Date: 27 September 2018
Two recent decisions have confirmed that very small differences between signs can be crucial where the opposition is based on likelihood of confusion.
The English language skills of the average Spanish consumer proved to be the key factor in the first case (Convivo GmbH v EUIPO; T-288/16) which concerned opposition proceedings against an application by Convivo GmbH to register an international registration designating the EU for the word sign M’COOKY to cover a range of pastry and confectionery, services for providing food and drink, and temporary accommodation. The opponent, Porcesadora Nacional de Alimentos C.A. Pronaca, opposed on the basis of its earlier Spanish figurative mark (shown below) which covered meat, fish, poultry and game; preserved, dried and cooked fruits and vegetables; eggs, milk and milk products in Class 29, and the ground relied on in support of the opposition was likelihood of confusion under Article 8(1)(b) of the EUTMR.
The Board had found that the marks were visually and phonetically similar to an average degree. However, the marks were found to be conceptually dissimilar. The Board took the view that the dominant and distinctive element of both marks was “cook” and there was a likelihood of confusion between the marks at issue for a large section of the Spanish public.
The GC agreed with the Board’s dissection of the relevant public into an English-speaking part and a non-English speaking part, and found the Board had correctly held that a significant number of Spanish consumers, particularly the older generations, would not be capable of grasping the meaning of the word “cook” and that, for that non-English-speaking section of the relevant public, the word “cook” would be “a meaningless, fanciful expression”. Further, as regards the blue background in the form of an almond and a cook’s hat above the element ‘mr.’, the GC found the Board had rightly held that the impact was limited. Those graphical elements were purely decorative and did not alter the dominant character of the term “cook” within the marks at issue. The minor visual differences between the terms “cook” and “cooky” would go unnoticed among the relevant public, especially since the only different letter was at the end of the words.
The GC agreed with the Board that the signs were phonetically similar as their pronunciation coincided in the sound of the letter ”m”, located at the beginning of the word elements, and the sound of the word “cook”, and those two elements were placed in the same order. It followed that, since the relevant public had an average level of attention, the goods and services in question were identical or similar, that the signs at issue were similar visually and phonetically and that the earlier mark had a normal level of distinctiveness, the Board had correctly concluded there was a likelihood of confusion. Unsurprisingly, the Spanish consumer was viewed by the EUIPO as having limited language skills. The way is therefore open down in Alicante for oppositions based on likelihood of confusion between signs that contain words in the English language as dominant ingredients.
In the second decision (O/228/18), the mark applied for was MISTER CHEF to cover a range of bakeware, cookware and utensils in class 21. It was opposed on the basis of a likelihood of confusion with the earlier UK registrations for MASTERCHEF and MASTER CHEF covering kitchen utensils and containers in Class 21.
The opponent, Shine TV, also claimed that use of MISTER CHEF would take unfair advantage of the reputation of another earlier UK registration for MASTERCHEF which was registered for, amongst other things, a TV series in the reality genre in the field of cooking and food in Class 41. Due to its heavy merchandising of the MASTERCHEF brand, Shine TV claimed that the public were accustomed to seeing cooking goods related to the TV show and, consequently, might think that MISTERCHEF cooking goods were somehow related to the MASTERCHEF TV show.
The applicant, Mr Chef Ltd, denied the claims and requested that Shine TV provide proof of use, but did not specify for which trade marks. The UKIPO’s registrar therefore wrote to Mr Chef Ltd, requesting clarification. As Mr Chef Ltd failed to reply, Shine TV Ltd was able to rely on the registrations of its earlier MASTERCHEF marks in class 21 without having to show use of any of the marks in relation to the goods for which they were registered. However, they decided to file evidence, namely a witness statement stating that MASTERCHEF was used for a TV competitive reality cooking show, together with details of its history and popularity. An exhibit provided examples of MASTERCHEF merchandise in two documents (one in French), but failed to show where or when the goods were offered for sale or sold.
Weighing all the relevant ingredients up, the difference between the respective marks was held to be sufficient to avoid a likelihood of confusion. The Hearing Officer found that the relevant public would not make any link between, on the one hand, the contested mark and the goods covered by the application and, on the other hand, the earlier mark and the entertainment services for which it had a reputation. Although the earlier mark had acquired at least a normal level of distinctive character through use for a TV show based on a competition to identify highly skilled chefs, Shine TV Ltd had not established that, at the relevant date, the UK public would have been aware of the merchandising of MASTERCHEF goods.
The striking out of the applicant’s request for proof of use from the opponent illustrates the importance of understanding the standard opposition proceedings before the Trade Marks Tribunal.