OPPOSITION No B 2 958 539

Cafhein SRL, Via Roma 2/15, 16121 Genoa, Italy (opponent)

a g a i n s t

Gleixner, Schmid & Sonnenberg GmbH, Herzogspitalstraße 10, 80331 Munich, Germany (applicant), represented by 24IP Law Group France, 48 rue Saint-Honoré, 75001 Paris, France (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 958 539 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 876 005 ‘Caphein’. The opposition is based on European Union trade mark registration No 15 786 114 . The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

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.

1. The goods and services

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

Class 21: Glasses, drinking vessels and barware; Coffee stirrers; Cruets; Glass jars; Food preserving jars of glass; Jars for household use; Feeding cups; Glass cups; Cups and mugs; Cups of paper or plastic; Bottles; Plastic bottles; Glass flasks [containers]; Coffee pots; Coffeepots, non-electric; Coffee pots not of precious metal; Serving bowls (hachi); Biodegradable paper pulp-based bowls; Lunch boxes made of plastic; Drinks containers; Sandwich boxes; Food storage containers; Thermal insulated containers for food or beverage; Mixing spoons [kitchen utensils]; Coffee scoops; Insulating sleeve holders for beverage cans; Insulating sleeve holder for beverage cups; Ceramics for kitchen use; Porcelain not included in other classes; Plates; Biodegradable paper pulp-based plates; Biodegradable plates; Paper plates; Plastic plates; Saucers; Mug racks; Foam drink holders; Heat-insulated containers; Bento boxes; Cookie jars; Tea caddies; Demitasse sets comprised of cups and saucers; Coffee services of ceramic; Coffee services, not of precious metal; Tea services [tableware]; Dishes; Cups; Paper cups; Tea cups; Cups made of pottery; Coffee mugs; Mugs; Teapots; Vacuum flasks for holding food; Vacuum flasks for holding drinks; Pots; Biodegradable trays; Biodegradable trays for domestic purposes; Cabarets [trays].

Class 25: Clothing; Footwear; Headgear.

Class 30: Coffee, teas and cocoa and substitutes therefor; Processed grains, starches, and goods made thereof, baking preparations and yeasts; Ice, ice creams, frozen yogurts and sorbets; Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Prepared savory foodstuffs made from potato flour; Prepared foodstuffs in the form of sauces; Filled baguettes; Baozi [stuffed buns]; Flapjacks; Chocolate-based ready-to-eat food bars; Soft pretzels; Brioches; Pretzels; Pies; Pancakes; Chips [cereal products]; Pasta salad; Rice salad; Wrap [sandwich]; Sandwiches containing salad; Sandwiches containing minced beef; Filled bread rolls; Toasted cheese sandwich with ham; Sandwiches containing fish fillet; Hamburgers contained in bread rolls; Sandwiches containing fish; Sandwiches containing chicken; Toasted sandwiches; Pasta containing stuffings; Pasta-based prepared meals; Rice-based prepared meals; Savory pastries; Pasta dishes; Rice based dishes; Meals consisting primarily of pasta; Prepared rice dishes; Prepared pizza meals; Ready-made dishes containing pasta; Prepared meals containing [principally] rice; Prepared meals containing [principally] pasta; Dry and liquid ready-to-serve meals, mainly consisting of rice; Fresh pizza; Pizzas; Pizzas [prepared]; Preserved pizzas; Boxed lunches consisting of rice, with added meat, fish or vegetables; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Snack food products made from rusk flour; Snack food products made from cereal starch; Snack food products made from maize flour; Quiches; Sandwiches; Cereal-based snack food; Snack food products made from cereal flour; Snack foods made from wheat; Snack foods made of whole wheat; Snacks manufactured from muesli; Snack food products consisting of cereal products; Sushi; French toast; Fresh pies; Salted tarts; Mincemeat pies.

