OPPOSITION No B 2 968 389

Origo-Kaffee Rösterei und Vertriebs GmbH, Ullsteinstraße 73, 12109, Berlin, Germany (opponent), represented by Fuhrmann Wallenfels Berlin Rechtsanwälte Partnerschaftsgesellschaft mbB, Kurfürstendamm 224, 10719, Berlin, Germany (professional representative)

a g a i n s t

Liang Hui, 6003 - 1151 West Georgia St., Vancouver, British Columbia, V6E 0B3, Canada (applicant), represented by Keltie LLP, No. 1 London Bridge, London, SE1 9BA, United Kingdom (professional representative).

On 28/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 968 389 is upheld for all the contested goods and services, namely:

Class 30: Coffee and tea; ground coffee beans; non-alcoholic coffee-based beverages; non-alcoholic tea-based beverages.

Class 43: Operation of a tea house; coffee shops; coffee-house services.

2. European Union trade mark application No 16 426 322 is rejected for all the contested goods and services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 426 322 for the word mark ‘ORIGO’, namely against all the goods and services in Classes 30 and 43. The opposition is based on, inter alia, European Union trade mark registration No 12 046 678 for the word mark ‘Origo’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 12 046 678.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 30: Unroasted coffee; coffee flavorings [flavourings]; coffee-based beverages.

Class 43: Cafés and restaurants.

The applicant requested a limitation of the goods on 17/07/2017; however, the limitation did not affect the scope of the opposition. The contested goods and services are the following:

Class 30: Coffee and tea; ground coffee beans; non-alcoholic coffee-based beverages; non-alcoholic tea-based beverages.

Class 43: Operation of a tea house; coffee shops; coffee-house 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 30

The contested coffee includes, as a broader category, the opponent’s unroasted coffee. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested tea is similar to the opponent’s unroasted coffee because they have the same method of use and distribution channels. They also have the same purpose and they are in competition.

The contested ground coffee beans overlap with the opponent’s unroasted coffee. Therefore, they are identical.

Non-alcoholic coffee-based beverages are identically contained in both lists of goods (including synonyms).

The contested non-alcoholic tea-based beverages are similar to the opponent’s coffee-based beverages. They have the same purpose and method of use. Consequently, they are in competition. They also have the same distribution channels and relevant public.

Contested services in Class 43

The contested operation of a tea house; coffee shops; coffee-house services are included in the broad category of the opponent’s cafés and restaurants. Therefore, they are identical.

2. The signs

Origo	ORIGO
Earlier trade mark	Contested sign

The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Consequently, it is irrelevant whether a word mark is depicted in lower or upper case letters.

Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods, namely coffee; ground coffee beans; non-alcoholic coffee-based beverages, and services, namely operation of a tea house; coffee shops; coffee-house services.

The remaining contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services, namely tea; non-alcoholic tea-based beverages.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 046 678. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 12 046 678 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Rosario GURRIERI	María del Carmen COBOS PALOMO	Adriana VAN ROODEN

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.