OPPOSITION No B 3 105 114

Roose S.à.r.l., 16a, avenue de la Liberté, 1930, Luxembourg, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001, Strassen, Luxembourg (professional representative)

a g a i n s t

Inversisa SAS, Calle 110 No. 3 – 79 Parque Industrial Europark, Bodega 19, Barranquilla, Colombia (applicant), represented by Arochi & Lindner S.L., C/ Gurtubay 6, 3º izquierda, 28001, Madrid, Spain (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 114 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 114 902 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 and services of European Union trade mark application No 18 114 902 . The opposition is based on French trade mark registration No 4 143 470 ‘BONO’. 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 and services

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

Class 32: Beers; brewery products; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; fruit juices; syrups and other non-alcoholic preparations for making beverages; cocktails, non-alcoholic; table waters; aerated water; non-alcoholic fruit extracts; fruit juices; lemonades; soda water; products for making aerated waters; products for making mineral waters; essences for making beverages; energy drinks; non-alcoholic beverages flavoured with coffee, tea and fruit flavours.

Class 43: Services for providing food and drink; bar services; brewery services; café-restaurant; services cafeteria services; self-service restaurant services; fast-food and permanent restaurants [snack bars]; self-service restaurant; food and drink catering; rental of chairs, tables; table linen, glassware; tasting services for wine or other beverages, alcoholic or non-alcoholic [beverage providing]; food tasting services (catering); rental of cooking apparatus; rental of drinking dispensers; rental of tents; rental of transportable buildings; rental of meeting rooms; hotel services; temporary accommodation; hotel and temporary accommodation reservations; providing conference rooms; organization of banquets; hosting services for meetings; hosting services for events; food and drinks preparation services.

The contested goods and services are the following:

Class 29: Meat; poultry, not alive; fish; dried fruit; preserved and dried vegetables; jellies; compotes; eggs; milk; milk products.

Class 30: Bread; fruit breads; pastry and confectionery goods; petits fours [cakes]; coffee; decaffeinated coffee; decaffeinated coffee; cocoa-based beverages; prepared cocoa and cocoa-based beverages; cocoa beverages with milk; coffee, tea, cocoa and artificial coffee; ices; confectionery.

Class 43: Restaurants; cafeterias and bakeries.

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.

It is also 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.

Contested goods in Class 29

The contested meat; poultry, not alive; fish are similar to a low degree to the opponent’s services for providing food and drink in Class 43. Some butchers may roast chickens or other types of meat. Although those goods are not necessarily consumed on the premises, there is an overlap with the services of a fast food restaurant or take away. The same is true with regard to some fishmongers who 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). 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 customers, distribution channels and complementarity between the goods and services under comparison.

The contested preserved and dried vegetables; compotes are similar to a low degree to the opponent’s other non-alcoholic beverages in Class 32 since the latter goods contain drinks having or consisting of vegetables or fruits as their main ingredient. The methods for processing and preserving these goods are fundamentally the same. Accordingly, these goods are frequently offered for sale by the same manufacturers and target the same relevant public.

The contested eggs are similar to a low degree to the opponent’s services for providing food and drink in Class 43 since these services of the opponent concern products included in Class 29, which means there is a complementarity between the goods and services at issue. In addition, their distribution channels and producers/providers may coincide as restaurant services may be offered in the same places as those in which the products in question are sold and producers of such goods may also sell meals.

The contested dried fruit is similar to a low degree to the opponent’s services for providing food and drink in Class 43 since a restaurant may have a plot to cultivate various fruits and use them to make its dishes. There are also country restaurants which make conserves, place them on shelves by the till and sell them to their customers. This means that the goods and services under comparison can coincide in their producers/providers and distribution channels, and they may also be complementary to one another.

The contested milk; milk products are similar to at least a low degree to the opponent’s fruit juices in Class 32 given the market reality that there are milk beverages mixed with fruit juices. This means that these goods under comparison coincide in at least distribution channels and consumers, and they may also be in competition with one another.

Contested goods in Class 30

The contested coffee; decaffeinated coffee; decaffeinated coffee; cocoa-based beverages; prepared cocoa and cocoa-based beverages; cocoa beverages with milk; coffee, tea, cocoa and artificial coffee are similar to the opponent’s non-alcoholic beverages in Class 32 since these goods under comparison coincide in their distribution channels, consumers and producers, and they may also be in competition.

The remaining contested goods, namely bread; fruit breads; pastry and confectionery goods; petits fours [cakes]; ices; confectionery are similar to a low degree to the opponent’s services for providing food and drink in Class 43 since these goods and services may coincide in their producers/providers and distribution channels, in addition to a certain degree of complementarity between them.

Contested services in Class 43

The contested restaurants; cafeterias and bakeries are contained in the opponent’s broad category of services for providing food and drink, therefore, these services are identical.

