LUCKY LUCKY COFEE 29,30 – 29,30,31

DECISION
of 05/07/2007
RULING ON OPPOSITION No B 953 812
Opponent: JEALSA RIANXEIRA, S.A. (SOCIEDAD
MERCANTIL)
Bodión, s/n
15930 Boiro (La Coruña)
Spain
Representative: HERRERO & ASOCIADOS
Alcalá, 35
28014 Madrid
Spain
Trade Mark: LUCKY
a g a i n s t
Applicant/holder: S-HURT Sp. z o.o.
Erazma Cio³ka 12
01-402 Warszawa
Poland
Contested trade
mark:
Lucky Coffee
Decision on the opposition No 953 812 page : 2 of 8
I. FACTS AND PROCEDURE
On 23/07/2004 the applicant filed application No 3 882 685 to register the word mark
“Lucky Coffee”.
The opposition is directed against all of the goods covered by the application, namely
the goods in classes 29, 30 and 31.
The opposition is based on:
• Earlier Spanish trade mark registration No 563 395 for the word mark “LUCKY”,
registered for goods in class 29. The opponent bases its opposition on all of these
goods.
• Earlier Spanish trade mark registration No 1 282 381 for the word mark
“LUCKY”, registered for goods in class 30. The opponent bases its opposition on all of
these goods.
The grounds of the opposition are those laid down in Article 8(1)(b) of Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community TRADE mark
(“CTMR”) (OJ OHIM 1/95, p. 53).
The applicant did not submit any observations in reply within the time limit.
The opponent argues that the signs are visually, phonetically and conceptually similar,
whereas the goods applied for are either identical, or very similar to the goods covered
by the earlier Spanish trade mark registrations.
II. DECISION
1. Spanish trade mark registrations No 563 395 and No 1 282 381
A. LIKELIHOOD OF CONFUSION
(i) Comparison of the goods and services
When making an assessment of similarity of the goods and services concerned, all
relevant factors relating to these goods and services should be taken into account.
These factors include, inter alia, their nature, their purpose and method of use and
whether they are in competition with each other or are complementary (see Judgment
of the Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer
Inc. [1998] OJ OHIM 12/98, p. 1419, paragraph 23). Further factors include the
pertinent distribution channels (in particular the sales outlets), the relevant public, and
the usual origin of the goods.
The goods to be compared are:
Decision on the opposition No 953 812 page : 3 of 8
Preserved fish in class 29.
Coffee, tea, cocoa, sugar, rice, tapioca,
sago, artificial coffee; flour and
preparations made from cereals, bread,
pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt,
mustard; vinegar, sauces (not included
sauces for salads); spices; ice in class 30.
Meat, fish, soups, bouillon, milk
products, frozen, preserved, dried and
cooked fruits and vegetables, potato
crisps in class 29.
Coffee, tea, cocoa, sugar, rice, flour and
preparations made from cereals, pasta,
sauces, spices in class 30.
Fresh fruit and vegetables, coconuts,
nuts in class 31.
EARLIER MARKS
CTM APPLICATION
Class 29
It is clear that the specific preserved fish of the earlier trademark is encompassed by
the general category of fish as applied for. Therefore, these goods are identical.
Meat as applied for is considered to be similar to preserved fish as protected by the
earlier trade mark registration on account on their common intended use, their sales
channels and the trade circles addressed (see the Decision of the Boards of Appeal of
9 July 2003, Appeal No R 41/2002-2).
The applicant’s soups, bullion do feature certain similarities with the opponent’s
preserved fish. First of all, because fish may be the major ingredient of soups or
bullions. The production of soups or bullions is, or can be seen, as a normal
development of the company, which provides fish products, production line. It is not
unreasonable for a consumer to presume that, at least certain kinds of soups and
bullions have the same origin as preserved fish. Therefore the goods are considered to
be similar.
Milk products as applied for are dissimilar with any of the goods protected by the earlier
trade mark registrations, both in classes 29 and 30. They have different nature, end
users, are not in competition with each other and are not complementary. These goods
are not in competition with each other. The nature of the products is so different that it
is concluded that they are dissimilar. It is true, that the end users of both the
opponent’s and the applicant’s goods are the same, namely the general public,
however this is not sufficient. It is also true that their manufacturer or their origin is
clearly different. Of course, all these goods are food stuffs and they could be sold in the
same outlet. Nevertheless, in the majority of cases they are placed on different
shelves. It is not normal for consumers to look for preserved fish, coffee, tea, cocoa,
sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals,
bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt,
mustard; vinegar, sauces; spices; ice in the milk products section. Furthermore,
because of their different nature, the goods in conflict would never be in competition
which each other. Therefore the goods at issue are dissimilar.
