OPPOSITION No B 3 044 537

Can Bordoi Patrimoni SLU, C/Comte de Barcelona 15, 07013 Palma de Mallorca, Spain (opponent), represented by Elisa Arsuaga Santos, Paseo Sauces 14, no. 22 Urb. Montepríncipe, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Q MNGT BVBA, Winkelhoekstraat 23, 8870 Izegem, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 28/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 044 537 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 17 444 621 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 642 759 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) 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 services on which the opposition is based are the following:

Class 43: Restaurant services (services for providing food and drink); temporary accommodation; hotel services, tourism and holidays accommodations.

The contested goods and services are the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 43: Services for providing food and drink.

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 Classes 32 and 33

The contested goods in these classes are beverages (alcoholic and non-alcoholic) and preparations for making beverages. While it is true that goods are, by their nature, different from services, such as the opponent’s restaurant services (services for providing food and drink), the goods and services at issue nevertheless have points in common, namely they may have the same producers/providers, distribution channels and are complementary, which leads to a low degree of similarity between them.

In particular, in most European countries, establishments that make alcoholic drinks such as beer and wine also have restaurants where they sell their products (as well as food). Similarly to the beer and wine sector, there are also numerous manufacturers in the field of other non-alcoholic beverages which also cater for guests under their trade mark, for instance in direct marketing or in the field of outside catering. This means that these goods and services are similar to a certain degree (15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46; 21/06/2011, R 1012/2010‑2, my coffee (FIG. MARK) / MYCoffee (FIG. MARK), § 31).

Contested services in Class 43

The contested services for providing food and drink includes, as a broader category the opponent’s restaurant services (services for providing food and drink). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 letter ‘B’ present in both signs will be associated with a concept of a single letter ‘B’, which has no particular meaning in relation to the goods and services and is therefore distinctive. Out of other verbal elements that the marks consist of, only the element ‘Bar’ of the contested mark will be understood as conveying a concept (referring to an establishment for provision of, primarily, drinks) and considering that the services include the provision of beverages and the goods can be provided in bars, this element is non-distinctive in relation to the services and weak in relation to the goods. The remaining verbal elements are meaningless and distinctive to an average degree.

As regards the dominance of the elements, the letter ‘B’ in a frame is considered to be somewhat visually more eye-catching than the word ‘CanBordoy’ while in the contested mark all elements have the same visual impact.

Visually, the signs coincide to some extent in their layout, namely a combination of a one letter element in a frame with the two-word elements below it. However, such structure is by no means unusual or original in trade marks and this coincidence cannot be attributed too much relevance. Furthermore, the proportions of those elements differ: in the earlier mark the letter ‘B’ in a frame is notably larger than the words ‘CanBordoy’, while the letter ‘B’ in a frame in the contested mark is of the same size (if not smaller) than the other upper-case letters in the same mark. The two words in each sign, ‘CanBordoy’ and ‘BarBasille’, have a similar structure in terms of number of letters and the use of upper- and lower-case letter combination, namely, the first and the fourth letters are capitalised, which is not a very fanciful visual technique and cannot be attributed too much importance. The marks differ significantly in the verbal elements placed in the lower part, ‘CanBordoy’ v ‘BarBasille’. These elements are dissimilar to each other as they only coincide in some random letters (i.e. the second letter is ‘a’ and the fourth letter is ‘B’), which cannot be considered a sufficiently relevant coincidence in words of nine and ten letters to render a degree of similarity. The colours used to depict all elements in both signs are also different; brown in the earlier mark and red/orange in the contested sign.

Having in mind the above, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘B’ that represents an element in both signs. However, the remaining parts of the marks are dissimilar, namely the syllables /can/bor/doy/ v /bar/ba/si/lle/. The coincidence in some letters (such as ‘A’ and ‘B’) is merely coincidental and does not render the sound of those elements similar as a whole. The signs are therefore aurally similar only to the extent of the sound of the letter ‘B’ at their beginnings, which, given the length of the signs as whole, makes them at most lowly similar. Contrary to the opponent’s arguments, it is unlikely that the consumers would refer to the marks by mentioning only the letter ‘B’. Considering the nature of the goods and services, the natural way of referring to them (e.g. while ordering goods or recommending a restaurant) is by referring to both marks by their word elements rather than the single letters, actually skipping the pronunciation of the latter. In the latter case, the marks are aurally dissimilar.

Conceptually, the signs have the concept of a single letter ‘B’ in common. The earlier mark’s element ‘CanBordoy’ is meaningless while the element ‘BarBasille’ will give the consumers an idea of a ‘bar called Basille’. Considering the depiction of the verbal elements in both signs where the letter ‘B’ is capitalised, the single letters ‘B’ in a frame in both signs are likely to be perceived as emphasising the word elements, namely ‘Bordoy’ form the earlier mark and ‘Bar’ and/or ‘Basille’ in the contested mark. Therefore, while both marks contain the single letter ‘B’, this concept, in conjunction with other elements of the signs, can only render them as a whole similar to a low degree only.

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 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 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

The goods are similar to a low degree and the services are identical to the opponent’s services. The relevant public is the public at large with an average degree of attention. The signs are visually similar to a very low degree while aurally they are at most similar to a low degree or are dissimilar. Conceptually the signs are also similar only to a low degree. The distinctiveness of the earlier mark as a whole is average.

While indeed, in general, the consumers tend to focus on the initial part of the mark, this principle cannot be applied in the same way in all circumstances. In particular, in the present case, due to the specificities of the market in which the marks would be used (see the aural comparison above) and the different link of the letters ‘B’ to the remaining part of the signs on the conceptual level, the similarities in the initial element (placed at the top of both signs) are not sufficient to render the marks similar to the extent that likelihood of confusion could arise. Most importantly, the words ‘CanBordoy’ and ‘BarBasille’ are totally different from the visual, aural and conceptual perspectives and these elements are the ones that carry more weight in the overall perception of the marks and would rather be the ones that are kept in the (imperfect) recollection of the consumers.

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). While the contested goods are only similar to a low degree, due to the low degree of similarity of the signs likelihood of confusion would not arise even in relation to the identical services.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition 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 are obviously not identical.

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

Michal KRUK

Vita VORONECKAITE

Victoria DAFAUCE MENÉNDEZ

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.