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 various degrees are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

BONO
Earlier trade mark	Contested sign

The relevant territory is France.

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 consists of the word ‘BONO’. Since it lacks any meaning, it has average distinctiveness.

The contested sign consists of the verbal elements ‘MR Bono’ in stylized red and orange font, and, above the letter ‘B’, a device of a chef’s hat. Reference is made to the preceding paragraph concerning the distinctiveness of the element ‘BONO’. The addition of ‘MR’ will be understood as the short for ‘Mister’ in English, a widely known and understood abbreviation by the French public. ‘MR’, therefore, indicates a male person. Although this concept has no particular meaning as such in relation to the goods and services concerned and must be considered distinctive, it will still be perceived as a secondary element in the contested sign since it only qualifies the following word as being of male gender, in particular as a male person (see to this effect 10/10/2016, R 3095/2014-4, MR HALLOUMIS / HALLOUMI, § 17). With regard to the device element, it depicts a chef’s hat and must be considered to have a very low degree of distinctiveness in relation to the goods and services consisting of restaurant services as well as a wide range of foodstuff, beverages and essential materials used for their preparation. The obvious reference to a chef will, therefore, be perceived as indicating the person using/preparing these goods for them to be sold at restaurants or other similar outlets. Furthermore, none of the sign’s elements can be considered to be more dominant than the other ones.

Visually, the signs coincide in the distinctive verbal element ‘BONO’ and differ in the contested sign’s additional elements. This means that the only element composing the earlier mark is reproduced in the contested sign where it has an independent, distinctive role and is accompanied by additional verbal and device elements of limited distinctiveness. It is to be noted 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). Based on all the foregoing, it is concluded that the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BONO’, present identically in both signs. The pronunciation differs in the sound of the additional letters ‘MR’ in the contested sign. Considering also the secondary role of the differing element ‘MR’, the signs must be considered to be similar to an above average degree.

Conceptually, the signs’ coinciding element is meaningless while the device in the contested sign evokes a concept of weak distinctiveness. With regard to ‘MR’ present in the contested sign, it conveys the concept of a male person as explained above. This element, even in combination with the device, may be perceived, at most, as referring to a male chef. Overall, the additional, differing elements are considered to have little weight, and the conceptual aspect plays a very limited role in the overall assessment.

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.

e) Global assessment, other arguments and conclusion

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).

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).

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.

In the present case, the goods and services are either identical or similar to various degrees. The signs present an average degree of visual and above average degree of aural similarities while the conceptual aspect plays very little role. The only verbal element composing the earlier mark is reproduced in the contested sign, and its impact cannot be counteracted by the differences for the reasons set forth above. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant filed evidence consisting of extracts from TMView and, based on these trade mark registration, claims that the distinctiveness of the element ‘BONO’ present in both signs has been diluted by the large number of number of trade mark registrations containing the said element. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Bono’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant refers to previous decisions to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In particular, the applicant claims that the goods in Classes 29 and 30 are not similar to the opponent’s goods in Class 32 and services in Class 43, and it cited various caselaw to support this claim. In this regard, the Opposition Division notes that as far as the goods in Classes 29, 30 and 32 are concerned, they have been found to be similar, as explained in the preceding paragraphs, on grounds that the contested goods serve as main ingredients for the preparation of the opponent’s goods in Class 32. This is not in contradiction with Board of Appeal decision of 26/06/2013, R 214/2012-1, Royal Kitchen / ROYAL et al., § 47, cited by the applicant, since this decision merely asserted, in general terms, that the fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient to find similarity. Furthermore, with regard to the comparison of foodstuffs with services in Class 43, and to the judgments cited by the applicant, namely judgment of 09/03/2005, T-33/03, Hai, EU:T:2005:89 and judgment of 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., it is, first, recalled that in certain situations these goods and services can be complementary (04/06/2015, T‑562/14, YOO/ YO, EU:T:2015:363, § 25-27; 17/03/2015, T-611/11, Manea Spa, EU:T:2015:152, § 52, and the caselaw cited therein) to the extent that 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. Indeed, as explained above, the market reality is that the provision of food and drinks and these goods are commonly offered by the same undertaking under the same trade mark. In such cases, there is a low degree of similarity as reasoned above. Furthermore, it must also be noted that the decisions referred to by the applicant were taken over a decade ago. Since then, caselaw has evolved and the approach to comparison of the goods and services at issue has changed. Finally, it is noted that while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 French trade mark registration invoked. It follows that the contested trade mark must be rejected for all the contested goods and services, even for those only similar to a low degree, in line with the interdependence principle explained above.

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

Liliya YORDANOVA

Ferenc GAZDA

Octavio MONGE GONZALVO

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.