OPPOSITION No B 3 062 972

Silvia De La Vega Gomez, Asunción 62, 41011, Sevilla, Spain (opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001, Sevilla, Spain (professional representative)

a g a i n s t

Bobby&Fritz GmbH, Goethestr. 89, 45130 Essen, Germany (applicant), represented by Redeker Sellner Dahs, Willy-Brandt-Allee 11, 53113 Bonn, Germany (professional representative).

On 16/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 972 is partially upheld, namely for the following contested services:

Class 43: Services for providing food and drink; Bar services; Catering for the provision of food and beverages; Party planning (providing of food and drink); Café services; Restaurants; Snackbars; Cafeterias; Canteens; Self-service restaurant services; All of the aforesaid services, not being for animals.

2. European Union trade mark application No 17 888 810 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 888 810 ‘Sloppy Bob’ namely against all the goods in Classes 16, 29 and 30, and some of the services in Classes 35 and 43. The opposition is based on European Union trade mark registration No 1 212 984 , Spanish trade mark registration No 2 247 056 and Spanish trade mark registration No 3 610 571 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 Spanish trade mark registration No 2 247 056 .

a) The goods and services

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

Class 42: Bar, cafeteria, brewery, restaurant, hamburgueseria and pizzeria services.

The contested goods and services are the following:

Class 16: Paper cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture);Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 29: Ajvar [preserved peppers]; Protein milk; Weed extracts for food; Alginates for culinary purposes; Apple purée; Oysters, not live; Black pudding; Beans, preserved; Bouillon, bouillon concentrates; Fat-containing mixtures for bread slices; Butter; Buttercream; Dates; Curd; Eggs; Alcohol-free egg cocktails; Yolk of eggs; Powdered eggs; Albumen for culinary purposes; White of eggs; Peas, preserved; Peanut butter; Peanuts, processed; Gherkins; Low-fat potato crisps; Fatty substances for the manufacture of edible fats; Salted fish; Fish, preserved; Fish; Fish fillets; Foods made from fish; Fish, tinned [canned (Am.)]; Isinglass for food; Fish meal for human consumption; Mousses (Fish -); Processed fish spawn; Meat; Preserved meat; Broth concentrates; Meat extracts; Meat jellies; Canned meat; Salted meats; Fruit, stewed; Fruit preserved in alcohol; Fruit, preserved; Frozen fruits; Fruit chips; Fruit jellies; Fruit pulp; Fruit salads; Fruit-based snack food; Jellies; Prawns, not live; Poultry, not live; Gelatine; Jellies; Vegetables, cooked; Vegetables, dried; Vegetable preserves; Vegetables, tinned [canned (Am.)]; Mousses (Vegetable -); Vegetable salads; Toasted laver; Herrings; Lobsters, not live; Ginger jam; Yoghurt; Vegetable soup preparations; Cocoa butter; Tripe Crystallized fruits; Potato chips; Potato products, namely potatoes in roast, cooked, fried or prepared form, chips, potato croquettes, potato pancakes, potato dumplings, roast potatoes; Cheese; Caviar; Kephir [milk beverage]; Hummus [chickpea paste]; Preserved garlic; Animal marrow for food; Bone oil, edible; Coconut butter; Coconut oil and fat [for food]; Coconut, desiccated; Coconut oil for food; Jams; Soups; Crayfish, not live; Croquettes; Crustaceans, not live; Kumys [kumyss] [milk beverage]; Tripe; Rennet; Salmon; Spiny lobsters, not live; Kimchi [fermented vegetable dish]; Liver; Liver pâté; Linseed oil for culinary purposes; Lecithin for culinary purposes; Lentils, preserved; Maize oil for food; Almonds, ground; Margarine; Marmalade; Milk; Ferments (Milk -) for culinary purposes; Milk beverages, milk predominating; Milk products; Milk shakes; Whey; Mussels (not live); Nuts, prepared; Fruit, stewed; Preserved fruits; Frozen fruits; Fruits, tinned [canned (Am.)]; Fruit salads; Oils for food; Olives, preserved; Olive oil for food; Palm kernel oil for food; Palm oil for food; Pectin for culinary purposes; Vegetable juices for cooking; Pickles; Mushrooms,

