OPPOSITION No B 2 728 262

La Pitusa, S.A., Benjamín Franklin, 8, 50014 Zaragoza, Spain (opponent), represented by Díaz Ungría, S.L., Avda. Concha Espina nº 8 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Max Euro-Food Spółka z o.o., ul. Trakt Lubelski 140/31 lok. 2, 04-790 Warsaw, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 262 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all goods of European Union trade mark application No 14 960 694. The opposition is based on Spanish trade mark registration No 380 285 and Portuguese trade mark registration No 304 904. The opponent invoked Article 8(1)(b) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 380 285.

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1. The goods

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

Class 32: Carbonated drinks, non-alcoholic nor therapeutic; Aerated beverages; Fruit drinks and fruit juices without fermenting (except must); lemonades; orangeades; soda beverages (with the exception of orgeats); seltzer water and soda water.

The contested goods are the following:

Class 32: Non-alcoholic beverages; energy beverages, isotonic beverages, refreshing beverages and fortifying beverages, essences and syrups for making beverages.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are directed at the public at large. The degree of attention will be average.

 

3. The signs

ZAR
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark containing the element ‘ZAR’, which will be perceived as ‘the male Russian ruler until 1917’ and is distinctive for the relevant goods.

The contested mark is figurative and consists of the verbal element ‘SAR’ in stylized grey letters followed by a figurative element on a rectangular black background. Contrary to the opponent’s argument, this word is meaningless in Spanish. Contrary to the opponent’s opinion, it is unlikely that the relevant public will associate this word with the abbreviation standing for ‘His/Her Royal Highness’ (‘Su Alteza Real’), used to refer to princes other than monarchs and their consorts, (notably) because such expression is always followed by a point after each of the letters. The different elements of the mark are distinctive for the relevant goods.

It has to be noted that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letters ‘*AR’ present in both signs in second and third position. However, they differ in the stylized typeface in which these letters are depicted in the contested mark, the initial letters ‘Z’ and ‘S’ and the figurative elements of the contested sign. The signs are visually similar only to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*AR’ present in both signs in second and third position. They differ in their initial letter ‘Z’ in the earlier mark and ‘S’ in the contested sign which have a very different sound for the relevant public. They are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since one of the signs will not be associated with any meaning for the majority of the public, the signs are not conceptually similar.

In the unlikely possibility that the public will link the word ‘SAR’ with the expression ‘His/her Royal Highness’, this conclusion equally applies because the signs would have dissimilar meanings. The right way to refer to the tsar would be ‘His/her Imperial Highness’, which is the style used by members of an imperial family to denote imperial -as opposed to royal- status to show that the holder is descended from an Emperor rather than a King.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods have been assumed to be identical. However the marks are similar only to a low degree from a visual perspective and aurally similar to an average degree. Moreover, the earlier mark contains a clear concept whereas the contested sign has no meaning for the relevant public. The coincidence in two letters is not particularly striking in this case, due to the difference in the first letter and the additional elements which are present in the contested sign. These additional elements play a relevant role, especially when the marks are perceived visually.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

Furthermore, the verbal elements of the signs consist of only three letters and are, consequently, short marks. It is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Moreover, the different letter is placed at the beginning of the marks. Consequently, the fact that they coincide in two letters and that the differing one is not phonetically and visually similar, together with the clear meaning of the earlier mark and the additional elements of the contested sign, excludes likelihood of confusion in this case (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based the opposition on the earlier Portuguese trade mark registration No 304 904 ‘ZAR’ for mineral and aerated waters; fruit juices in Class 32. This mark is identical to the one that has been compared above and covers a narrower scope of goods. The analysis under the Portuguese public’s perspective leads to the same conclusions as the one stated above on the comparison of the signs. Visually they are also similar to a low degree, whereas aurally they are similar to an average degree since the initial different letters ‘Z’ and ‘S’ are pronounced differently also in Portuguese. Finally, from the conceptual point of view, the element ‘ZAR’ is meaningless in Portuguese although it might be associated by part of the public with the equivalent in Portuguese, ‘czar’ because of the identical pronunciation. It is also unlikely that the public would associate the word ‘SAR’ with the expression ‘His/Her Royal Highness’. And even if this would happen, the signs are conceptually not similar also in Portuguese for the same reasons stated above with regard to the Spanish public. Therefore, no likelihood of confusion exists with respect to this earlier right.

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

Steve HAUSER

Begoña URIARTE VALIENTE

Pedro JURADO MONTEJANO

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.