OPPOSITION No B 2 626 425

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830 Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

KellyDeli Company Limited, Suite 112 (N), 150 Minories, London  EC3N 1LS  United Kingdom (applicant), represented by Keltie LLP, No. 1 London Bridge  London  SE1 9BA, United Kingdom (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 626 425 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 542 666 . During the course of the opposition proceedings the applicant limited the list of the goods and services of the mark applied for by removing all goods and services in Classes 29, 30, 32, 39, 43 and limiting the services in Class 35. The opposition is based on the following earlier rights:

• Austrian trade mark registration No 83 927 HAPPY DAY (word mark)

• Austrian trade mark registration No 280 399 HAPPY DAY (word mark)

• Finnish trade mark registration No 210 129 HAPPY DAY (word mark)

• Greek trade mark registration No 132 977 HAPPY DAY (word mark)

• United Kingdom trade mark registration No 2 125 347 HAPPY DAY (word mark)  

• Irish trade mark registration No 203 529 HAPPY DAY (word mark)  

• Maltese trade mark registration No 35 313 HAPPY DAY (word mark)  

• Cyprus trade mark registration No 62 990 HAPPY DAY (word mark)  

• International trade mark registration No 999 930 HAPPY DAY (word mark) designating the Benelux, Greece, Spain, France and Cyprus  

• International trade mark registration No 428 330  HAPPY DAY (word mark) designating Bulgaria, Benelux, Croatia, Czech Republic, Germany, Estonia, Spain, France, Italy, Latvia, Lithuania, Hungary, Poland, Portugal, Romania, Slovenia and Slovakia  

• International trade mark registration No 887 542 HAPPY DAY (word mark) designating the Benelux, Greece, Spain, Ireland, Portugal, Sweden and the United Kingdom

• European Union trade mark registration No 8 769 341 HAPPY DAY (word mark)  

• European Union trade mark registration No 13 025 036 HAPPY DAY (word mark)

The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The goods and services

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

Austrian trade mark registration No 83 927 HAPPY DAY (word mark)

Class 32: Mineral water, fruit juices, fruit juice beverages and non-alcoholic beverages.  

Austrian trade mark registration No 280 399 HAPPY DAY (word mark)

Class 30: Coffee, tea, cocoa and artificial coffee; coffee based drinks; drinking chocolate; cocoa-based beverages; coffee beverages with milk; coffee-based beverages with milk; cappuccino; macchiato; latte-macchiato; iced coffee; rice; tapioca and sago; flour and preparations made from cereals; farinaceous foods; bread, pastry and confectionery; candy; pralines and confectionary; chocolate and chocolate goods; edible ices; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); marinades; fruit sauces; tomato sauces; spices; ice; tea drinks; ice tea; tea-based beverages; tea-based and/or water-based beverages; tea-based beverages with fruit flavoring or fruit taste; non-alcoholic beverages with tea flavor or tea taste; fruit teas; fruit teas with lemon and/or elderflower flavour; fruit tea with peach and/or honey flavour; coffee flavoured soft drinks; soft drinks with coffee taste; non-alcoholic beverages containing tea or tea extracts; non-alcoholic beverages containing coffee or coffee extracts. 

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectars; fruit nectar beverages; vegetable drinks and vegetable juices; syrups and other preparations for making beverages; energy drinks; lemonades; non-alcoholic beverages, in particular with fruit flavouring; smoothies; flavoured water-based and/or tea-based beverages; tea-based and/or water-based beverages; coconut juice; coconut water; tomato juice; non-alcoholic beverages made with fruits; non-alcoholic fruit extracts; fruit juice concentrate; cocktails, non-alcoholic; isotonic drinks; non-alcoholic beverages with coffee components or a coffee flavour, non-alcoholic energy drinks with coffee components or a coffee flavour; must (unfermented); non-alcoholic aperitifs; non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; whey beverages; non-alcoholic beverages with tea flavor; coffee flavoured soft drinks; non-alcoholic beverages containing fruits or fruit extracts.

Class 33: Alcoholic beverages (except beers); alcoholic beverages containing fruit; pre-mixed alcoholic beverages, other than beer-based; alcoholic cocktails.

Class 43: Services for providing food and drink, including catering, and temporary accommodation; catering; bar services, in particular for drinks bars, fruit juice bars, smoothie bars and fruit bars; takeaway services; rental of drink dispensing machines; services for the preparation of food and drink; provision of information relating to the preparation of food and drink. 

Finnish trade mark registration No 210 129 HAPPY DAY (word mark)

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 

Greek trade mark registration No 132 977 HAPPY DAY (word mark)

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 

United Kingdom trade mark registration No 2 125 347 HAPPY DAY (word mark)

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; vegetable drinks and juices. 