preserved; Salted fish; Salted meats; Pollen prepared as foodstuff; Cranberry sauce (compote); curd; Cream (dairy products); Colza oil for food; Raisins; Cream [dairy products]; Processed seeds; Anchovy, not live; Sardines; Sauerkraut; Fruit peel; Shellfish, not live; Ham; Whipped cream; Snail eggs for consumption; Pork; Lard; Sea-cucumbers, not live; Silkworm chrysalis, for human consumption; Sesame oil for food; Tahini [sesame seed paste]; Shrimps, not live; Soya beans, preserved, for food; Soya milk [milk substitute]; Processed sunflower seeds; Sunflower oil for food; Bacon; Edible fats; Oils for food; Suet for food; Soups; Soup (Preparations for making -); Tuna fish; Tofu; Tomato purée; Tomato juice for cooking; Truffles, preserved; Clams, not live; Aloe vera prepared for human consumption; Edible bird's nests; Shellfish [not live]; Game; Sausages; Sausages in batter; Meat; Onions, preserved.

Class 30: Seaweed [condiment]; Aniseed; Flavourings, other than essential oils, for beverages; Flavorings, other than essential oils; Wheat flour; Flavourings, other than essential oils, for cakes; Beer vinegar; Thickening agents for cooking foodstuffs; Ice cream (Binding agents for -); Bean meal; Chow-chow (condiment); Chutneys [condiments]; Couscous [semolina]; Curry [spice]; Custard; Essences for foodstuffs, except etheric essences and essential oils; Vinegar; Vermicelli [noodles]; Ready-made dishes containing pasta; Meat tenderizers, for household purposes; Meat pies; Meat gravies; Fruit sauces; Royal jelly for human consumption (not for medical purposes); Hominy; Husked barley; Pearl barley; Barley meal; Barley (Crushed -); Spices; Condiments; Cloves [spice]; glucose for food; Gluten for food; Semolina; Groats for human food; Crushed oats; Oat flakes; Oatmeal; Husked oats; Halvah; Yeast in pill form, not for medical use; Honey; Ginger [spice]; Coffee; Artificial coffee; Vegetal preparations for use as coffee substitutes; Coffee flavorings [flavourings]; Coffee-based beverages; Capers; Potato flour; Catsup; Gluten for food; Cooking salt; Salt for preserving foodstuffs; Crackers; Infusions, not medicinal; Cakes; Garden herbs, preserved [seasonings]; Cake powder; Cake dough; Edible decorations for cakes; Ice; Turmeric; Maize, milled; Maize, roasted; Maize flakes; Hominy grits; Maize flour; maize samp; Macaroni; Macaroons [pastry]; Maltose; Malt for human consumption; Malt biscuits; Malt extract for food; Maltose; Mayonnaise; Sea water for cooking; Flour (food); Molasses for food; Golden syrup; Gruel, with a milk base, for food; Coffee beverages with milk; Flour-milling products; Nutmeg; Muesli; Oat-based food; Peppers(seasonings); Noodles; Breadcrumbs; Pasta; Pies; Pancakes; Pepper; Peppermint candy; Pide (flat bread); Peppers [seasonings]; Pizza; Popcorn; Bee glue (propolis) for human consumption; Popcorn; Quiches; Ravioli; Rice; Ricebased snack food; Relish [condiment]; Coffee (Unroasted -); Saffron [seasoning]; Sago; Whipped cream (Preparations for stiffening -); Dressings; Salt; Sandwiches; Sauces (spices); Leaven; Allspice; Celery salt; Bread rolls; Mustard; Mustard meal; Soya bean paste [condiment]; Soya flour; Soya sauce; Sauces [condiments]; Spaghetti; Starches for food; Starch for food; Star aniseed; Sushi; Sweeteners (Natural - ); Tabbouleh; Tacos; Tapioca; Tapioca flour; Tea; Ferments for pastes; Farinaceous food pastes; Tomato sauce; Tortillas; Glucose for food; Vanillin [vanilla substitute]; Wraps (pasta); Sausage binding materials; Seasonings; Aromatic preparations for food; Chicory [coffee substitute]; Cinnamon [spice]; Piccalilli.

