OPPOSITION No B 2 918 723

Łukasz Adam Balcerzak, ul. Kopernika 62 m. 42, 90-533 Łódź, Poland and Stefan Władysław Witoń, ul. Siemienowicza K. 15A, 01-481 Warsaw, Poland (opponents), represented by Sobajda & Orlińska Kancelaria Patentowa SP. J., ul. Dworkowa 2/67, 00-784 Warsaw, Poland (professional representative)

a g a i n s t

Roberto Mario Gariboldi, Via Bandello Matteo, 6, Milano, Italy (applicant), represented by Onofrio Musco, Via Monte Sabotino, 6, 76011 Bisceglie, Italy (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 918 723 is partially upheld, namely for the following contested goods and services:

Class 30: Ice cream; ice creams, frozen yogurts and sorbets; goods made thereof [processed grains, starches]; filled baguettes; chocolate-based ready-to-eat food bars; brioches; pancakes; crepes; savory pastries; ice lollies; sorbets [water ices]; fruit ice bars; ice lollies containing milk; fruit ices; edible ices; flavored ices; ice lollies being milk flavoured; ice milk [ice cream]; ice cream stick bars; ice confectionery; iced cakes; ice cream gateaux; cones for ice cream; ice cream desserts; ices; ice cream substitute; frozen yoghurt [confectionery ices]; frozen confectionery containing ice cream; ice cream sandwiches; yoghurt based ice cream [ice cream predominating]; parfaits; ice cream drinks; ice milk bars; coffee-based beverages containing ice cream (affogato); water ice; batter for making pancakes; cream pies; chocolates; sherbets [ices]; sherbet mixes; binding agents for ice cream; instant ice cream mixes; chocolate; ice creams containing chocolate; chocolate cakes; filled chocolate.

Class 43: Ice cream parlour services; bar services.

2. European Union trade mark application No 16 489 502 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 30: Processed grains, starches; baking preparations and yeast; salts, seasonings; flavourings and condiments; pancake syrup; coffee, teas and cocoa and substitutes therefor; bases for making milk shakes [flavourings]; ice for refreshment; ice (listed twice).

3. Each party bears its own costs.

REASONS

The opponents filed an opposition against all the goods and services of European Union trade mark application No 16 489 502 for the figurative mark . The opposition is based on Polish trade mark registration No R.080 795 for the word mark ‘AUGUSTO’ and European Union trade mark registration No 14 994 057 for the figurative mark . The opponents invoked Article 8(1)(a) and (b) EUTMR in relation to both earlier rights and Article 8(5) EUTMR in relation to the national earlier mark.

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 opponents’ European Union trade mark registration No 14 994 057 due to its broader scope of protection encompassing additional goods not covered by the other mark.

1. The goods and services

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

Class 30: Ice-cream, ice-cream desserts, pastry and confectionery; sherbets [ices].

The contested goods and services are the following:

Class 30: Ice cream; coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; salts, seasonings, flavourings and condiments; filled baguettes; chocolate-based ready-to-eat food bars; brioches; pancakes; crepes; savory pastries; ice lollies; sorbets [water ices]; fruit ice bars; ice lollies containing milk; fruit ices; edible ices; flavored ices; ice lollies being milk flavoured; ice milk [ice cream]; ice cream stick bars; ice confectionery; iced cakes; ice cream gateaux; cones for ice cream; ice cream desserts; ices and ice; ice cream substitute; frozen yoghurt [confectionery ices]; frozen confectionery containing ice cream; ice cream sandwiches; yoghurt based ice cream [ice cream predominating]; parfaits; ice cream drinks; ice milk bars; coffee-based beverages containing ice cream (affogato); water ice; bases for making milk shakes [flavourings]; batter for making pancakes; pancake syrup; cream pies; chocolates; sherbets [ices]; sherbet mixes; binding agents for ice cream; instant ice cream mixes; chocolate; ice creams containing chocolate; chocolate cakes; filled chocolate; ice for refreshment.

Class 43: Ice cream parlour services; bar services.

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 30

The contested ice cream; ice creams; ice cream desserts; sherbets [ices] are identically contained in both lists of goods (given that no difference is made between the singular and plural form of a term).

Ices are to be understood as ‘ice creams’. Therefore, the contested ices and the ice- cream of the opponents are identical.