The same applies to the applicant’s goods frozen, preserved, dried and cooked fruits
and vegetables. These goods are not in competition, they have different nature,
Decision on the opposition No 953 812 page : 4 of 8
purpose and customers are quite distinct. It is not likely that consumer would consider
the applicant’s goods at issue as originated from the same producer as preserved fish.
Normally the PRODUCERS/suppliers of the fruits and vegetables are different from the
producers/suppliers of preserved fish and it is not likely that the consumers would
consider such goods as having the same origin. The applicants goods at issue have
also different nature, purpose, end users and neither are in competition with the
opponents goods as protected by the earlier trade mark registration in class 30, namely
coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations
made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast,
baking-powder; salt, mustard; vinegar, sauces (not included sauces for salads); spices;
ice. Therefore the goods are dissimilar.
Potato crisps as applied for are not similar to any goods as protected by the earlier
trade mark registrations. The fact that the applicant’s goods are sometimes used in
combination with the opponent’s goods, for example for “snacks”, is not sufficient
because they have different nature and are not in competition with each. Therefore the
goods are considered to be dissimilar.
Class 30
It is obvious that the applicant’s goods coffee, tea, cocoa, sugar, rice, flour and
preparations made from cereals, spices as applied for are identical to the opponent’s
goods protected by the earlier registration, namely coffee, tea, cocoa, sugar, rice, flour
and preparations made from cereals, spices. Sauces as applied for are clearly similar
or identical to sauces (not included sauces for salads) as protected by the earlier
registration.
Pasta as applied for also come under category of goods for which the earlier trade
mark is protected, namely flour and preparations made from cereals. Consequently, the
goods are identical.
Class 31
The applicant’s goods fresh fruit and vegetables, coconuts, nuts as applied for differ
from any goods in classes 29 and 30 as protected by the opponent’s trade mark
registrations. The arguments that plead for similarity of these goods are not enough to
outweigh the decisive arguments consisting in the different specific nature, origin and
distribution channels of the applicant’s goods. Thus, the applicant’s fresh fruit and
vegetables, coconuts, nuts are different to the opponent’s goods in classes 29 and 30.
Furthermore, because of their different nature, the goods in conflict would never be in
competition which each other. It is true that some of these products might be used as
ingredients for some pastry and confectionery, ices or that some of them are used in
connection with the opponent’s goods. However, this does not necessarily mean that
the products are similar. Therefore the goods are dissimilar.
Conclusion
The part of the goods applied for, namely meat, fish, soups, bouillon in class 29, coffee,
tea, cocoa, sugar, rice, flour and preparations made from cereals, pasta, sauces,
spices in class 30 are considered to be identical or similar to the goods protected by
the earlier trade marks registrations.
Decision on the opposition No 953 812 page : 5 of 8
The rest of the goods applied for, namely milk products, frozen, preserved, dried and
cooked fruits and vegetables, potato crisps in class 29, fresh fruit and vegetables,
coconuts, nuts in class 31 are considered to be dissimilar with any of the goods
protected by the earlier registrations.
(ii) Comparison of the signs
In determining the existence of likelihood of confusion, trade marks have to be
compared by making an overall assessment of the visual, phonetic and conceptual
similarities between the marks. The comparison must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive and
dominant components (see Judgment of the Court of Justice, Case C-251/95 Sabèl BV
v Puma AG, Rudolf Dassler Sport [1997] OJ OHIM 1/98, p.91, paragraph 22 et seq.).
The marks to be compared are the following:
LUCKY
Lucky Coffee
EARLIER MARKS
CTM APPLICATION
The earlier trade marks “LUCKY” are protected in Spain. Therefore, it is the impression
that the signs make on the public in Spain and their meaning and pronunciation in the
Spanish language which are relevant for their comparison.
The marks at issue share the common element “LUCKY”. In the case of the earlier
marks, they are composed exclusively of this word and, the mark applied for also
includes the word “Coffee”. The word “Coffee” most likely will be understood by the
relevant Spanish customers as simple and commonly used English word “coffee”. It
also highly resembles the Spanish word for coffee – café – and therefore will be
perceived as descriptive for coffee as applied for. It is also less striking because of its
position at the end of the word. Thus, in the present case, the verbal element “LUCKY”,
which is identical to the earlier marks, must be considered to be the dominant element
of the mark applied for.