Class 35: Franchising, namely professional business consultancy for franchisees and assistance with regard to professional business organisation and management, in particular with regard to the organisation and management of restaurants, the recruitment and placement of personnel, with regard to public relations, with regard to shop window dressing and with regard to advertising and marketing; Updating and maintenance of data in computer databases; Updating of advertising material; Temporary personnel services; Cost price analysis; Business inquiries; Business management and organization consultancy; Business management consultancy and advisory services; Advisory services for business management; Procurement services for others [purchasing goods and services for other businesses]; Import-export agencies; Business consulting; Business auditing; Office functions; Commercial or industrial management assistance; Business information; Commercial administration of the licensing of the goods and services of others; Searches for customers and promotion of customer loyalty via mail advertising; Layout services for advertising purposes; Modelling for advertising or sales promotion; Outsourcing services [business assistance]; Personnel recruitment; Personnel selection using psychological testing; Personnel management consulting; Bill-posting; Planning and monitoring of business developments with regard to organisational matters; Assistance in management of business activities; Presentation of companies on the Internet and other media; Presentation of goods on communication media, for retail purposes; Price comparison services; News clipping services; Shop window dressing; Word processing; Sponsorship search; sponsorship in the form of advertising; Providing of temporary staff; Business consultancy and advisory services; Business administration; Consumer consultancy; Sales promotion (for others); Rental of vending machines; Rental of sales stands; Rental of advertising space; Rental of advertising space on the internet; Publicity material rental; Rental of advertising time on communication media; providing of business addresses for advertising purposes; Arranging of trading and economical contacts, also over the Internet; arranging commercial transactions for third parties, also within the framework of e-commerce; Arranging of contracts, for others, for the purchase and sale of goods; Arranging of contracts, for others, for the providing of services; Arranging advertising contracts for others; Temporary personnel services; Sample distribution; Administrative order processing; Demonstration of goods; Goods and services presentations; Collection of goods, for others, for presentation purposes; All of the aforesaid services not in connection with products for animals and animal husbandry.

Class 43: Services for providing food and drink.; Bar services; Catering for the provision of food and beverages; Party planning (providing of food and drink);Rental of ovens and cooking apparatus; Rental of tableware and cutlery; Rental of chairs, tables, table linen, glassware; Rental of meeting rooms; Café services; Restaurants; Snackbars; Cafeterias; Canteens; Self-service restaurant services; All of the aforesaid services, not being for animals.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 16

The goods in this class are paper, stationary articles, typewriters and various types of artist’s materials among other things. These goods have no points in common with the opponent’s services which entail providing food and drink to customers directly for consumption. The goods and services have different nature, purpose and methods of use. The goods and services have different origins/ manufacturers, different distribution channels and users. These goods are dissimilar to all the opponent’s services.

Contested goods in Class 29

The goods in this class are food products. The opponent’s provision of food and drinks in Class 42 (now Class 43) mainly covers services of a restaurant or similar services, such as cafeterias and snack bars. These services are intended for serving food and drinks directly for consumption.

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, 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). Goods or 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. The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc. does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).

On the other hand, consumers may think that responsibility does lie with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly offered by the same undertaking under the same trade mark (e.g. coffee in their coffee shops, ice cream in their ice cream parlours, beer in pubs). In such cases, there is a low degree of similarity.

The contested goods being, or falling within the category of, edible oils and fats (i.e. Fat-containing mixtures for bread slices; Fatty substances for the manufacture of edible fats; Bone oil, edible; coconut butter; Coconut oil and fat [for food]; Coconut oil for food; Linseed oil for culinary purposes; Maize oil for food; oils for food (listed twice); Olive oil for food; Palm kernel oil for food; Palm oil for food; Colza oil for food; Lard; Sesame oil for food; Sunflower oil for food; Edible fats; suet for food), certain dairy products and their substitutes (i.e. butter; buttercream; curd (listed twice); cheese; kephir [milk beverage]; kumys [kumyss] [milk beverage]; rennet; margarine; ferments (milk -) for culinary purposes; whey; cream [dairy products] (listed twice); whipped cream; soya milk [milk substitute]; tofu), soups and edible bird's nests have different nature, purpose and methods of use compared to the opponent’s services, which essentially are restauration services. The goods and services are not complementary nor have the same distribution channels and origins. More importantly, it is not common that establishments providing food and drink serve these types of foodstuffs as a meal, or for take-away under the same trade mark. Therefore, these goods are dissimilar to the opponent’s services.