Irish trade mark registration No 203529 HAPPY DAY (word mark)  

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages 

Maltese trade mark registration No 35 313 HAPPY DAY (word mark)  

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 

Cyprus trade mark registration No 62 990 HAPPY DAY (word mark)  

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 

International trade mark registration No 999 930 HAPPY DAY (word mark) designating the Benelux, Greece, Spain, France and Cyprus  

Class 29: [Meat,]* fish, [poultry and game; meat extracts;]* preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; [edible oils and fats]**. 

Class 30: 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 (condiments); [spices;]* ice. 

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. 

* in the designated territories except the Benelux

** in the designated territories except Spain

International trade mark registration No 428 330  HAPPY DAY (word mark) designating Bulgaria, the Benelux, Croatia, Czech Republic, Germany, Estonia, Spain, France, Italy, Latvia, Lithuania, Hungary, Poland, Portugal, Romania, Slovenia and Slovakia  

Class 32: Mineral water, fruit juices, fruit juice beverages and non-alcoholic beverages 

International trade mark registration No 887 542 HAPPY DAY (word mark) designating the Benelux, Greece, Spain, Ireland, Portugal, Sweden and the United Kingdom

Class 32: Mineral water, fruit juices, fruit juice beverages and non-alcoholic beverages.  

European Union trade mark registration No 8 769 341 HAPPY DAY (word mark)  

Class 32: Fruit drinks, fruit juices and other non-alcoholic drinks. 

European Union trade mark registration No 13 025 036 HAPPY DAY (word mark)    

Class 30: Coffee, tea, cocoa and artificial coffee; Coffee based drinks; Drinking chocolate; Cocoa-based beverages; Coffee beverages with milk; coffee-based beverages with milk; Cappuccino; Macchiato; Lattemacchiato; Iced coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Farinaceous foods; Bread, pastry and confectionery; Candy; Pralines and confectionery; Chocolate and chocolate products; Edible ices; Ices and ice creams; Sugar, honey, treacle; Yeast, bakingpowder; Salt; Mustard; Vinegar, sauces (condiments); Marinades; Fruit sauces; Tomato sauces; Spices; Ice; Tea drinks; Iced tea; Tea-based beverages; Tea-based beverages with fruit flavoring or Fruit flavourings; Fruit teas; Fruit teas containing lemon and/or flavoured with elderflower; Fruit teas containing peach and/or flavoured with honey.

Class 32: Beers; Mineral and aerated waters; Non-alcoholic beverages; Fruit beverages and fruit juices; Nectars; Fruit nectars; Fruit nectar beverages; Vegetable juice, Vegetable beverages and Vegetable juices [beverages]; Syrups and other preparations for making beverages; Energy Drinks; Lemonades; Non-alcoholic beverages, In particular with fruit flavouring; Smoothies; Flavoured water-based and/or tea-based beverages; Water-based beverages; Coconut juice; Coconut water; Tomato juice; Non-alcoholic beverages made with fruits; Non-alcoholic fruit extracts; Fruit juice concentrate; Cocktails, non-alcoholic; Isotonic drinks; Non-alcoholic beverages with coffee components or a coffee flavour, non-alcoholic energy drinks with coffee components or a coffee flavour; Must; Non-alcoholic aperitifs; Non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; Whey beverages; Non-alcoholic beverages with tea flavor; Coffee flavoured soft drinks; Non-alcoholic beverages with fruit flavouring; Non-alcoholic beverages containing fruits or fruit extracts; Non-alcoholic beverages with a tea taste or tea flavour; Non-alcoholic beverages with a coffee taste or coffee flavour; Non-alcoholic beverages containing tea or tea extracts; Non-alcoholic beverages containing coffee or coffee extracts; Syrups for beverages; Fruit syrups and other non-alcoholic fruit preparations for making non-alcoholic beverages.

Class 43: Services for providing food and drink, including catering, and temporary accommodation; Catering; Bars; Drinks bars; Fruit juice and smoothie bars, fruit bars; Bar services, in particular for drinks bars, in particular for fruit juice and smoothie bars and fruit bars; Services for the preparation of food and drink; Takeaway services; Drink dispensing machines (rental of); Services for providing food and drink in drinks bars with offtrade sales; Rental of drink dispensing machines; Services for the preparation of food and drink; Consultancy and information relating to the preparation of beverages and meals; Beverage delivery services.  

The contested services are the following:

Class 35: Business management in relation to franchise restaurants.

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.