The contested frozen yogurts and sorbets; chocolate-based ready-to-eat food bars; ice lollies; sorbets [water ices]; fruit ice bars; ice lollies containing milk; fruit ices; edible ices; flavored ices; ice lollies being milk flavoured; ice milk [ice cream]; ice cream stick bars; ice confectionery; iced cakes; ice cream gateaux; ice cream substitute; frozen yoghurt [confectionery ices]; frozen confectionery containing ice cream; ice cream sandwiches; yoghurt based ice cream [ice cream predominating]; parfaits; ice milk bars; water ice; chocolates; sherbet mixes; chocolate; ice creams containing chocolate; chocolate cakes; filled chocolate are essentially confectionery products, including products of the ice confectionery, or frozen desserts, which are included in, include, or overlap with, the opponents’ goods in Class 30, in particular the opponents’ ice-creams desserts, sherbets [ice] and confectionery. Since the Opposition Division cannot dissect these categories of goods ex-officio, they are considered identical.

The contested goods made thereof [processed grains, starches]; filled baguettes; brioches; pancakes; crepes; savory pastries; batter for making pancakes; cream pies are at least similar to the opponents’ pastry and confectionery, as they may have the same nature and furthermore, they usually coincide in their distribution channels and relevant public, as well as in their producers, for instance various bakery or pastry shops offering all the above mentioned goods.

The contested binding agents for ice cream; instant ice cream mixes are in competition with the opponents’ ice-cream as they coincide in their purpose. The contested cones for ice cream are cone-shaped pastries, usually made of a wafer, which enable ice cream to be held in the hand and eaten without a bowl or a spoon; these goods have a complementary character to the opponents’ ice-cream. The contested ice cream drinks; coffee-based beverages containing ice cream (affogato) are beverages that use ice-cream as a basis of developing various flavours. All these goods are considered similar to the opponents’ ice-creams. In addition to the above commonalities, they may be found at the same sale spots and target the same consumers. Furthermore, they may be produced by the same companies (managing ice-cream brands in their portfolio).

The contested processed grains, starches; baking preparations and yeast; salts, seasonings; flavourings and condiments; pancake syrup are not ready for immediate consumption foodstuffs but rather ingredients used to prepare dishes and meals by adding texture, flavours and visual appeal. The contested coffee, teas and cocoa and substitutes therefor; bases for making milk shakes [flavourings] are products mostly used to prepare hot or cold beverages, including giving them a particular flavour. The contested ice for refreshment; ice (listed twice), unlike the sweetened ices mentioned above, are to be understood as ‘cooling ice’.

All these goods are considered dissimilar to the opponents’ goods in Class 30. Ingredients used for the preparation of foodstuffs are a subcategory of raw materials and the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36).

Even though some of these goods may be offered along in the same venues providing food and drinks, this is not a sufficient reason to deem them similar either. The contested goods above have completely different natures, methods of use and nutrition purposes as foodstuffs. They are not complementary to the opponents’ goods or in competition with them on the foodstuffs market, namely they cannot be used as substitutes for any of them. In addition, these goods originate from different undertakings in the foodstuffs industry.

Contested services in Class 43

In principle, the mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89, § 45 and decision of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, it has been established in case-law that in certain situations these goods and services can be complementary (judgments of 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 46). In particular, goods and services are complementary if one is indispensable or important for the use of the other 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 undertaking.

In the present case, the contested ice cream parlour services will obviously offer the opponents’ products, namely ice-cream, and consumers will believe that the goods and services are sold or provided by the same undertaking. Likewise, similarity can be established in relation to the contested bar services since, along drinks offered to consumers, it is common that bars may also offer in-house confectionery, pastries and, not excluded, ice-creams (judgments of 04/06/2015, T-562/14, YOO, ECLI:EU:T:2015:363, § 26). The contested services are, therefore, considered similar to a low degree to the opponents’ ice-cream or confectionery.

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 identical or similar to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

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 contested application is meaningful as a whole for part of the EU public, namely for the Italian speakers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public since it is more prone to confusion due to its comprehension of all the elements composing the contested sign.

Account is taken of the fact that Italian speakers will read and perceive the word ‘AVGVSTO’ of the contested sign as ‘AUGUSTO’ due to a common interchange of the letters originating from Latin (namely the use of the letter ‘U’ as ‘V’). This word may be, in particular, associated with the name of the first Roman emperor ‘Augustus’ by some of the Italian speakers; its general perception will be in any event of a given male name and to that extent, it is distinctive for the conflicting goods and services.