However, the remaining contested goods are various types of food products, fresh, preserved or cooked. It cannot be excluded that these goods either are commonly offered by restauration establishments as a meal or as take-away food (e.g. Fish; Meat (listed twice); Meat extracts; Fruit, preserved; Frozen fruits; Jellies (listed twice); Vegetables, cooked; Vegetables, dried; Vegetable preserves; Jams; Milk products; Milk shakes; Preserved fruits; Frozen fruits; Game), or are used in the provision of the opponent’s services (e.g. milk; Eggs) which renders them complementary. Restauration services may be offered in the same places as those in which the products in question are sold. For example fishmongers offer their customers a selection of fish and seafood to take away or to be cooked and eaten on the premises (in an adjoining restaurant). A restaurant may cultivate a vegetable plot and use those goods to make its dishes. It may also make some dishes to take away (for example, cooked pear or apple, etc.). There are also country restaurants which make conserves, place them on shelves by the till and sell them to their customers (for example, cooked peppers in olive oil, cooked pears preserved in alcohol, etc.). Even though the comparison is between services on the one hand and goods on the other, the different nature and objectives of those goods and services cannot counteract the similarity which exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services. (13/04/2011, T 345/09, Puerta de Labastida, EU:T:2011:173; Decision of 12 February 2014 – R 886/2013-2 – Cremeria Toscana (Fig. mark) / La Cremeria (Fig. mark) et al.; 'Cremeria Toscana', Decision Of 14 July 2011 – R 2152/2010-1 – Neuro Bliss / Bliss (Fig. Mark). It follows, therefore, that all these remaining contested goods are similar to a low degree to the opponent’s services.

Contested goods in Class 30

Similar explanation as in class 29 also applies to the goods in this class.

The contested goods which are, or fall within the category of, salts, seasonings and flavourings (i.e. aniseed; flavourings, other than essential oils, for beverages; flavourings, other than essential oils, for cakes; beer vinegar; Curry [spice]; essences for foodstuffs, except etheric essences and essential oils; vinegar; meat tenderizers, for household purposes; Spices; Cloves [spice]; Ginger [spice]; coffee flavorings [flavourings]; Cooking salt; Salt for preserving foodstuffs; Garden herbs, preserved [seasonings]; turmeric; sea water for cooking; nutmeg; Peppers (seasonings); pepper; Peppers [seasonings]; Saffron [seasoning]; Salt; Allspice; celery salt; star aniseed; vanillin [vanilla substitute]; Seasonings; aromatic preparations for food; Cinnamon [spice]), processed grains (i.e. wheat flour; bean meal; barley meal; barley (crushed); semolina; groats for human food; potato flour; maize, milled; maize flour; mustard meal; soya flour; tapioca flour; Flour (food); Flour-milling products), certain cereal products (i.e. couscous [semolina]; husked barley; pearl barley; crushed oats; oat flakes; oatmeal; husked oats; rice; sago), doughs and mixes therefor (i.e. cake powder; cake dough), yeast and leavening agents (i.e. leaven; thickening agents for cooking foodstuffs; malt for human consumption; malt extract for food; whipped cream (preparations for stiffening -); starch for food; tapioca; ferments for pastes; sausage binding materials; Yeast in pill form, not for medical use), ice-cream (binding agents for -), ice, mustard, sugars, natural sweeteners, sweet coatings and fillings, bee products (i.e. honey, maltose (listed twice); molasses for food; Golden syrup; sweeteners (natural -); glucose for food) have different nature, purpose and methods of use compared to the opponent’s services, which essentially are restauration services. The goods and services are not complementary nor have the same distribution channels and origins. More importantly, it is not common that establishments providing food and drink serve these types of foodstuffs as a meal, or for take-away under the same trade mark. These goods are dissimilar to the opponent’s services.

However, the remaining contested goods are various types of food products, which can all be offered by restauration establishments as a meal, drink, as take-away food, sauce or snack (e.g. Chutneys [condiments]; Meat gravies; Condiments; Coffee; coffee-based beverages; Artificial coffee; Tea; Tomato sauce; pancakes). This renders the goods and services at issue complementary. Indeed, such goods are used and offered in the context of restaurant, bar, cafeteria and snack bar services. Even though the comparison is between services on the one hand and goods on the other, the different nature and objectives of those goods and services cannot counteract the similarity which exists in terms of basic goods, customers and points of sale. There is therefore a certain degree of similarity between those goods and services. (13/04/2011, T 345/09, Puerta de Labastida, EU:T:2011:173; Decision of 12 February 2014 – R 886/2013-2 – Cremeria Toscana (Fig. mark) / La Cremeria (Fig. mark) et al.; 'Cremeria Toscana', Decision Of 14 July 2011 – R 2152/2010-1 – Neuro Bliss / Bliss (Fig. Mark); 04/06/2015, T 562/14, YOO / YO, EU:T:2015:363,). It follows, therefore, that all these remaining contested goods are similar to a low degree to the opponent’s services.

Contested services in Class 35

The contested business services in this class have no points in common with the opponent’s restauration services. They have a different nature, purpose and methods of use. The business services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. The restauration services merely provide food and drink. The services are directed at a completely different public, are not complementary nor in competition. The services have different origins and distribution channels and are dissimilar.

