OPPOSITION No B 3 063 921

Rodriguez y Mateus, S.L., Alfonso Gómez, 15, 28037 Madrid, Spain (opponent), represented by Juan Botella Reyna, Velázquez, 80 - 4º Izda., 28001 Madrid, Spain (professional representative)

a g a i n s t

Мементо Ентърпрайз, ул. ‘Димитър Димов’ № 11 ет.4 ап.7, 1164 София, Bulgaria (applicant), represented by Antoaneta Milkova Stefanova, 8 Praga bul. fl.4 app.10, 1606 Sofia, Bulgaria (professional representative).

On 08/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 921 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 916 200 for the word mark ‘Caffanatic’, namely against all the goods in Classes 29, 30 and 32. The opposition is based on European Union trade mark registrations No 14 285 951 for the word mark ‘The FanaticCo.’ and No 14 285 902 for the figurative mark , in relation to which 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.

1. The goods and services

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

Class 30: Pastry and confectionery, ices; coffee; tea; cocoa; artificial coffee.

Class 43: Providing of food and drink for guests.

The contested goods are the following:

Class 29: Soups and stocks, meat extracts; fish, seafood and molluscs; processed fruits, fungi and vegetables (including nuts and pulses); dairy products and dairy substitutes; birds eggs and egg products; oils and fats.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; bread; waffles; salted biscuits; bakery goods; viennoiserie; foods with a cocoa base; foodstuffs containing cocoa [as the main constituent]; foodstuffs containing chocolate [as the main constituent]; chocolate; chocolate spreads; chocolate spreads for use on bread; chocolate for confectionery and bread.

Class 32: Preparations for making beverages; beer and brewery products; soft drinks.

Some of the contested goods are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination will proceed as if all the contested goods in Class 30 were identical and the contested goods in Classes 29 and 32 were highly similar (as goods in different classes of Nice Classification cannot be held identical) to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical or highly similar are directed at the public at large. The degree of attention of this public is average.

3. The signs

Earlier trade mark 1) The FanaticCo. Earlier trade mark 2)	Caffanatic
Earlier trade marks	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 trade mark 1) is a word mark composed of the words ‘The FanaticCo.’.

The earlier trade mark 2) is a figurative mark composed of the word ‘FANÁTICO’ in a black upper-case typeface and the word ‘Café’ in a much smaller black title-case typeface below it. The stylisation of the verbal elements of this earlier mark as well as the figurative elements, namely two black straight lines on both sides of the word ‘Café’ and a rectangular background, are largely decorative and they are inherently distinctive to a low degree, at most.

The words ‘Fanatic’ and ‘FANÁTICO’ of the earlier marks will be understood or associated by the public throughout the relevant territory with the meaning of the English noun, referring to a person that is ‘very enthusiastic about a particular activity, sport, or way of life’ (information extracted from Collins Dictionary on 01/07/2019 at www.collinsdictionary.com/dictionary/english/fanatic). This is because the same or very similar words exist in all the relevant languages, for example, in Bulgarian (‘фанатик’/‘fanatik’), Croatian (‘fanatik’), Czech (‘fanatik’), Danish (‘fanatiker’), Dutch (‘fanatiek’), Estonian (‘fanaatik’), Finnish (‘fanaatikko’), French (‘fanatique’), German (‘fanatiker’), Hungarian (‘fanatikus’), Italian (‘fanatico’), Latvian (‘fanātiķis’), Lithuanian (‘fanatikas’), Polish (‘fanatyk’), Portuguese (‘fanático’), Romanian (‘fanatict’), Slovak (‘fanatik’), Slovenian (‘fanatik’), Spanish (‘fanático’) or Swedish (‘fanatiker’). It may be perceived as a direct indication of the target consumers, namely persons with a high degree of enthusiasm for the relevant goods or services and, therefore, the inherent distinctive character of this element must be seen as limited (see 14/02/2019, R 1905/2018‑4, EQUESTRIAN.FANATICS, § 16).

