OPPOSITION No B 2 399 270

Pukka Herbs Limited, 8 Hawkfield Business Park, Bristol  BS14 0BY, United Kingdom (opponent), represented by Mathys & Squire LLP, Abbey House 32, Booth Street, Manchester, Lancashire M2 4AB, United Kingdom (professional representative)

a g a i n s t

Al-Sehra LLC, PO Box-1568, Muscat 130, Oman (applicant), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 399 270 is partially upheld, namely for the following contested goods and services:

Class 30: Coffee; tea; cocoa; prepared coffee and coffee-based beverages; beverages made of tea; coffee substitutes.

Class 43: Restaurant services; cafe services; snack bar services; carry-out food services; take away food services in the nature of carry-out restaurant services.

2.        European Union trade mark application No 12 811 303 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 811 303, namely against some of the goods in Class 30 and all the services in Class 43. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 505 509 in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR and the non-registered trade mark ‘LOVE’ used in the course of trade in the United Kingdom in relation to which the opponent invoked Article 8(4) 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 United Kingdom trade mark registration No 2 505 509.

1. The goods and services

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

Class 30: Herbal teas (non-medicinal) and herbs; teas.

The contested goods and services are the following:

Class 30: Coffee; tea; cocoa; prepared coffee and coffee-based beverages; beverages made of tea; flavored syrups to add to beverages; coffee substitutes.

Class 43: Restaurant services; cafe services; snack bar services; carry-out food services; take away food services in the nature of carry-out restaurant services.

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.

Contested goods in Class 30

Teas are identically contained in both lists of goods in Class 30.

The contested beverages made of tea are identical to the opponent’s teas

The contested coffee; cocoa; prepared coffee and coffee-based beverages; coffee substitutes are similar to the opponent’s teas. These goods coincide in their end users, distribution channels and methods of use. Furthermore, they are in competition.

The contested flavored syrups to add to beverages consist of a sugar mixed with water while heated with naturally occurring or artificial flavourings. They are not similar to the opponent’s herbal teas (non-medicinal) and herbs; teas. Even though flavoured syrups may be used or mixed with beverages such as tea, this is not sufficient for finding a similarity. Flavored syrups to add to beverages and teas, herbal teas, herbs have different natures, methods of use, purposes and they do not have the same commercial origin.

Contested services in Class 43

The contested restaurant services; cafe services; snack bar services; carry-out food services; take away food services in the nature of carry-out restaurant services are similar to a low degree to the opponent’s teas as they can have the same producers/providers and distribution channels. Furthermore, they are complementary. Indeed, numerous business models not only provide for the sale of foodstuffs and beverages produced by them but also for the provision of catering services, be it within their own business establishments or in the field of outside catering, as well as vice versa, with providers of catering services diversifying their offer with ready-to-serve-meals (31/10/2014, R 968/2014-5, Thai Mango, § 13).

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 and services found to be identical or similar to different degrees are directed at the public at large whose degree of attention is average.

3. The signs

LOVE
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 the word mark ‘LOVE’ whereas the contested sign is a figurative mark consisting of the word ‘LOVE’ written in stylised letters (the letters are embellished or decorated with some abstract drawings and the letter ‘O’ contains the depiction of a red heart).  

The word ‘LOVE’ present in both signs refers to an intense emotion of affection, warmth, fondness and regards towards a person or thing. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive to an average degree. The red heart of the contested sign evokes the same concept of love.

Neither of the signs has any elements which could be considered clearly more dominant (visually eye-catching) than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the present case, as regards the contested sign, it is composed of a distinctive verbal element and some less distinctive figurative elements of a purely decorative nature. Moreover, the red heart merely reinforces the concept of the word ‘LOVE’.  Therefore, the verbal element is more distinctive than the figurative elements.

Visually, the signs coincide in the word ‘LOVE’ and differ in the stylisation and figurative elements of the contested sign. Taking into account the above considerations about the distinctive elements of the signs, the signs are considered visually similar to an average degree.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs share the same concept of love, they are conceptually identical.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the public is average and the inherent distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and phonetically and conceptually identical. The differences between the signs lying in the stylisation and figurative elements of the contested sign are clearly insufficient to differentiate the signs for the reasons explained above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registration.

It is considered that the degree of the similarity between the signs is enough for a likelihood of confusion to be established also in relation to the services that are similar to a low degree.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the European Union trade mark registration No 10 011 013 for the word mark ‘LOVE’ for herbal teas (non-medicinal) and herbs; teas in Class 30. Since this mark covers the same scope of goods as the earlier UK trade mark compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected on the grounds that they are dissimilar. Therefore, no likelihood of confusion exists with respect to those goods.

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). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks (UK No 2 505 509 and EUTM No 10 011 013) have a reputation in the United Kingdom.

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 23/04/2014. However, the contested trade mark has a priority date of 28/10/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom 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 30: Herbal teas (non-medicinal) and herbs; teas.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 23/11/2016 the opponent submitted the following evidence:

• Extracts from internet websites (www.amazon.de; www.dolphinfitness.co.uk; www.ocado.com; www.planetorganic.com; www.satnam.eu; www.iherb.com) showing ‘PUKKA ORGANIC LOVE’ tea offered for sale.

• Table entitled ‘Turnover of goods sold under the brand to date in the European Union’. The total turnover is 2,183,591.04 (1,303,364.09 for the United Kingdom). However, this table is from an unknown origin, it is not dated and there is no mention of the currency and of the trade mark concerned.

• Invoices issued by the opponent and addressed to clients in the European Union, concerning, inter alia, the sales of ‘LOVE’ teas.

• Photographs of a food truck and a menu list with the marks ‘PUKKA’ and ‘LOVE’.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite showing some use of the trade marks, the evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show that the trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on this article and in relation to the goods found dissimilar.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the United Kingdom non-registered trade mark ‘LOVE’ under the tort of passing off. It made some references in its observations to case-law deriving from English courts. However, the opponent did not furnish any copies of the decisions to which it refers.

In this respect, it should be recalled that where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor the corresponding changes of legislation or development of the case-law in all the Member States.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Frédérique SULPICE

Martina GALLE

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.