Contested services in Class 43

The limitation made in the list of the contested services, namely All of the aforesaid services, not being for animals, concerns all of the services in this class. Therefore, it will not be explicitly mentioned and repeated in the comparison below, however it will be taken into account when comparing the services.

Services for providing food and drink; Bar services; Catering for the provision of food and beverages; Party planning (providing of food and drink); Café services; Restaurants; Snackbars; Cafeterias; Canteens; Self-service restaurant services are identical to the opponent’s Bar, cafeteria, restaurant services, 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.

The contested Rental of ovens and cooking apparatus; Rental of tableware and cutlery; Rental of chairs, tables, table linen, glassware; Rental of meeting rooms are specific rental services, whereas the opponent’s services are restauration services of specific types of establishments which offer foods and beverages on their premises or for a take away, but do not offer the cutlery or equipment for rent. The services have a different nature, purpose and methods of use, have different origins and are not complementary. These services are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to a low degree are directed at the public at large.

The degree of attention ranges from low degree (for common foodstuffs) to average (for more expensive foodstuffs and the restauration services).

c) The signs

	Sloppy Bob
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 element SLOPPY in the contested mark has no meaning for the relevant public. It cannot be excluded that part of the public would see the word BOB as a Anglo-Saxon male first name. All these elements are distinctive in respect of the goods and services as they are not descriptive or allusive to any of their characteristics.

The first element of the earlier mark can be interpreted as SLOPPY or SLOPR. In both cases, this element is meaningless. It is separated by hyphen from the second element JOE’S. It cannot be excluded that part of the public would see the word JOE as a Anglo-Saxon male first name, without understanding the meaning of its ending ‘ ‘S’. These elements are distinctive.

Underneath these elements are, in much smaller letters, the words PIZZA INN. The element PIZZA will be understood as dish of Italian origin consisting of a baked disc of dough covered with cheese, tomatoes and other ingredients. Considering that the opponent’s services are restauration services where pizza can be offered for food, this element is non-distinctive as it describes the characteristics of the services, being thus the least distinctive element of the mark. The element INN is meaningless for the Spanish public and therefore distinctive, although secondary on the visual level.

The elements SLOPPY/R-JOE’S are the dominant elements of the earlier mark as they are the most eye-catching.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the elements SLOPPY in the beginnings of the marks, when this element in the earlier mark is considered to end with the double letter P and the letter Y. If not, then the coincidence limits only to the letter sequence SLOP. The marks differ in the elements –JOE’S, INN and BOB, in addition to the possible difference caused by the endings of the elements SLOPPY/R. The elements PIZZA INN in the earlier mark are overshadowed by the dominant elements of the sign and furthermore, PIZZA is non-distinctive. The marks also differ in the stylisation and typeface of the elements in the earlier mark. However, it must be noted that in the case of a word mark, it is the word that is protected and not its written form.

Considering the distinctiveness of the elements and the rather striking stylisation of the earlier mark, the signs are visually similar to a low degree for the public which perceives the element ‘SLOPPY’ in the earlier mark.

For the rest of the public, the signs coincide in a string of four letters which are not relevant from the point of view of the consumer which tends to perceive trade marks as a whole. Therefore, this can lead to a finding of a very low degree of similarity, if any at all.

Aurally, the pronunciation of the signs coincides in the letters SLOPPY in the beginnings of the marks, when this element in the earlier mark is considered to end with the double letter P and the letter Y. If not, then the coincidence limits only to the letter sequence SLOP.

The pronunciation differs in the elements –JOE’S, INN and BOB, in addition to the possible difference caused by the endings of the elements SLOPPY/R, which would result the last letter of the first element being pronounced as R versus Y of the contested sign. It can be reasonably assumed that the non-dominant element ‘PIZZA INN’ could be skipped from the pronunciation of the earlier mark, also taking into account that the element PIZZA is non-distinctive.

Therefore, the signs are aurally similar to an average degree for the public which perceives the element ‘SLOPPY’ in the earlier mark.

For the rest of the public, the signs coincide in a string of four sounds which are not relevant from the point of view of the consumer which tends to perceive trade marks as a whole. Therefore, this can only lead to a finding of a very low degree of similarity, if any at all.

Conceptually, for part of the public, although the signs as a whole do not have any meaning, the elements JOE and BOB will be associated with a male first name, which renders the signs are conceptually dissimilar, because these names are not derived from the same root and have no relevant semantic connection otherwise.

