-to-wear clothing; jogging sets [clothing]; roll necks [clothing]; pockets for clothing; ready-made clothing; kerchiefs [clothing]; wraps [clothing]; wristbands [clothing]; playsuits [clothing]; combinations [clothing]; weather resistant outer clothing; visors [clothing]; hats (paper -) [clothing]; belts [clothing]; clothing*; clothing for children; athletic clothing; tops [clothing]; leisure clothing; knitted clothing; gloves [clothing]; childrens' clothing; headbands for clothing; party hats [clothing]; shorts [clothing]; aprons [clothing]; windbreakers [clothing]; braces for clothing [suspenders]; ties [clothing]; babies' clothing; wearable garments and clothing, namely, shirts; clothing, footwear, headgear; clothes for sports; leisure footwear; footwear for men and women; footwear; sneakers [footwear]; caps [headwear]; headwear.
Class 29: Meats; meat paste; meatballs; prepared dishes consisting principally of meat; processed meat products; ready cooked meals consisting wholly or substantially wholly of meat; meat, fish, poultry and game; frozen meat products; meat products being in the form of burgers; meat; meat burgers; frozen meat; fresh meat; cooked meat dishes; cooked chicken; preserved, frozen, dried and cooked fruits and vegetables; vegetable burgers; salads (vegetable -); soup preparations (vegetable -); mixed vegetables; vegetables, cooked.
Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; grains [cereals]; fresh vegetables; root vegetables [fresh]; raw vegetables; salad vegetables [fresh]; fresh fruits and vegetables.
Class 41: Production of live entertainment features; corporate hospitality (entertainment); arranging of visual entertainment; entertainment, sporting and cultural activities; provision of entertainment services for children; organization of entertainment competitions; interactive entertainment services; providing on-line information in the field of computer gaming entertainment; live entertainment; hospitality services (entertainment); organising of shows for entertainment purposes; sports entertainment services; organising of entertainment; promotions [entertainment]; provision of rooms for entertainment; organising events for entertainment purposes; entertainment; night club services [entertainment]; organisation of entertainment and cultural events; management of entertainment services; live entertainment production services; organisation of musical entertainment; wedding celebrations (organisation of entertainment for‑); on-line entertainment; competitions (organising of entertainment‑); entertainment services; organization of competitions [education or entertainment]; production of live entertainment; provision of live entertainment; party planning [entertainment]; entertainment relating to wine tasting; entertainment services relating to competitions; children's entertainment services; entertainment by means of concerts; organisation of entertainment competitions; live entertainment services; popular entertainment services; planning (party-) [entertainment]; entertainment booking services; entertainment provided via the internet; sporting and cultural activities; organizing cultural and arts events; providing cultural activities; entertainment, sporting and cultural activities; cultural activities; organisation of events for cultural, entertainment and sporting purposes.
Class 43: Providing food and drink; services for providing food and drink; providing of food and drink; catering (food and drink -); catering services for the provision of food; catering of food and drinks; catering services for the provision of food and drink; hospitality services [food and drink]; hospitality services [accommodation].
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
The (remaining) contested goods are the following:
Class 5: Dietary and nutritional supplements; dietary supplemental drinks; vitamin and mineral preparations; dietary supplements for athletes; food supplements enriched with vitamins; diet supplements; mineral and vitamin food supplements; dietary foods; vitamin drinks.
Class 29: Milk products and beverages.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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, 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 5
The opponent’s goods in Class 25 are various articles of clothing, footwear and headgear, as well as parts and accessories for those goods. The opponent’s goods in Class 29 are foodstuffs of animal origin (meat, fish) and fruits and vegetables which are prepared for consumption or conservation. The opponent’s goods in Class 31 include mainly land products not having been subjected to any form of preparation for consumption. The opponent’s services in Classes 41, 43 and 45 consist of different kind of entertainment services and sporting and cultural activities (Class 41), hospitality services such as provision of food and drink (Class 43) as well as legal services, security services and personal and social services (Class 45).
Hence the opponent’s goods and services do not have sufficient connection with the contested goods in Class 5 which are very specific products elaborated for dietary purposes and meal replacements, dietetic food and beverages adapted for medical or veterinary use. These goods have a different purpose and method of use than all the opponent’s goods and services. They usually do not coincide in producers/providers, relevant public and distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar.