A visual comparison of the signs clearly shows that both marks share the word element
“LUCKY”. The additional element in the CTM application “Coffee” will receive less
attention due to its position at the end of the word. Despite the different typeface and
length of the earlier mark, the common “LUCKY” element renders the marks visually
similar. Thus the Office considers that from a visual point of view the signs are of
medium similarity.
Aurally the first word part of the trade marks “LUCKY” is identical and will be
pronounced identically. The CTM application also contains the additional word element
Decision on the opposition No 953 812 page : 6 of 8
– “Coffee”. However, when pronouncing the names of trade marks consumers usually
tend to place greater importance on the first words and tend to refrain from fully
pronouncing long names, when referring to goods or services. Therefore the Office
considers that phonetically the marks are similar.
With respect to the meaning of the signs, it must be noted that none of the word
elements of the marks have a clear meaning in the Spanish language, therefore a
conceptual comparison cannot be made.
(ii) Conclusion
It constitutes a likelihood of confusion within the meaning of Article 8(1)(b) CTMR 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 (see Judgment of the
Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn Mayer
Inc[1998], OJ OHIM No. 12/98, page 1407 et seq., paragraph 29.)
Likelihood of confusion must be assessed globally, taking into account all the
circumstances of the case. Likelihood of confusion implies some interdependence
between the relevant factors, and in particular a similarity between the trade marks and
between the goods or services. Accordingly, a lesser degree of similarity between the
goods or services may be offset by a greater degree of similarity between the marks,
and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk
of confusion. Marks with a highly distinctive character, either per se or because of the
reputation they possess on the market, enjoy broader protection than marks with a less
distinctive character. (See Canon, paragraph 17 et seq.)
For the purposes of that global appreciation, the average consumer of the category of
products concerned is deemed to be reasonably well-informed and reasonably
observant and circumspect. However, account should be taken of the fact that 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. It should also be borne in mind that the average consumer’s level of
attention is likely to vary according to the category of goods or services in question
(Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co.
GmbH v. Klijsen Handel BV, OJ OHIM No 12/1999, p. 1585, paragraph 26).
As to the distinctive character of the earlier mark, the opponent did not explicitly claim
that his mark is particularly distinctive by virtue of intensive use or reputation.
Therefore, the assessment of the distinctiveness of the earlier mark must rest on the
distinctiveness per se of that sign which must be seen as normal in the present case.
Against this background, and taking into account that the goods in comparison are
identical or very similar, the Office concludes that there is a strong likelihood of
confusion given the visual and phonetic similarity of the marks in dispute. It has to be
considered in this connection that 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 (Lloyd, paragraph 26).
Therefore, the contested CTM application is to be rejected for meat, fish, soups,
bouillon in class 29, coffee, tea, cocoa, sugar, rice, flour and preparations made from
Decision on the opposition No 953 812 page : 7 of 8
cereals, pasta, sauces, spices in class 30 due to its similarity to the earlier Community
TRADE mark registrations No 563 395 and No 1 282 381.
B. COSTS
According to Article 81(1) CTMR, the losing party in opposition proceedings must bear
the fees incurred by the other party, as well as all costs.
According to Article 81(2) CTMR, where each party succeeds on some counts and fails
on others, or if reasons of equity so dictate, the Opposition Division shall decide a
different apportionment of costs.
According to Rule 94(1) IR, the apportionment of costs is dealt with in the decision on
the opposition.
Since the opposition is successful only for part of the contested goods and services,
both parties have succeeded on some counts and failed on others. Consequently, each
party has to bear their own costs.
Decision on the opposition No 953 812 page : 8 of 8
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
DECIDES TO:
1. Uphold opposition number B 953 812 for part of the contested goods, namely,
meat, fish, soups, bouillon in class 29, coffee, tea, cocoa, sugar, rice, flour and
preparations made from cereals, pasta, sauces, spices in class 30.
2. Reject application number 3 882 685 for all the above goods. It may proceed for
the remaining goods of the application, namely milk products, frozen, preserved, dried
and cooked fruits and vegetables, potato crisps in class 29, fresh fruit and vegetables,
coconuts, nuts in class 31.
3. Order each party to bear their own costs.
Alicante, 05/07/2007
The Opposition Division
Agnes SZANYI
Laura BEINORIENE
Normunds LAMSTERS