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand market share. These services may be provided to companies active in sectors to which the opponent’s goods and services belong. For example in the present case, as the opponent argues, the application covers business management in relation to franchise restaurants whereas one earlier Austrian and one earlier European Union trade mark cover services for providing food and drink in Class 43. This, however, is not a sufficient reason to find the contested services and the opponent’s services similar. The contested business management services are provided by specialised business consultants to third parties, in the present case to franchise restaurants, whereas the opponent’s services are provided by restaurants, bars or catering companies directly to the general public, who would not think that the contested services come from the same or an economically-linked undertaking.

The contested services differ in their nature, purpose, and origins from the opponent’s goods in Classes 29, 30, 32, 33 and services in Class 43. They are neither in competition nor complementary. Therefore, the goods and services are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

1. The signs

HAPPY DAY
Earlier trade marks	Contested sign

The relevant territories are the European Union and Bulgaria, Benelux, Croatia, Czech Republic, Germany, Estonia, Spain, France, Italy, Latvia, Lithuania, Hungary, Poland, Portugal, Romania, Slovenia, Slovakia, Greece, Ireland, Sweden, United Kingdom, Austria, Finland, Malta and Cyprus.

The earlier marks are word marks comprising two English words, ‘HAPPY’ and ‘DAY’. The contested sign is a figurative mark consisting of the image of an Asian girl in black, white and red along the word components ‘HAPPY’ and ‘DAILY’ placed in two lines in standard black font apart from the last ‘Y’ letters which are in red. ‘HAPPY’ refers to a feeling of pleasure and ‘DAY’ is a 24-hour period. Considering that ‘HAPPY’ and ‘DAY’ are elementary, basic English words, they are likely to be recognised as English words and understood by the relevant consumer throughout the relevant territories in accordance with their English definitions (9/11/2016, R 1093/2016-5, Happy Days (fig.) / HAPPY DAYS et al. § 26 26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 41 and 06/03/2012, T-565/10, Highprotect, EU:T:2012:107, § 16). This finding is also likely to apply to the contested mark’s word element, ‘DAILY’, which relates to a period of one day or something which happens every day.

The image of an Asian girl will be perceived as such. The distinctiveness of both signs is normal since none of their elements have any relation with the goods and services at hand.

Visually, the signs coincide in ‘HAPPY DA*Y’. Visually they differ in the figurative element of the contested sign and the two additional letters ‘IL’. Aurally, the signs differ in the sounds of ‘LY’ of the contested mark,  while they share all the sounds of the earlier sign. The concepts of ‘HAPPY DAY’/’HAPPY DAILY’ are also very close. Visually and conceptually the signs differ in the contested sign’s figurative element.

The signs under comparison are therefore similar to the extent that they have in common the element ‘HAPPY DA(*)Y. 

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade marks have a reputation in Austria and in other countries of the European Union, at least Bulgaria and Slovakia.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 08/09/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the territories claimed prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 32: Fruit juices and fruit drinks.

For reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier marks have a reputation for all the goods for which reputation is claimed.

3. The ‘link’ between the signs

The earlier marks are, therefore, presumed to be reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

The establishment of such a link, while triggered by similarity between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

In the present case, the contested business management in relation to franchise restaurants concern activities associated with running a company, such as controlling, leading, monitoring, organising and planning. These services are therefore provided to business clients.

At the same time, the earlier trade marks are assumed to have a reputation among the general public for fruit juices and fruit drinks.

The relevant section of the public for the goods or services covered by the conflicting marks overlaps to some extent since the fruit juices and fruit drinks are consumed by the public at large, including by those running a business. However, the industry producing fruit drinks is so distant from the world of business consultancy that the later mark, even in the case of reputation, would be unlikely to bring the earlier mark to the mind of the public when seeking the relevant business management services.

The opponent did not submit any arguments which could prompt the Opposition Division to arrive to a different conclusion.

In the course of the opposition proceedings, the applicant removed five classes of goods and services, and only maintained the application for one type of services in Class 35. The opponent, in response, merely reiterated the claim of similarity with services in Class 43, an argument which failed for reasons set out above at the examination of Article 8(1)(b). The opponent did not claim reputation of the earlier marks for services in Class 43. While reputation was claimed for goods in Class 32, no particular reasoning was provided, even after the applicant’s limitation reduced the contested goods and services to business management services only, how this particular type of service could be linked to the opponent’s goods. The opponent merely repeated the claim of reputation and noted that in light of reputation it is irrespective whether or not goods and services are similar.

In this case, however, it is unreasonable to assume that, when seeking business management services, the relevant public will associate these services with a trade mark that is very well known for fruit juices. The significant differences in purpose and customers of the services in dispute and the goods for which a reputation has been assumed make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them, as far as the contested dissimilar services are concerned.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.