Class 43: Providing information about bartending; Providing of food and drink via a mobile truck; Providing food and drink in Internet cafes; Providing food and drink in restaurants and bars; Providing food and drink for guests; Providing food and drink for guests in restaurants; Providing information about bar services; Providing personalized meal planning services via a website; Providing information in the nature of recipes for drinks; Delicatessens [restaurants]; Charitable services, namely providing food and drink catering; Food preparation services; Food preparation for others on an outsourcing basis; Preparation and provision of food and drink for immediate consumption; Pubs; Takeaway services; Contract food services; Bar services; Café services; Cafeteria services; Consulting services in the field of culinary arts; Consultancy services relating to food preparation; Consultancy services relating to food; Consultancy services relating to baking techniques; Providing drink services; Coffee supply services for offices [provision of beverages]; Ice cream parlour services; Self-service restaurant services; Serving food and drinks; Take-out restaurant services; Mobile restaurant services; Services for the preparation of food and drink; Provision of information relating to the preparation of food and drink; Snack-bars; Serving food and drink in Internet cafes; Serving food and drink in restaurants and bars; Serving food and drink for guests in restaurants.

The contested goods and services are the following:

Class 5: Vitamin fortified beverages.

Class 7: Vending machines; automated vending machines; automatic vending machines; refrigerated vending machines; vending machines [automatic distribution machines]; vending machines (Coin operated -); vending machines (Counter operated -).

Class 11: Tea filters [machines]; roasters (coffee -); coffee roasters; filters (coffee -), electric; coffee filters, electric; electric coffee filters; coffee roasting ovens; coffee roasting machines; electric coffee roasters; coffee bean roasting machines; sales counters [refrigerated].

Class 16: Coffee filters (Paper -); filters (Paper coffee -); paper coffee filters; paper filters for coffee; coffee filters of paper; paper tea filters; paper filters for coffee makers.

Class 21: Coffee grinders hand operated; coffee services tableware; coffee pots non-electric; containers for household or kitchen use; glasses, cups and mugs; drinking vessels; coffee filters, non-electric; tea filters; coffee filters not of paper being part of non-electric coffee makers; drinks containers.

Class 25: T-shirts; Tee-shirts; caps; pants; sweatshirts; hooded sweatshirts.

Class 29: Milk; flavored milk; milkshakes; milk-based food beverages, excluding milkshakes; milk-based beverages containing coffee; milk-based beverages containing fruit juice; milk-based beverages containing fruit; milk-based beverages containing chocolate; milk-based beverages containing tea; soy-based food beverage used as a milk substitute; milk-based energy drinks; dried milk powder; dairy-based beverage mixes; soy milk; fruit-based snack foods; fruit jams, compote, jellies; meat-based spread, fish-based spread, poultry-based spread, fruit-based spread, nut-based spread, vegetable-based spread, dairy-based spread; preserved fruit and vegetables, prepared meals consisting primarily of meat, soy, poultry, seafood, vegetables, fruits, tofu, and/or cheese; yogurt, yogurt-based beverages; whipping cream; prepared nuts, seasoned nuts, roasted nuts, nut-based snack foods; edible oils and fats.

Class 30: Ground and whole bean coffee; coffee-based beverages; cocoa; chocolate-based beverages; tea and herbal tea; tea and herbal tea-based beverages; coffee-based beverage mix; espresso-based beverage mix; chocolate-based beverage mix; tea-based beverage mix; herbal tea-based beverage mix; frozen confections, namely, ice cream, ice milk, frozen yogurt, frozen confections with tea, herbal tea and/or fruit flavoring; flavorings, other than essential oils, for beverages; vanilla flavoring; chocolate and candy confections; baked goods, namely, muffins, scones, biscuits, cookies, pastries and breads; sandwiches; prepared meals consisting primarily of pasta; prepared meals consisting primarily of rice; prepared meals consisting primarily of grains; chocolate-based spreads; processed cereal-derived food product to be used as a breakfast cereal; oatmeal; grain-based snack foods; crackers; popcorn; sugar; honey; agave syrup; sauces, namely condiments to add to beverages; salad dressings; filters in the form of paper bags filled with coffee; roasted coffee beans; coffee [roasted, powdered, granulated, or in drinks]; roasted barley and malt for use as substitute for coffee; sugar-coated coffee beans; coffee beans; ground coffee beans; ice cream drink; coffee essence; coffee capsules; iced tea; drinking containing cocoa.

Class 31: Raw cocoa beans; cocoa beans, raw; fresh ice cream beans.