The English-speaking public will immediately understand ‘The’ as the determiner, 1) ‘used preceding titles and certain uniquely specific or proper nouns, such as place names’ or 2) ‘used preceding a noun to make it refer to its class generically’, and will understand ‘Co.’ as ‘an abbreviation for company when it is part of the name of an organization’ (information extracted from Collins Dictionary on 01/07/2019 at www.collinsdictionary.com/dictionary/english/the_1 and www.collinsdictionary.com/
dictionary/english/co_1). These meanings will also be grasped by the public in those countries where English is widely understood, such as the Netherlands, Finland and the Scandinavian countries (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23; 09/12/2010, T‑307/09, Naturally active, EU:T:2010:509, § 26) and by those members of the remaining public who have at least some/basic knowledge of English. Consequently, for this part of the public the components ‘The’ and ‘Co.’ will have a limited distinctive character. The earlier mark 1) as a whole will be understood as ‘The Fanatic Company’. However, considering that the combination of these elements is rather unusual, the distinctiveness of this expression as a whole is considered normal. For the other part of the relevant public, the components ‘The’ and ‘Co.’ will be meaningless and, therefore, inherently distinctive to an average degree.

The word ‘Café’ of the earlier mark 2) is likely to be understood or associated throughout the relevant territory with either a brewed drink prepared from roasted coffee beans or a place where such a drink (but also other drinks, such as tea, cocoa, and food, such as pastry and confectionery), can be served. It is, therefore, inherently distinctive for the opponent’s goods and services to, at most, a low degree.

However, the contested sign is composed of the single word ‘Caffanatic’, which as a whole is meaningless throughout the relevant territory and, therefore, its inherent distinctive character is average.

In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper- or lower-case letters or a combination thereof. For the same reasons, word marks have no elements that could be considered clearly more dominant than other elements.

As regards the earlier mark 2), the word ‘FANÁTICO’ is considered the dominant (visually eye-catching) element of this sign, because it is much larger and located in a more prominent position, while the expression ‘Café’ is secondary. Account is taken of the fact that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters sequence ‘fanatic’, which constitutes the middle part of the earlier mark 1) ‘The FanaticCo.’, the beginning of the earlier mark 2) ‘FANÁTICO Café’ and the end of the contested sign ‘Caffanatic’.

Earlier mark 1) differs in the words ‘The’ and ‘Co.’, located at its beginning and ending respectively. Earlier mark 2) differs in the acute accent (´) above the second letter ‘Á’, the additional letter ‘O’ in ‘FANÁTICO’, the word ‘Café’, two straight lines and a rectangular background. The contested sign differs in its beginning, namely the letters ‘Caf’. The signs differ in their structures, as the earlier marks are composed of several elements, while the contested sign is composed of the single word that will be easily perceived at first glance by the public.

The Opposition Division does not agree with the opponent, the fact that the earlier mark 2) and the contested sign both contain the letters ‘Caf’ increases the similarity between them. On the contrary, these letters have different functions and are located in completely different positions within the signs, namely they form a part of a weakly distinctive word ‘Café’, located at the end of the earlier mark 2) versus a forming part of the contested sign’s only element located at its beginning. Consequently, the public will perceive them as differentiating elements.

It is important to note again that the contested sign differs from the earlier marks in its beginning, namely the part where consumers normally focus their attention. It is settled case-law that 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.

Therefore, and bearing in mind the distinctiveness issues mentioned above, the signs are visually similar to a low 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 ‘fanatic’.

The pronunciation differs in the beginning of the contested sign, namely the letters ‘Caf’. In the earlier mark 1), it differs in the sound of the string of letters ‘The’ and ‘Co.’; the public with sufficient knowledge of English may pronounce ‘Co.’ as ‘company’, which will enhance aural differences between the signs. The pronunciation of the earlier mark 2) differs in letter ‘O’ at the end of the word ‘FANÁTICO’ and, slightly, in the sound of the letter ‘Á’ in the languages that recognise an acute accent, such as Spanish and Portuguese. It additionally differs in the sound of the word ‘Café’, pronounced as the separate and second element of this sign. The signs have a different structure, rhythm and aural length. The purely figurative elements of the signs, including their stylisations, are not subject to a phonetic assessment.