The expression ‘PREMIATA GELATERIA’ will be associated by the Italian speakers with a shop that sells premium gelato (Italian-style ice cream) and the word ‘MILANO’ below will be understood as a geographical location, namely a town in Italy. Consequently, these components have a descriptive character of the quality and nature and characteristics, as well as of the origin (geographically defined) of the conflicting goods and services. Furthermore, these elements remain in a secondary position within the complex sign and, in addition to their non-distinctive character, their impact from a visual, aural and conceptual aspect will be particularly limited.

As regards the contested sign, it further features (non-distinctive) figurative elements of a purely decorative nature, namely the oval background and lines aligning the verbal element ‘AVGVSTO’. These elements are banal geometrical figures and will also have a very limited impact on the visual perception of the sign.

Therefore, the verbal element ‘AVGVSTO’ of the contested sign is its most distinctive word, as well as its visually dominant element.

The earlier mark, on the other side, contains the element ‘augusto’, written in stylised black letters and accompanied by a penguin-device of a normal distinctive character. Similarly to the contested sign, the element ‘AUGUSTO’ of the earlier mark will be understood as given male name by the relevant public.

The second verbal element, ‘twist’, of the earlier mark is depicted in bigger, stylised with green and red outlines letters and occupies more central position in the mark. That element will be understood by the public as ‘a dance that was popular in the 1960s (danced at rock and roll music), in which one twists its body and moves its hips in an energetic way’. As it has no meaning in relation to the relevant goods, it is considered of a normal distinctiveness.

Despite their different positions and sizes, none of the components in the earlier mark may be strictly defined as a visually dominant element. This is due to the fact that both words bear distinguishable stylisations that will equally attract consumers’ attention; consequently, even though depicted in smaller letters, the verbal element ‘augusto’ will be regarded as such and will considerably contribute to the general visual impression conveyed by the sign.

Visually, the signs coincide in the letters ‘A*G*STO’ and differ in the respective letters ‘U’ in the earlier mark and ‘V’ in the contested sign. Furthermore, both signs contain additional verbal and figurative elements, as referred to above. Account must be taken of the fact that, 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). Given the degrees of distinctiveness of the additional components of the signs, they are considered visually similar to a low degree.

Aurally, as set out above, the pronunciation of the signs coincides in the sound of the letters ‛AUGUSTO’, albeit represented in a different graphical manner in the two marks. Given their secondary character, the additional elements of the contested sign will not be aurally referred to. Therefore, bearing in mind the differing, distinctive, verbal element ‘TWIST’ of the earlier mark, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs bear additional concepts, some of which distinctive (‘TWIST’ and the penguin device in the earlier mark), they both will be associated with the male name ‘AUGUSTO’ and to that extent 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.

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 opponents did not explicitly claim that the examined EUTM 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU: C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The goods and services in question are partly identical and similar to different degrees and partly dissimilar. The degree of attention is average and the earlier mark enjoys a normal distinctiveness, as established above.

The signs are visually similar to a low degree and aurally and conceptually similar to an average degree to the extent that they share the verbal elements ‘AUGUSTO’/’AVGVSTO’. In addition to the findings above referring to the perception of the differing letters ‘U’ and ‘V’, 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). Consequently, it is reasonable to assume that consumers may not exactly recall the manner in which the signs were depicted, insofar they may have kept only the concept of the signs, namely the coinciding concept of the name ‘AUGUSTO’.

In addition, the average consumer usually perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 30-31). Therefore, bearing in mind the considerations above, a likelihood of confusion in the present case is highly probable to occur in normal market conditions when considering the independent and distinctive character of the coinciding elements ‘AUGUSTO’/’AVGVSTO’ in both signs.

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 opponents’ EUTM registration.

Given the principle of interdependence, account is taken of the fact that even though a low degree of visual similarity was established also in relation to the services in Class 43 (similar to a low degree), the signs are still sufficiently similar from an aural and conceptual perspective as to trigger an association of economic relation between the signs for these goods and services.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those 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 at these goods and services cannot be successful.

The opposition is also based on earlier Polish trade mark registration No R.080 795 for the word mark ‘AUGUSTO’. The Opposition Division notes that the scope of protection of this mark is narrower than that of the earlier right examined above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

REPUTATION — ARTICLE 8(5) EUTMR

The opponents further claimed that their national trade mark enjoys a reputation in Poland in relation to ice-cream.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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 provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponents do not submit appropriate evidence.

According to 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 Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 05/07/2017 the opponents were given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended upon the opponents’ request and expired on 10/01/2018.

The opponents did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

In the absence of any evidence of reputation and given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

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 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

Victoria DAFAUCE MENÉNDEZ

Manuela RUSEVA

Vita VORONECKAITE

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.