The public who perceives no meaning in the signs, besides the non-distinctive element PIZZA, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services have been found partially identical, partially similar to a low degree and partially dissimilar. The visual, aural and conceptual aspects have been discussed above.

The marks coincide visually and aurally in the their first four letters SLOP and in case perceived in the earlier mark, also in their fifth letter P and the sixth letter Y. The signs differ visually and aurally in their second elements –JOE’S vs BOB, in the words PIZZA INN, of which PIZZA is non-distinctive, and also in the rather striking stylisation of the letters in the earlier mark. On a conceptual level, since the non-distinctive element PIZZA has no bearing in the comparison, part of the public would see a clear difference between the male first names JOE/ BOB, while for part of the public there is no relevant concept in either of the marks.

Nevertheless, taking into account that the coincidences of the marks are in their beginnings, it is considered that the similarities between the signs established above are sufficient to cause the public to believe that the conflicting services, which are identical, come from the same undertaking or economically linked undertakings.

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).

In the present case, the low degree of visual similarity between the signs, and the average degree of similarity on the aural level which can be established for a part of the public, is counteracted by the identity of the services in Class 43 (or Class 42, insofar as the opponent’s mark is concerned).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

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 opponent’s Spanish trade mark registration No 2 247 056.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The opposition is not successful insofar as the goods and services that are similar to a low degree are concerned as the moderate similarity of signs does not outweigh the low degree of similarity of goods.

The rest of the contested goods and services 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 opponent has also based its opposition on the following earlier trade marks:

- European Union trade mark registration No 1 212 984 for goods in classes 29, 30, 35, 42;

- Spanish trade mark registration No 3 610 571 for goods in class 16.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they are complex trade marks that contain further figurative elements. Both of these earlier complex trade marks are dominated by an image of a smiling vagrant male with a dog, elaborately depicted as standing in front of a high fence, next to a lamp post from which a small sign is hanging on which are barely visible words SLOPR(PY) JOE’S Pizza Inn. As mentioned the first verbal element of the marks can be interpreted as SLOPPY or SLOPR.

First of all, account must be taken of the fact that the consumer usually perceives the mark as a whole and does not pay too close attention to details of the mark or dissects marks artificially (C-251/95, Sabèl, EU:C:1997:528, § 23).

The assessment of likelihood of confusion does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 29; 28/04/2004, C 3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233, § 32). A complex trade mark cannot be regarded as being similar to another trade mark which is identical to one of the components of the complex mark, unless that component forms the dominant or at least one of the co-dominant elements within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T 6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, §-s 33 to 34; confirmed by 28/04/2004, C 3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233; and 06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 29; Decision of 15 March 2012 – R 73/2011-4 – St. Alpine / La Alpina).

In the present case the element SLOPPY or SLOPR is not dominant nor co-dominant in the earlier marks while all the remaining elements are clearly different, including the remaining words elements in the earlier marks. The image of a vagrant male is what is the most memorable and outstanding element in both of these earlier marks. The similarities are not sufficient to lead to a likelihood of confusion on the part of the public even in case of identical or similar goods or services.

The opponent’s argument that the marks are shortened only to a word SLOPPY, and that verbal elements in trade marks generally have more impact on the public than the figurative elements is ruled out in the presence of such complex trade marks where even the first element of the earlier marks cannot be even safely be said to contain the word SLOPPY.

In respect of the goods and services covered by the other earlier marks invoked by the opponent in Classes 16, 29, 30 and 35, it has to be noted that, admittedly, the opponent’s goods and services are identical or at least similar to the remaining contested goods and services in Classes 16, 29, 30 and 35. However, even assuming that all of the remaining contested goods and services were identical to the ones covered by these two earlier marks and taking into account the interdependence principle, this factor is incapable of calling the foregoing considerations into question.

These goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore, the striking visual differences between the signs have to be given due weight in the assessment. Furthermore, part of the public that understands the English words SLOPPY JOE(‘s) as referring to a type of dish, would consider them non-distinctive or weak in respect of part of the goods and services, as they are considered to describe that the restauration establishments provide a certain type of food. This would diminish the similarities between the marks even further.

Although the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind, the differences between the marks are sufficiently strong to allow the public to distinguish between them, even relying on imperfect recollection. Considering all the above, even assuming that part of the goods and services are identical, there is no likelihood of confusion with respect to these earlier marks. Therefore, the opposition must be rejected in respect of the earlier European Union trade mark registration No 1 212 984 and Spanish trade mark registration No 3 610 571.

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

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

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.