Bearing in mind the distinctiveness issues and the differences mentioned above, the signs are aurally similar to no more than an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning(s) of the earlier marks, or at least of (some of) the elements contained therein, as explained above, the contested 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.

The opponent argued that the contested sign will be perceived as a combination of the words ‘Café’ and ‘fanatic’. However, the contested sign is not composed of these two words and, in any event, it is not likely that the relevant public will single out the word ‘fanatic’. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25; 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28). As has been confirmed by the Board, ‘CAF’ is not the designation for coffee in any of the relevant languages (English: ‘coffee’; German: ‘Kaffee’; French and Spanish: ‘café’; Italian: ‘caffè’; Finnish: ‘kahvi’; Dutch: ‘koffie’; Danish and Swedish: ‘kaffe’; 06/06/2012, R 449/2011‑4, CAFRESCO / CAFFREDDO, § 25) nor is it used as an abbreviation thereof. The word ‘Caf’, is meaningless in certain languages, while in other languages, for example in English, it constitutes an abbreviation for ‘cost and freight’ (information extracted from Collins Dictionary on 02/07/2019 at www.collinsdictionary.com
/dictionary/english/caf), which is distinctive for the contested goods. The opponent did not prove that the word ‘fanatic’ will have its own distinctive meaning within the contested sign (see by analogy 05/04/2018, R 1404/2018‑1, Lisjoy/Joy SPORTSWEAR, § 29).

Even assuming that the opponent’s suggestions were true and that a part of the relevant public were to perceive an allusion to the words ‘café’ and ‘fanatic’, this would only be applicable to a rather reduced part of the public and the allusion would be remote on account of the unusual way they are presented (if perceived). For reasons of completeness and thoroughness, the Opposition Division points out that even as regards the perception of that part of the public, their attention would be attracted mainly by the unusual combination of these two elements that, on their own, are not particularly distinctive. As noted above, the distinctiveness of the word ‘Café’ is weak, at most, while the distinctiveness of the word ‘fanatic’ is limited. Hence, for consumers who perceive the allusion to such concepts, the element ‘Caffanatic’ will be somewhat striking, due to the surprising and unusual way it conveys this suggestion, and not due to these overlapping concepts themselves.

None of the earlier marks follow the same or similar structure. Therefore, even in such a scenario, the conceptual similarity between the signs would be low, at most.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence in these marks of some elements with (at most) weak or limited distinctive character, for at least a part of the relevant public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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

In the present case, the contested goods in Class 30 were assumed to be identical and the contested goods in Classes 29 and 32 were assumed to be highly similar to the goods and services of the earlier marks. The signs are visually similar to a low degree and aurally similar to no more than an average degree. As explained above in the section c) of this decision, the signs are not conceptually similar or, even assuming that a part of the public would perceive some conceptual association with the earlier marks, the resulting conceptual similarity would be low, at most.

Although a sizeable part of the earlier marks, namely the letters sequence ‘fanatic’, is included in the contested sign, it does not play an independent distinctive role within that sign. It merely forms a second part of the longer sign, ‘Caffanatic’, which differs from the earlier marks in its beginning ‘Caf’, the part where consumers normally focus their attention (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). Consequently, it is very likely that the relevant public will not single this element out nor will it pay any special attention to this element, but it will perceive the contested mark as a whole.

By contrast, in both earlier marks, a separate word ‘Fanatic’ is clearly perceivable. In the earlier mark 1), it is accompanied by additional words located at its beginning and its end, ‘The’ and ‘Co.’ respectively. Even though these additional elements are of a limited distinctive character for a part of the public, they introduce important differences on all levels of comparison. Additionally, they are normally distinctive for the remaining part of the public and, therefore, these differences have a stronger impact on this part of the public. In the earlier mark 2), the coinciding word is portrayed in a different way, ‘FANÁTICO’, with the acute accent above the second letter ‘Á’ and with the letter ‘O’ at its end. It is also accompanied by the word ‘Café’, two straight lines and a rectangular background, which, although not particularly distinctive, constitute additional elements that will be easily perceivable by the public. At the same time, the word ‘Fanatic’ is of a limited distinctiveness for the relevant goods and services. Therefore, the overall impressions that the signs produce on the relevant public are quite different.