Class 32: Fruit drinks, fruit juices, and fruit-based beverages; vegetable drinks, vegetable juices, and vegetable-based beverages; non-alcoholic beverages, namely carbonated beverages, soft drinks; energy drinks, isotonic beverages; liquid mixes for making soft drinks and fruit-based beverages; powders used in the preparation of soft drinks and fruit-based beverages; syrups for beverages; flavored and unflavored bottled drinking water, mineral water, aerated waters; soy-based beverages not being milk substitutes; fruit concentrates and purees used for making beverages; coffee flavored beer; beer and brewery products; sport drinks; slush drinks; Nutritionally fortified beverages.

Class 33: Alcoholic beverages; Premixed alcoholic beverages; Spirits and liquors; coffee based spirits and liqueurs; red wine, white wine, sparkling wine; fruit wine.

Class 35: Promotion of special events; sales promotion services; rental of sales stands.

Class 40: Coffee roasting and processing; coffee grinding.

Class 41: Organising of recreational events; organising of sporting events; organising of sports events; provision of sporting events; arranging of sporting events; sports events (timing of -); production of sporting events; arranging of educational events; arranging of cultural events; conducting of sports events; organization of dancing events

Class 43: Restaurant, cafe, cafeteria, snack bar, coffee bar, tea bar, tea house, and carry out restaurant services; bar services; catering services; preparation of food and beverages; contract beverage services; restaurant services featuring a customer loyalty program that provides restaurant benefits to reward repeat customers.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods in Class 30 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is moreover 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 contested vitamin fortified beverages coincide in several factors with the opponent’s coffee, teas and cocoa and substitutes therefor in Class 30 and hence are similar thereto. Indeed, they coincide in nature and they are likely to coincide in method of use. Moreover, they address at the same consumers and are distributed through the same commercial channels.

Contested goods in Class 7

The contested vending machines; automated vending machines; automatic vending machines; refrigerated vending machines; vending machines [automatic distribution machines]; vending machines (Coin operated -); vending machines (Counter operated -) are dissimilar to all of the opponent’s goods and services because they have nothing in common. Although the goods applied for may be used in relation to some of the opponent’s goods, for example, coffee, this fact alone does not make them complementary, since they are not necessary or important for one another and the relevant public for a vending machine is not the same as a consumer seeking to obtain a drink through a vending machine. Moreover, the purpose of coffee or other beverages is to quench thirst or act as a stimulant while the purpose of a vending machine is to dispense/sell goods. In addition, these contested goods are of a very different nature, they are usually not marketed by the same undertakings and have different methods of use compared to all of the opponent’s goods and services. Accordingly, for all the above mentioned reasons these contested goods are dissimilar to the opponent’s goods and services.

Contested goods in Class 11

The contested tea filters [machines]; roasters (coffee -); coffee roasters; filters (coffee -), electric; coffee filters, electric; electric coffee filters; coffee roasting ovens; coffee roasting machines; electric coffee roasters; coffee bean roasting machines; sales counters [refrigerated] are similar to the opponent’s glasses, drinking vessels and barware in Class 21 because they address at the same consumers, are distributed through the same channels and usually come from the same undertakings.

Contested goods in Class 16

The contested coffee filters (Paper -); filters (Paper coffee -); paper coffee filters; paper filters for coffee; coffee filters of paper; paper tea filters; paper filters for coffee makers are similar to a low degree to the opponent’s coffee, teas and substitutes therefor in Class 30 because they coincide in end user and in producer.

Contested goods in Class 21

Glasses, cups and mugs; coffee pots non-electric; drinks containers are identically contained in both lists of goods (including synonyms).

The contested drinking vessels include the opponent’s glass cups. As the Office cannot dissect ex officio broad categories of contested goods, these goods have to be considered identical.

The contested coffee services tableware includes, as a broader category, the opponent’s cups and mugs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods above mentioned.

The contested containers for household or kitchen use constitute a broad category which includes the opponent’s drinks containers. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods above mentioned.

The contested coffee grinders hand operated; coffee filters, non-electric; coffee filters not of paper being part of non-electric coffee makers are similar to the opponent’s coffeepots, non-electric because they coincide in distribution channels, end user and producer.

The contested tea filters are similar to a low degree to the opponent’s teas because they coincide in end user and are generally offered by the same undertakings along with the teas they sell.

Contested goods in Class 25

The contested caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested t-shirts; tee-shirts; pants; sweatshirts; hooded sweatshirts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested goods in Class 29

The contested preserved fruit and vegetables are highly similar to the opponent’s condiments. As the opponent’s condiments include goods such as sauces which could be fruits and/or vegetables sauces, it can be considered not only that these goods have the same purpose, that they usually coincide in producer, relevant public and distribution channels but also that they are in competition.

The contested fruit-based snack foods are similar to the opponent’s snack food products consisting of cereal products in Class 30 because they coincide in purpose and method of use as well as in end user and producer. Furthermore, they are in competition.

The contested prepared nuts, seasoned nuts, roasted nuts, nut-based snack foods are similar to the opponent’s flapjacks in Class 30 because they coincide in purpose and method of use as well as in end user and producer. Furthermore, they are in competition.

The contested milk; flavored milk; milkshakes; milk-based food beverages, excluding milkshakes; milk-based beverages containing coffee; milk-based beverages containing fruit juice; milk-based beverages containing fruit; milk-based beverages containing chocolate; milk-based beverages containing tea; soy-based food beverage used as a milk substitute; milk-based energy drinks; dried milk powder; dairy-based beverage mixes; soy milk; yogurt, yogurt-based beverages; whipping cream are at least similar to the opponent’s ice creams, frozen yogurts and sorbets because they target the same consumer, are generally produced by the same companies and distributed through the same channels. Furthermore, some of these products are in competition.

The contested edible oils and fats are similar to the opponent’s condiments because they coincide in purpose and they could coincide in method of use in addition to being directed at the same consumers, originating from the same companies and being distributed through the same distribution channels.

The contested fruit jams, compote, jellies; meat-based spread, fish-based spread, poultry-based spread; fruit-based spread, nut-based spread, vegetable-based spread, dairy-based spread are similar to a low degree to the opponent’s broad category condiments, which, as explained above covers products such as sauces because they coincide in purpose, they address at the same consumers and they are usually distributed through the same channels.

The contested prepared meals consisting primarily of meat, soy, poultry, seafood, vegetables, fruits, tofu, and/or cheese are dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user, are generally not produced/offered by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested goods in Class 30

Sandwiches; prepared meals consisting primarily of rice; prepared meals consisting primarily of pasta are identically contained in both lists of goods (including synonyms).

As the contested oatmeal is made of hulled oat grains – groats – that have either been milled, steel-cut, or rolled, it is included in the broad category of the opponent’s processed grains and goods made thereof, baking preparations and yeasts. Therefore, these goods have to be considered identical.

The contested prepared meals consisting primarily of grains; grain-based snack foods are included in the broad category of the opponent’s processed grains, and goods made thereof. Therefore, they are identical.

The contested baked goods, namely, muffins, scones, biscuits, cookies, pastries and breads; chocolate-based spreads; sugar-coated coffee beans are included in the broad category of the opponent’s broad category baked goods, confectionery, chocolate and desserts. Therefore, they are identical.

The contested chocolate and candy confections are included in the opponent’s broad category confectionery, chocolate. Therefore, these goods are identical.

The contested salad dressings are included in the broad category of the opponent’s seasonings and condiments. Therefore, they are identical.

The contested ground and whole bean coffee; coffee-based beverages; coffee-based beverage mix; espresso-based beverage mix; filters in the form of paper bags filled with coffee; roasted coffee beans; coffee [roasted, powdered, granulated, or in drinks]; roasted barley and malt for use as substitute for coffee; coffee beans; ground coffee beans; coffee capsules are included in the broad category of the opponent’s coffee, teas and cocoa and substitutes therefor. It follows that they are identical.

The contested cocoa; chocolate-based beverages; chocolate-based beverage mix; drinking containing cocoa are included in the broad category of the opponent’s cocoa and substitutes therefor. Consequently, they are identical.

The contested tea and herbal tea; tea and herbal tea-based beverages; tea-based beverage mix; herbal tea-based beverage mix; iced tea are included in the broad category of the opponent’s teas and substitutes therefor. Therefore, they are identical.

The contested flavorings, other than essential oils, for beverages; vanilla flavoring; sauces, namely condiments to add to beverages; coffee essence are included in the broad category of the opponent’s flavourings and condiments. Therefore, they are identical.

The contested crackers, being thin dry biscuits, are included in the broad category of the opponent’s baked goods. Therefore, they are identical.

The contested ice cream drink is included in, or overlaps with, the opponent’s ice creams. Therefore, they are identical.

The contested popcorn is included in the broad category of the opponent’s snack food products consisting of cereal products. Therefore, they are identical.

The contested frozen confections, namely, ice cream, ice milk, frozen yogurt, frozen confections with tea, herbal tea and/or fruit flavoring are identical to the opponent’s ice creams, frozen yogurts and sorbets, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested processed cereal-derived food product to be used as a breakfast cereal is similar to a high degree to the opponent’s snack food products consisting of cereal products because these goods coincide in nature, purpose, end user, producer and distribution channels. Furthermore, they are in competition.

The contested sugar; honey; agave syrup are dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user, are not generally produced by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested goods in Class 31

The contested raw cocoa beans; cocoa beans, raw are similar to a low degree to the opponent’s coffee, teas and cocoa and substitutes therefor because they have a similar purpose, they are in competition with each other and target the same consumers.

The contested fresh ice cream beans are similar to a low degree to the opponent’s desserts because they have a similar purpose, they are in competition with each other and target the same consumers.

Contested goods in Class 32

The contested syrups for beverages; liquid mixes for making soft drinks and fruit-based beverages; powders used in the preparation of soft drinks and fruit-based beverages; fruit concentrates and purees used for making beverages are similar to a low degree to the opponent’s coffee, teas and cocoa and substitutes therefor because they coincide in method of use, in relevant public and distribution channels.

The contested nutritionally fortified beverages; fruit drinks, fruit juices, and fruit-based beverages; vegetable drinks, vegetable juices, and vegetable-based beverages; soy-based beverages not being milk substitutes; non-alcoholic beverages, namely carbonated beverages, soft drinks; energy drinks, isotonic beverages; sport drinks; slush drinks are similar to the opponent’s broad category coffee, teas and cocoa and substitutes therefor because they coincide in method of use, in relevant public and distribution channels and they could be in competition.

The contested flavored and unflavored bottled drinking water, mineral water, aerated waters; coffee flavored beer; beer and brewery products are however dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user, they are generally not produced by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested goods in Class 33

The contested alcoholic beverages; premixed alcoholic beverages; spirits and liquors; coffee based spirits and liqueurs; red wine, white wine, sparkling wine; fruit wine are dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user, they are generally not produced by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested services in Class 35

The contested promotion of special events; sales promotion services; rental of sales stands are dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user, they are generally not produced by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested services in Class 40

The contested services coffee roasting and processing; coffee grinding are similar to the opponent’s coffee supply services for offices [provision of beverages] and café services in Class 43. Although the majority of coffee is processed on a large commercial scale, these services are also performed at small scale, especially in coffee shops, where brewed coffee is also sold to the public. These services can thus not only be performed by the providers of the opponent’s café services but also by the same undertaking that provides the opponent’s coffee supply services for offices [provision of beverages] in Class 43. These services can, therefore, have the same commercial origin, have the same purpose (process coffee, including roasting and grinding), can have the same distribution channels and target the same public, and the latter may indeed believe that the services are provided by the same undertaking.

Contested services in Class 41

The contested organising of recreational events; organising of sporting events; organising of sports events; provision of sporting events; arranging of sporting events; sports events (timing of -); production of sporting events; arranging of educational events; arranging of cultural events; conducting of sports events; organization of dancing events are dissimilar to all of the opponent’s goods and services because they have nothing in common. They are of a different nature and have a different purpose. They do not follow the same method of use. They do not target the same end user are not generally produced by the same companies and they do not share the same distribution channels either. They are neither in competition nor complementary.

Contested services in Class 43

Bar services are identically contained in both lists of services (including synonyms).