The opponent’s claims that the goods and services in question are similar since they all relate to the production of food and beverages and many products are complimentary must be set aside. The goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20).
As regards the opponent’s argument that the applicant has not submitted any proof in relation to products on which the contested mark will be applied, the Opposition Division notes that ‘the comparison of the goods required by Article 8(1)(b) EUTMR must relate to the description of the goods covered by the earlier mark relied on in opposition and not the goods for which the trade mark is actually used respectively could be potentially used, unless, following an application in accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), the proof of use of the earlier mark is only in respect of some of the goods or services for which it is registered’ (see for example judgements of 22/03/2007, T‑364/05, Pam Pluvial, EU:T:2007:96, § 85 and 07/09/2006, T‑133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 30).
Contested goods in Class 29
The contested milk products and beverages are considered similar to a low degree to the opponent’s services of provision of food and drink in Class 43. Despite the different nature, purpose and method of use, the aforementioned goods and services can coincide in producers and distribution channels and are complementary. For example milk shakes are used and offered in the context of restaurant, catering, café, cafeteria, canteen and snack bar services.
b) 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 public at large. Contrary to the applicant´s view, the Opposition Division finds that the relevant goods and services are everyday consumer goods/services and the degree of attention is considered to be average.
c) The signs
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.
The earlier word mark ‘BADASS’ as well as the contested word mark ‘BAD ASS’ are meaningful in certain territories, for example in those countries where English is understood. Bearing in mind that the similarities between signs are higher if their semantic meaning is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United Kingdom.
The earlier mark will be perceived as referring to a tough or aggressive person (see e.g. Collins English dictionary online) by the relevant public. As it is not descriptive, allusive or otherwise weak or non-distinctive for the relevant goods, it is considered distinctive.
The contested mark consists of two English words ‘BAD’ and ‘ASS’. Although it is visually divided into the two (as such meaningful) elements, it will be not perceived by the relevant public as a mere combination of the individual elements but as the meaningful and distinctive conjoined unity ‘BADASS’, as defined above.
Visually, the signs coincide in all of their letters. The only difference between the signs is confined to a space between ‘BAD’ and ‘ASS’ in the contested sign.
Therefore, the signs are visually almost identical.
Aurally, the signs will be pronounced identically.
Conceptually, both signs will be associated with the same meaning and are, therefore, identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) 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 and 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.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account is also 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 earlier mark is normally distinctive and the conflicting signs are visually almost identical and aurally and conceptually identical. The space between the letters ‘BAD’ and ‘ASS’ in the contested sign will be perceived only at the visual level and is not sufficient for the relevant public to safely distinguish between the signs. Moreover, the strong similarities between the signs outweigh the low similarity between the goods and services concerned.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 980 092. 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.
It follows from the above that the contested trade mark must be rejected for milk products and beverages in Class 29.
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 European Union trade mark registration No 10 029 833 for the word mark ‘BADASS BURGERS’ for following services:
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
Class 43: Services for providing food and drink; temporary accommodation.
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
This other earlier right invoked by the opponent covers services which are clearly different to the remaining goods in Class 5 applied for in the contested trade mark. The opponent’s services do not have any relevant points of contact with the contested goods in Class 5. These goods have a different purpose and method of use than all the opponent’s services. They do not coincide in producers/providers, relevant public or distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar and the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
As the opposition was not fully successful under Article 8(1)(b) EUTMR, the Opposition Division will further proceed with the analysis on the grounds of Article 8(4) EUTMR.
NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opponent has also based its opposition on the earlier non-registered figurative trade mark , used in the course of trade in Malta in relation to several goods and services in Classes 25, 29, 31, 41, 43 and 45.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Article 7(1) EUTMDR (Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Article 7(2) EUTMDR (Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.
On 29/07/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2015.
The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.
For the sake of completeness, the Opposition Division notes that the opponent neither submitted any information on the legal protection granted to the type of trade sign invoked by it nor any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law of Malta mentioned by the opponent.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful for only some 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
Tu Nhi VAN
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.