In its observations, the opponent also argued that all marks share a significant number of letters presented in the same sequence. However, the General Court has held that even the same number of letters in two marks is not, as such, of any particular significance for the relevant public, including a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Despite coinciding in a certain number of letters, the signs demonstrate important differences that will not remain unnoticed by the relevant public. These differences influence all the relevant aspects of comparison: the signs’ structure (signs composed of several elements versus a one-word sign), pronunciation and intonation, as well as their meanings (see 13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279). They are easily noticeable in the overall impression created by the signs and are sufficient to dispel a likelihood of confusion between them.

This conclusion is also applicable to the part of the public that might see an allusion to ‘café’ and ‘fanatic’ in the contested sign. As previously covered, their attention will be drawn to the unusual juxtaposition used in order to express such allusion that clearly sets the contested sign apart from the earlier marks, which display a different structure, composed of several independent verbal elements.

Therefore, based on the overall assessment of the earlier marks and the contested sign, the Opposition Division takes the view that the similarities between the signs are not sufficient to trigger likelihood of confusion, including a likelihood of association. The differences between them will allow the public to safely distinguish the marks.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, however, in this case, the fact that the goods were assumed to be identical (or highly similar) cannot compensate for the conspicuous differences between the signs.

For the sake of completeness, it must be noted that the opponent argued that it has been using the denomination ‘FANATICO CAFÉ’ in different combinations for the goods and services related to coffee and restaurant services, for example:

1. EUTM No 14 285 951 for the word mark ‘The FanaticCo’.

2. Spanish trade mark application No 3 727 482 for the figurative mark ‘FANATICO CAFÉ FRESCO Y RECIEN MOLIDO’ (depiction not provided).

3. EUTM No 14 285 861 for the figurative mark .

4. EUTM No 14 285 861 for the figurative mark .

5. Spanish trade mark registration No 3 561 010 for the figurative mark ‘FANATICO BY CAFES LA MEXICANA’ (depiction not provided).

The opponent argued that it owns a family of marks. Therefore, it remains necessary to consider whether the earlier marks, all characterised by the presence of the same component, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same element as the earlier marks, will be led to believe that the services identified by that mark may come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. The opponent did not base its opposition on all the marks to which it refers (but only on two of them) as belonging to the same family.

In addition, the likelihood of association described above may be invoked only if certain conditions are satisfied, one of which is that the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. The opponent failed to prove any use of the alleged family of marks. Therefore, the opponent’s claim regarding the family of marks must be set aside.

The opponent also relied on the judgment of the General Court in case 25/10/2012, T‑552/10, Vital & Fit, EU:T:2012:576, concerning the marks ‘VITAFIT’ versus , as well as two decisions of the Boards of Appeal in cases 04/02/2010, R 409/2009‑1, COTO DE HAYAS (FIGURATIVE MARK) / COTO DE IMAZ et al., concerning the marks ‘COTO DE IMAZ’ versus , and 15/07/2010, R 994/2009‑4 VENTUS (FIG.) / VENDUS Sales & Communication Group (FIG.), concerning the marks ‘Vendus sales & communications group’ versus . The opponent mentioned these cases to support its argumentation of a high degree of similarity between the marks. However, all of these cases are clearly not comparable to the present one because the facts of these cases were very different. In particular, the similarity between the abovementioned marks was located (mainly) in their beginnings, which is not the case here. In addition, the comparisons covered different classes of goods and services than the present ones (in case T‑552/10, the goods in Class 32 versus the goods in Class 32; in case R 409/2009‑1, the goods in Classes 32 and 33 versus the goods in Class 33; in case R 994/2009‑4, the services in Class 35 versus the services in Classes 35, 41 and 42).

Considering all the above, there is no likelihood of confusion on any part of the relevant public. Therefore, the opposition must be rejected.

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, 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

Gueorgui IVANOV

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.