OPPOSITION No B 3 081 109

D. Lazzaroni & C. S.p.A., Via Cerrani Snc, 66010, Pretoro (CH), Italy (opponent), represented by Jacobacci & Partners S.p.A., Via Senato, 8, 20121, Milan, Italy (professional representative)

a g a i n s t

European Lazarroimpex Group S.L.U., Av. Europa 4, 08110, Montcada y Reixac, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative).

On 06/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 109 is upheld for all the contested goods and services, namely

Class 30: All the goods applied for in this Class.

Class 43: All the services applied for in this Class.

2. European Union trade mark application No 18 017 223 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 017 223 for the figurative mark , namely against all the goods and services in Classes 30 and 43. The opposition is based on, inter alia, Italian trade mark registration No 1 667 079 for the figurative mark . 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.

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 Italian trade mark registration No  1 667 079.

a) The goods and services

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

Class 30: Vinegar; beer vinegar; sea water for cooking; gluten additives for culinary purposes; minced garlic [condiment]; seaweed [condiment]; oat-based food; farinaceous foods; starch for food; aniseed; star aniseed; seasonings; coffee flavourings [flavourings]; food flavourings, other than essential oils; flavourings, other than essential oils, for beverages; flavourings [flavourings], other than essential oils, for cakes; oatmeal; oatmeal; high-protein cereal bars; cereal bars; stick liquorice [confectionery]; cocoa-based beverages; coffee-based beverages; chocolate based beverages; tea-based beverages; cocoa beverages with milk; chocolate beverages with milk; baking soda [bicarbonate of soda for cooking purposes]; cookies; malt biscuits; petit-beurre biscuits; sweetmeats [candy]; buns; puddings; rice pudding; cocoa; coffee; coffee beverages with milk; unroasted coffee; cinnamon [spice]; capers; caramels [candy]; peppermint candy; cheeseburgers [sandwiches]; cloves [spice]; chutneys [condiments]; waffles; chicory [coffee substitute]; chocolate; aromatic preparations for food; condiments; confectionery; peanut confectionery; almond confectionery; pralines; fruit coulis [sauces]; crackers; custard; pancakes; macaroons [pastry]; turmeric; curry [spice]; couscous [semolina]; chocolate decorations for cakes; cakes; natural sweeteners; confectionery for decorating Christmas trees; garden herbs, preserved [seasonings]; essences for foodstuffs, except etheric essences and essential oils; malt extract for food; bean meal; wheat flour; corn flour; nut flours; barley meal; mustard meal; soya flour; tapioca flour; flour; potato flour; ferments for pastes; oatmeal; chips [cereal products]; corn flakes; groats for human food; flowers or leaves for use as tea substitutes; pies; fondants [confectionery]; ice cream; ices; fruit jellies [confectionery]; ham glaze; wheat germ for human consumption; ice, natural or artificial; ice; cake frosting [icing]; glucose for culinary purposes; gluten prepared as foodstuff; bubble gum; corn, milled; corn, roasted; popcorn; halvah; dough; infusions, not medicinal; spring rolls; thickening agents for cooking foodstuffs; catsup; binding agents for ice cream [edible ices]; sausage binding materials; yeast; yeast powder; leaven; liquorice [confectionery]; macaroni; mayonnaise; malt for human consumption; maltose; marinades; marzipan; molasses for food; mint for confectionery; honey; chocolate mousses; dessert mousses [confectionery]; muesli; allspice; chocolate coated nuts; nutmegs; crushed barley; husked barley; bread; rusks; unleavened bread; breadcrumbs; bread rolls; gingerbread; royal jelly; almond paste; soya bean paste [condiment]; cake dough; cake dough; pasta; pastries; lozenges [confectionery]; petits fours [cakes]; meat pies; noodle-based prepared meals; pâtés en croûte, pelmeni [dumplings stuffed with meat]; pepper spice; pesto [sauce]; pizzas; cake powder; powders for making ice cream; cereal preparations; vegetal preparations for use as coffee substitutes; meat tenderizers for household purposes; preparations for stiffening whipped cream; bee glue; quiches; relish [condiment]; ravioli; rice; sago; cooking salt; celery salt; salt for preserving foodstuffs; tomato sauce; soya sauce; sauces [condiments]; dressings for salad; pasta sauce; sandwiches; peppers [seasonings]; golden syrup; linseed for culinary purposes [seasoning]; oatmeal; semolina; hominy grits; mustard; cereal-based snack food; rice-based snack food; sorbets [ices]; spaghetti; spices; artificial coffee; meat gravies; sushi; tabbouleh; tacos; noodles; tapioca; tea; iced tea; tarts; rice cakes; tortillas; vanilla flavourings for culinary purposes; vanillin [vanilla substitute]; vermicelli [noodles]; frozen yogurt [confectionery ices]; saffron [seasoning]; ginger [spice]; candy decorations for cakes; sugar; candy; palm sugar.

