2024 WIPO IP Judges Forum Informal Case Summary – Second Board of Appeal of the European Union Intellectual Property Office [2023]: iFoodDS / efood (fig.), R 778/2023-2
This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 4: Strength of Trademarks: Weak Elements and their Enforcement
Second Board of Appeal of the European Union Intellectual Property Office [2023]: iFoodDS / efood (fig.), R 778/2023-2
Date of judgment: November 7, 2023
Issuing authority: Second Board of Appeal EUIPO
Level of the issuing authority: Appellate instance
Type of procedure: Administrative
Subject matter: Trademarks
The IR Holder/Appellant: IFOODDECISIONSCIENCES, INC.
Opponent/Defendant: Online Delivery Single Member Société Anonyme for the Promotion of Internet Services
Keywords: Weak element; Visual similarity; Phonetic similarity; Conceptual similarity; Likelihood of confusion.
Basic facts: On November 17, 2020, IFOODDECISIONSCIENCES, INC. (the IR holder) designated the European Union in its international registration for the below word mark for goods and services in Classes 9, 41, and 42:
On July 13, 2021, Online Delivery Single Member Société Anonyme for the Promotion of Internet Services (the opponent) filed an opposition against the designation of the international registration for all the specified goods and services, citing the below earlier trademark filed on March 3, 2020, and registered on October 28, 2020, for goods and services in Classes 9, 35, 39, and 43.
By decision dated February 12, 2023 (the contested decision), the Opposition Division refused protection of the IR in the European Union for part of the contested goods and services on the grounds that there was a likelihood of confusion. The opposition was upheld for the goods and services in Classes 9 and 42, while the IR was allowed to be registered in the EU for the services in Class 41.
On April 12, 2023, the IR holder filed an appeal against the contested decision, requesting that the decision be partially set aside to the extent that the IR was refused protection in the European Union. The statement of grounds of the appeal was received on May 31, 2023.
In its response, received on August 4, 2023, the opponent requested that the appeal be dismissed.
The Second Board of Appeal considered the following factors while evaluating contested and earlier trademarks:
· Level of attention: The opponent’s goods in Class 9 target the general public, who will use them to place an order for food delivery, and professionals in the hospitality industry, such as restaurant and snack bar owners and managers, who will collaborate with the opponent for the placement of food or beverage orders and the delivery of their products to the final consumer. The level of attention of the end consumers is average, and the level of attention of the professional public is above average.
The contested goods and services in Classes 9 and 42 are aimed only at business customers in the fields of food safety, quality, traceability, and sustainability. Their level of attention is above average. The public that is likely to use both the opponent’s and the IR holder’s goods and services consists of professionals in the hospitality and food industries.
· The contested goods and services in Classes 9 and 42 are similar, or at least similar to a low degree, to the opponent’s goods in Class 9.
· Distinctive and dominant elements of the contested sign: The prefix “i” refers to “internet” or “interactive” and is weak, as it may be perceived as indicating that the relevant goods and services are, or can be, related to the internet. “Food” is understood by the entire EU public. The contested goods and services are related to food safety, quality, traceability, and sustainability, with “food” directly describing their subject matter. “DS” is distinctive.
· Distinctive and dominant elements of the earlier mark: The prefix “e” will be understood as an abbreviation of “electronic”, and it is weak in relation to software related goods in Class 9. The opponent’s goods are directly related to ordering and delivering food; therefore, the term “food” describes the subject matter of the goods in Class 9.
· The marks are visually similar to a low degree, phonetically similar to a below-average degree, and conceptually similar to a low degree.
· The marks have only the element “food” in common, which is descriptive of the goods and services at issue and therefore weak. The impact of that element on the assessment of the likelihood of confusion will be particularly low. The Board of Appeal, therefore, found no likelihood of confusion between the two marks.
Held: The Second Board of Appeal rejected the opposition, thus allowing the registration of the IR holder’s trademark.
Relevant holdings in relation to the strength of trademarks, weak elements, and their enforcement:
· The weak distinctive character of an element common to two signs reduces the relative weight of such an element in the comparison of those signs, including the visual and phonetic comparisons, even though its presence must be taken into account. As a result, even though the sequence of letters “food” is included within the contested sign, that shared sequence will have a limited impact on the overall visual impression of the marks at issue. The similarity of this element will be counteracted to a certain extent by the differing elements. Despite the identical presence of the word “food”, the marks at issue display clear visual differences in the overall impression they create in the eyes of the relevant public. Therefore, the marks are visually similar to a low degree.
· The marks coincide in the pronunciation of the common word element “food” but differ in the pronunciation of the prefixes “e” and “i” and the element “DS” in the contested sign. While the phonetic similarity could be high due to the identical pronunciation of the word “food”, the limited impact of this element on consumers, given its weak distinctive character, must nevertheless be taken into account. This fact contributes to reducing the phonetic similarity of the marks, which are considered phonetically similar to a below-average degree.
· The meanings of the word elements “efood” and “iFood” will be understood by all consumers in the EU. There is some conceptual similarity insofar as both signs refer to “food”. However, the impact of that common word element is limited due to its weak distinctive character. The earlier mark conveys the concept of “electronic food”, while the contested sign conveys the concept of “internet” or “intelligent food”. The prefixes “e” and “i” introduce a conceptual dissimilarity between the marks. As a result, the conceptual similarity between the marks is low.
· Overall assessment: The marks share only the word “food”, which has a weak degree of distinctive character and will have merely a limited impact on the overall assessment of the likelihood of confusion. The degree of overall similarity cannot be considered high in light of the weak distinctive character of the term “food”, and this cannot lead to a likelihood of confusion from the perspective of the professional public in the EU for any of the contested goods and services.
Relevant legislation: