Mama mia! Here we go against
The sound of these marks had significance, says Amelia Skelding.
On 11th November 2020, Societa’ Vissana Industria Lavorazione Alimentare Srl (the Opponent) filed an opposition against all the goods and services of EU trade mark application No. 18137309 for MAMA PIZZA, in the name of Mama Pizza und Hot Wok Franchise GmbH & Co. KG (the Applicant).
The opposition was based on international trade mark registration No. 830031 designating the EU for MAMA MIA. The Opponent invoked Article 8(1)(b) EUTMR.
The opposition was based on goods in class 30 (“Truffled, salted and sweet food products, pizzas, focaccias and deep-frozen products”).
The contested goods and services were: class 30 (“Pizzas; fresh pizza; pasta; pasta dishes”) and class 43 (“Food and drink catering; providing temporary accommodation; food preparation services; supplying of meals for immediate consumption; and serving food and drink for guests in restaurants”).
The Opposition Division (OD) found the goods in class 30 to be identical or highly similar to the Opponent’s “pizzas”.
However, the services listed in class 43 were found to be of low similarity, with the exception of “providing temporary accommodation”, which was deemed to be dissimilar.
Assessment
The expression “Mama Mia” was found to allude to good quality or consumer satisfaction, but would not, contrary to the Applicant’s view, be perceived as a direct description of any characteristics of the relevant goods. Therefore, the degree of distinctiveness was considered average.
The stylisation of the marks was held to be merely decorative and therefore non-distinctive.
As is typical with marks consisting of both verbal and figurative elements, the verbal component was held to have a stronger impact on the consumer than the figurative elements.
Visually, the marks share the term “Mama”. They differ in the verbal element “Mia” of the earlier mark and “Pizza” of the contested sign.
They also differ in the figurative elements, but this was held to have a lower impact. The OD noted that the coinciding element, “Mama” was at the beginning of both marks and that, as consumers read left to right, this part of the mark catches their attention the most.
The signs were found to be visually similar to an average degree. The marks were found to be aurally similar to an above-average degree.
The OD held that the relevant consumer would recognise that “Mama” means “mother”. The other concepts were found to have a limited impact on the conceptual perception of the signs. Therefore, the signs were found to be highly similar conceptually.
Rejected
The OD found there to be a likelihood of confusion, including association (for example, the later mark could be seen as a sub-brand of the “Mama” brand).
The contested trade mark was rejected for all the goods and services found to be identical or similar, but not for those considered dissimilar.
This case illustrates that even if the figurative elements of two marks are quite different, if there are strong verbal similarities the marks may well be considered similar, particularly when the coinciding terms are at the beginning of the mark.
Key points
- Even if the figurative elements of two marks are different, strong verbal similarities may result in the marks being considered similar
- A shared element that is distinctive and at the beginning of both marks may mean they are considered similar, even if it is followed by dissimilar terms.
Author
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Amelia Skelding
Chartered Trade Mark Attorney, Keltie LLP