Class 43: Providing campground facilities; rental of temporary accommodation; rental of cooking apparatus; rental of drinking water dispensers; rental of chairs, tables, table linen, glassware; rental of meeting rooms; hotel reservations; boarding house bookings; food sculpting; hotel services; bar services; café services; café services; food and drink catering; canteen services; motel services; boarding house services; restaurant services; self-service restaurant services; snack-bar services.

The contested goods and services are the following:

Class 30: Coffee; tea; cocoa; artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; chocolate; ice creams, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; espresso; flavoured coffee; instant coffee; coffee-based beverages; coffee pods; coffee in whole-bean form.

Class 43: Services for providing food and drink; temporary accommodation; cafeteria services; providing information about bartending; café services; café services; coffee supply services for offices [provision of beverages.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 30

The contested coffee; tea; cocoa; artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; chocolate; ice creams, sorbets and other edible ices; sugar, honey, yeast, baking-powder; espresso; flavoured coffee; instant coffee; coffee-based beverages; coffee pods; coffee in whole-bean form are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s goods in Class 30.

The contested treacle is similar to the opponent’s sugar. The goods under comparison coincide in relevant public and distribution channels. Furthermore they are in competition.

Contested services in Class 43

The contested services for providing food and drink; temporary accommodation; cafeteria services; café services (listed twice); coffee supply services for offices [provision of beverages] are identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s services in this class include, are included in, or overlap with, the opponent’s services in Class 43.

The contested providing information about bartending is similar to the opponent’s bar services. These services coincide in relevant public and distribution channels. Furthermore they are complementary.

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 are directed at the public at large. The degree of attention may vary from lower than average (for goods in Class 30 which are relatively cheap and purchased on a daily basis) to average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark composed of the verbal element ‘LAZZARONI’ represented in a stylised (slightly fanciful) red typescript placed below a circle with orange edges containing the representation of a sailing ship and an emblem and some other scripts against a white background. The wordings ‘D. LAZZARONI & C.’ and ‘1888 - Italia’ appear on the upper and lower edge of the circle respectively.

The verbal element ‘LAZZARONI’ will be perceived by the relevant Italian public as a surname, coming from the personal name ‘LAZZARO’. Although such element may also indicate the lower class in the city and kingdom of Naples during the 18th century, it is rather unlikely that the average consumers will perceive it in this sense. In any case the Opposition Division finds it relevant to focus the examination of the opposition on the part of the public perceiving ‘LAZZARONI’ as a surname, which represents the great majority of the same. This element is fully distinctive for the relevant goods and services as it has no connection to them or any of their essential characteristics. On the contrary the stylisation of the element ‘LAZZARONI’ is not particularly striking and its distinctiveness and impact are limited.

The same considerations apply to the element ‘D. LAZZARONI’ which will be seen as a distinctive surname preceded by a single letter, possibly referring to the initial of the person in question and followed by the elements ‘& C.’ The latter are commonly used, also in Italian, as an abbreviation for ‘company’ and frequently placed at the end of business names. Consumers would merely perceive them as an obvious indication of an undertaking (by analogy 22/09/2016, R 2341/2015-1, Nyoderm / NIYO & CO, § 27). Therefore, these elements must be considered to be non-distinctive. The same holds true for ‘1888’ (which will be understood as the year of creation of the company) and ‘ITALIA’ (a mere descriptive indicator of the geographical origin of the goods and services). On the other hand the representation of the ship bears no connection with goods and services at hand and it is therefore distinctive. As regards the additional elements comprised within the circle of the earlier mark (the emblem and some other scripts below the ship), they are barely perceptible and can be defined as negligible elements i.e. elements that due to their size and/or position are not noticeable at first sight or are part of a complex sign. As these additional elements are likely to be disregarded by the relevant public, they will not be taken into consideration.

The contested sign is also a figurative mark composed of the term ‘LAZZARO’ reproduced in black hardly stylised upper case letters. Such element will be perceived by the relevant Italian public either as a first name or (less likely) as a surname. Since it is meaningless in relation to the relevant goods and services, it is distinctive. Beneath this term, there are three horizontal lines coloured in green, white and red respectively, resembling an Italian flag. They are essentially decorative, since they underline, and thus merely embellish, the verbal element. They are also clearly evocative of the origin of the goods and services and are therefore non-distinctive.

The verbal elements ‘LAZZARONI’ and ‘LAZZARO’ are the most eye-catching and therefore dominant elements of the marks under comparison, due to their positions and sizes.

In any case 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).

Account is also taken of the fact 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.

Visually, the signs coincide in the string of letters ‘LAZZARO(**)’ which make up the entire verbal element of the contested sign and the first seven letters (out of nine) of the dominant verbal element of the earlier mark. They differ in the additional letters ‘-NI’ placed after said coinciding letters in the earlier mark. They also differ in the graphic depictions and figurative elements of both marks, but these elements have a limited impact on the comparison for the reasons given above. As regards the wording ‘D. LAZZARONI & C.’ and ‘1888 ITALIA’ placed on the upper and lower edges of the circle in the earlier mark, they either merely reinforce the dominant element ‘LAZZARONI’ or are secondary and non-distinctive.

In view of the above and given that the contested sign is entirely included in the earlier mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LAZZARO(**)’ present identically in both signs. However they differ in the sound of the letters ‘-NI’ at the end of the dominant verbal element of the earlier mark. It can be reasonably assumed that the wording ‘D. LAZZARONI & C.’ and ‘1888 ITALIA’ will be omitted from the pronunciation when referring to the earlier mark by a substantial part of the public, in view of the fact that that some of these elements are non-distinctive and in any case they are all placed in a secondary and ancillary position within the mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a surname having the same root (‘LAZZARO’) or may be perceived as a first name and a surname respectively having nonetheless the same or a similar etymology, the signs are conceptually similar, albeit to a low degree.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C 342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C 251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C 39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods and services have been found partly identical (the great majority) and partly similar. They are directed at the general public whose degree of attention will vary from lower than average to average. The earlier mark enjoys an average degree of inherent distinctiveness which affords it a normal scope of protection.

The earlier mark and the contested sign have been found to be aurally and visually similar to an average degree due to the coincidence in the sequence of the letters ‘LAZZARO(**)’. Conceptually, the signs are also similar, albeit only to a low degree for the reasons set out in section c) above. The main difference resides in the letters ‘-NI’ which however are placed at the end of the dominant element of the earlier mark. These differences can be overlooked in view of the fact that consumers tend to focus on the beginning of a sign, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. Regarding the additional figurative and verbal elements of both signs, they have less impact and are, as explained above, either non distinctive or not easily noticeable and/or secondary. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods and services, which are mostly identical, come from the same or economically linked undertakings. This finding is valid, in particular, for the vast majority of the public which will associate ‘LAZZARONI’ exclusively with a surname.

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 667 079. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right Italian registration No 1 667 079 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

Francesca CANGERI

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.