The contested restaurant, cafe, cafeteria, snack bar, coffee bar, tea bar, tea house, and carry out restaurant services; catering services; preparation of food and beverages; contract beverage services; restaurant services featuring a customer loyalty program that provides restaurant benefits to reward repeat customers are identical to the opponent’s preparation and provision of food and drink for immediate consumption, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

2. Relevant public — degree of attention

The average consumer of the category of products or services 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 relevant goods and services target both the public at large and professionals.

The degree of attention of the relevant public when purchasing and/or selecting the goods and services in question in the present case may vary from low to average, depending on the exact nature of the product or the service, the frequency of purchase, their specialised nature as well as their price.

3. The signs

	Caphein
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 earlier mark is a figurative mark made of four word elements and numbers, namely, ‘Ca’ and ‘20’, ‘F’ and ‘9’, ’He’ and ‘2’ and ‘In’ and ‘49’ displayed against coloured squares with rounded edges.

As argued by the applicant, it is very likely that, owing particularly to their specific graphical representation, a significant part of the relevant public in the relevant territory will perceive the elements within the squares as corresponding to four different chemical elements of Mendeleev’s periodic table, namely, ‘Calcium’ (‘Ca’ and ‘20’), ‘Flourine’ (‘F’ and 9), ‘Helium’ (‘He’ and ‘2’) and ‘Indium’ (‘In’ and ‘49’). Moreover, in the Opposition Division’s view, this holds true irrespective of the fact that the colours of the squares do not correspond to these used on Mendeleev’s periodic table and of whether or not the consumer is aware of the exact meaning of the letter (combination) and/or the figure.

The residual part of the public that would not see elements of Mendeleev’s periodic table in the earlier mark, would perceive the individual elements of the earlier mark as mere (combinations of) letters ‘Ca’, ‘F’, ‘He’ and ‘In’ without further concept and/or as forming a word, namely, ‘Cafhein’, which is also meaningless in the relevant territory.

Even where perceived as meaningful, these elements have no specific meaning in relation to the goods and services in question in the present case and therefore, are judged distinctive, both individually and in combination.

Considering that the figurative elements of the earlier mark do not play an exclusively decorative role, but play a rather important role in the concepts conveyed by the earlier mark, and in any event due to their significant visual impact, greatly contribute to its distinctive character, they are also distinctive.

Therefore, the earlier mark has no element that could be considered more distinctive than other elements. However, the squares and the letters and letter combinations are more eye-catching and hence more dominant than the numbers.

The contested sign is a word mark made up of the single element ‘Caphein’ which, according to the applicant, ‘is a misspelling of the word ‘caffeine’ as the Vietnamese word for coffee is caphe’.

However, on the one hand, Vietnamese is neither an official language in the relevant territory nor can it be assumed to be understood in the relevant territory (26/11/2008, T-435/07, EU:T:2008:534, New Look, § 22) and, on the other hand, it has no meaning as such, in any part of the relevant territory. Therefore, the Opposition Division considers that the public in the relevant territory will perceive the contested sign as meaningless.

As the contested sign is a word mark made up of a single word, which is unlikely to be broken down, it has no element that could be considered more distinctive or dominant than other elements.

Visually, the signs coincide in so far as both include the combination of letters ‘Ca’, ‘he’ and ‘in’ in the same position in both signs. However, they differ in their respective third letters, being ‘F’ in the earlier mark and ‘p’ in the contested sign. Moreover, they also greatly differ in the representation of the common letters in each of the signs since, as seen above, the letters of the earlier mark are represented in such a way that each combination of letters or each letter and the number alongside it corresponds to chemical elements, whereas the letters of the contested sign are assembled in a way that forms a fanciful word. Finally, due to their respective specific representation, the marks give the impression of having different lengths, in spite of being composed of the same number of letters.

Although the signs contain the same number of letters, with only one differing letter, which is placed in the middle of the signs, due to the original and fanciful layout and additional colour, figurative and numerical elements of the earlier mark, the signs are similar at most to a low degree.

