OPPOSITION No B 3 062 756

Pipers Crisps Limited, Building 4, Chiswick Business Park, 566 Chiswick High Road, London W4 5YE, United Kingdom (opponent), represented by Walker Morris LLP, 33 Wellington Street, Leeds LS1 4DL, United Kingdom (professional representative)

a g a i n s t

Staropilsen s.r.o., Na Roudné 443/18, 30100 Plzeň, Czech Republic (applicant), represented by Valkan Kaludov, Na Roudné 443/18, 30100 Plzeň, Czech Republic (employee representative).

On 01/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 756 is upheld for all the contested goods.

2. European Union trade mark application No 17 901 015 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 901 015 for the word mark ‘Dr. Piper’. The opposition is based on European Union trade mark registration No 17 888 647 for the word mark ‘PIPERS’. The opponent invoked Article 8(1)(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.

a) The goods

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

Class 29: Vegetable-based snack foods; snack foods consisting of extruded vegetables; crisps; vegetable crisps; nuts.

The contested goods are the following:

Class 29: Processed fruits, fungi and vegetables (including nuts and pulses); vegetables, preserved; preserved vegetables.

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

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods 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.

The contested processed fruits, fungi and vegetables (including nuts and pulses); vegetables, preserved; preserved vegetables are similar to the opponent’s vegetable-based snack foods. These goods have the same distribution channels and target the same public. Moreover, their commercial origins are likely to overlap.

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 found to be similar are directed at the public at large. The degree of attention is average.

c) The signs

PIPERS	Dr. Piper
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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant if word marks are depicted in upper- or lower-case letters, or in a combination thereof.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘Piper’/’PIPERS’ (‘Pipers’ being a plural form of ‘Piper’) are meaningful in certain languages. In English, they refer to, inter alia, a person(s) who plays a pipe, especially an itinerant musician. In Bulgarian and Romanian, ‘piper’ means pepper. As this meaning can affect the distinctiveness of the elements contained in both signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom it is meaningless, for example the Italian-, French-, German- or Polish-speaking public. Therefore, the comparison is focused on this part of the relevant public for whom the elements have no particular meaning and are distinctive.

The element ‘Dr.’ in the contested sign will be perceived as an abbreviation of ‘Doctor’ or its equivalents in the other relevant languages, for example: ‘dottore’ (Italian), ‘docteur’ (French) or ‘Doktor’/’doktor’ (German and Polish). The two elements in combination create, ‘Dr. Piper’, which will be perceived as a surname by at least part of the relevant public. Given that the relevant goods are foods stuffs, the element ‘Dr.’ could also be understood as allusive to the health-related properties of some of the goods. As a result, this element is considered to have a slightly lower-than-average degree of distinctiveness. As a whole, ‘Dr. Piper’ has a normal degree of distinctiveness.

Visually, the signs coincide in the letters ‘Piper’/’PIPER’. They only differ in the last letter ‘S’ of the earlier mark and in the abbreviation ‘Dr.’ at the beginning of the contested sign.

Therefore, and taking into account the conclusions regarding the distinctiveness of the elements mentioned above, the signs are visually similar to an average degree.

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 ‘Piper’, present identically in both signs. The pronunciation differs in the sound of the letter ‛S’ of the earlier mark (except for the French-speaking part of the public, which does not usually pronounce the final letters in words), and in the sound of the abbreviation ‘Dr.’, which is usually pronounced ‘dottore’ (Italian), ‘docteur’ (French) or ‘Doktor’/’doktor’) (German and Polish).

Considering the final position of the letter ‘S’ in the earlier mark and the slightly lower-than-average degree of distinctiveness of the abbreviation ‘Dr.’ in the contested sign, the signs are aurally similar to an average degree.

Conceptually, although some of the public in the relevant territory will perceive the meaning of the contested sign as a name, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

The goods are similar. They target the public at large, whose degree of attention is average. The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally similar to an average degree, on account of the distinctive verbal elements they have in common (‘Piper’/’PIPERS’). The differences between the marks are limited to letters and elements that are unlikely to fully catch consumers’ attention, due to their position at the end of the word (letter ‘S’ in the earlier mark), or their lower-than-average degree of distinctiveness (the abbreviation ‘Dr.’ in the contested sign). Consumers will naturally focus on the distinctive element ‘Piper’/’PIPER’ that is common to both marks.

Account is also 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).

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.

Consequently, the Opposition Division considers that there is a likelihood that the relevant public will confuse or associate the signs at issue and believe that the goods come from the same undertaking or from economically linked undertakings.

Considering all the above, and the average degree of attention paid by the public, there is a likelihood of confusion on the part of the Italian-, French-, German- or Polish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 888 647. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI

Arkadiusz GORNY

Cindy BAREL

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.