Indeed, the overall visual impression is so different in each sign, that the relevance of the common letters is greatly diminished.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters’ Ca’ and ‘in’ in the beginning and end of both signs. Besides, it is likely to coincide for part of the public for which the letter ‘F’ and ‘He’ on the one hand and the combination of letters ‘ph’ and ‘e’ on the other hand produce the same sound, for example, the French-speaking public. However, given that the letters of the earlier mark are separated by spaces and on different height levels which may well result in the consumer pausing to contemplate how to pronounce the sign or breaking it up to pronounce it as individual parts as depicted, this will be aurally reflected, while the contested sign’s letters are placed altogether and form a single word. Therefore, the marks do not have the same rhythm and intonation.

Consequently, depending on the pronunciation rules in different parts of the territories, the aural similarity between the signs could vary between average and high.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier mark will evoke one or several concepts, while the contested sign is meaningless, the signs are not conceptually similar.

As stated above indeed, the earlier mark will be associated with the general concept of the chemical elements they represent and/or the more specific elements that they represent by the significant part of the public. Therefore, and irrespective of the more specific concepts that the earlier mark might also evoke, for example, the concept of ‘Calcium’ that could be triggered by the letter combination ‘Ca’ and/or the number ‘20’, the signs are not similar for this part of the public since the contested sign does not convey any, or the same concept. Moreover, even for the remaining part of the public, for whom the various elements of the earlier mark do not evoke chemical elements/Mendeleev’s periodic table, the fact remains that, at least the figures will be perceived and associated with concepts (the number that they represent) that do not have any counterpart in the contested sign.

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 opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. 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).

As explained above, the distinctiveness of the earlier mark is also one of the factors to be taken into account in the global assessment of likelihood of confusion

In addition, account should be taken of the usual method of commercialisation of the goods and services in question. In particular, in cases where the products in question are commonly purchased in supermarkets or establishments where they are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for, the visual aspect should be given more weight (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). In contrast, in cases in which the goods are most likely to be ordered aurally, the aural similarity should be given more weight.

These considerations also come into play when assessing the likelihood of confusion between two signs.

In the present case, the earlier mark has an average degree of distinctiveness.

The contested goods and services are partly identical, partly similar to varying degrees, and partly dissimilar to the opponent’s goods and services. The degree of attention of the relevant consumer of the goods and services that have been found identical or similar to the opponent’s goods and services may vary between low and average.

As to the signs, it has been observed that, despite the coincidence in six out of the seven letters of which they both consist, the marks are visually similar to only a low degree. This is because these letters are represented in very different ways in each of the signs. Indeed, while the letters of the earlier mark form four different (meaningful) elements, the letters of the contested sign form a single fanciful verbal element. Moreover, the earlier mark further contains a number of elements which play an important role therein, and which are not reproduced in the contested sign.

In particular, the various figurative aspects and elements of the earlier mark greatly contribute to the overall impression, in particular visual and conceptual, produced by the earlier mark and to its distinctiveness. Moreover, as mentioned before this layout will also affect the oral pronunciation.

Against this background there can be no likelihood of confusion between the marks in question even in the context of identical goods and services.

Indeed, in view of the usual method of purchase of the goods in question for which the level of attention is likely to be low (e.g. chocolate and candy confections), the visual aspect is particularly relevant while the aural aspect has little significance, which will help consumers distinguishing between the signs.

Besides, they are not conceptually similar, and considering that the earlier mark conveys one or several specific concept(s) that the public will grasp immediately and which are not present in the contested sign, the Opposition Division considers that in the present case, the conceptual difference counteracts to a large degree the phonetic similarities between the marks in question (see, to that effect, 18/12/2008, C-16/06 P, Les Éditions Albert René SARL, EU:C:2008:73998, § 98; 11/11/2009, T-277/08, CITRACAL, § 53; 12/07/2006, T-277/04, VITACOAT, EU:T:2006:202, § 56 to 62).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition based on Article 8(1)(b) EUTMR must be rejected.

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 because the signs and/or the goods and services are not identical.

However, as the opponent has also invoked Article 8(5) EUTMR, the examination of the merits of the opposition will proceed in so far as based on that ground.

REPUTATION — ARTICLE 8(5) EUTMR

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 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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 opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall 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, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall 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 12/10/2017 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 17/02/2018.

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

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.

CONCLUSION

In light of all of the above, the opposition as based on Articles 8(1)(a), (b) and 8(5) EUTMR is not well founded.

Therefore, the opposition is rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.