OPPOSITION No B 2 792 391

Envasados Eva S.A., P.I. nº 24, 31870 Lecumberri (Navarra), Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Aguila 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastian de los Reyes (Madrid), Spain (professional representative)

a g a i n s t

Maw s.r.l., Via Sistina 121, 00187 Roma, Italy (applicant).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 792 391 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 739 691 for the figurative mark , namely against all the goods in Classes 32 and 33. The opposition is based on European Union trade mark registration No 3 380 359 for the word mark ‘101, ONE O ONE’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

According to Rule 15(2)(c) EUTMIR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered to be properly indicated if the earlier mark is identified and it is possible to unequivocally identify the grounds and the opposition as based on Article 8(1) EUTMR.

In the notice of opposition the opponent marked Art. 8(1)(a) and (b) EUTMR as grounds for the opposition. However, in the statement of grounds it referred to Art. 8(4) EUTMR as well and also put forward arguments for Art. 8(5) EUTMR. As the references made to Art. 8(4) and (5) EUTMR were after the expiry of the opposition period, the opposition based on these grounds must be rejected as inadmissible.

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:

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

Class 33:        Alcoholic beverages (except beers).

Class 35:        Commercial retailing in small establishments and via global computer networks of drinks of all kinds.

The contested goods are the following:

Class 32:        Energy drinks; beer; flavored beers; energy drinks containing caffeine; non-alcoholic beverages; beer and brewery products; preparations for making beverages; waters; flavoured carbonated beverages; juices; aperitifs, non-alcoholic; fruit-based soft drinks flavored with tea; non-alcoholic beverages flavoured with tea; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages containing fruit juices; non-carbonated soft drinks; sports drinks containing electrolytes; non-alcoholic fruit cocktails; cocktails, non-alcoholic; water-based beverages containing tea extracts; cola drinks; fruit flavored soft drinks; non-alcoholic soda beverages flavoured with tea; low-calorie soft drinks; carbonated non-alcoholic drinks; non-alcoholic flavored carbonated beverages; cola; colas [soft drinks]; lemonades; beer-based beverages; non-alcoholic beer flavored beverages; low alcohol beer; non-alcoholic beer; coffee-flavored beer; lagers; black beer [toasted-malt beer]; beer-based cocktails; stout; concentrates for making fruit drinks; concentrates for use in the preparation of soft drinks; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; essences for making non-alcoholic drinks, not in the nature of essential oils; non-alcoholic fruit extracts used in the preparation of beverages; extracts for making beverages; syrups for beverages; syrups for making soft drinks; cordials; squashes [non-alcoholic beverages].

Class 33:        Alcoholic energy drinks; sangria; wine; alcoholic beverages of fruit; alcoholic beverages (except beer); preparations for making alcoholic beverages; cider; pre-mixed alcoholic beverages; spirits and liquors; aperitifs; cocktails; white wine; rose wines; sparkling wines; red wine; potable spirits; distilled beverages; liqueurs; coffee-based liqueurs; cream liqueurs.

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 32

Beer [enumerated twice] is identically contained in both lists of goods.

Non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

Preparations for making beverages are identically contained in both lists of goods.

The contested flavoured beers; low alcohol beer; coffee-flavoured beer; lagers; black beer [toasted-malt beer]; stout are included in the broad category of the opponent’s beers. Therefore, they are identical.

The contested brewery products include, as a broader category the opponent’s beers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested energy drinks; energy drinks containing caffeine; flavoured carbonated beverages; aperitifs, non-alcoholic; non-alcoholic beverages flavoured with tea; non-alcoholic beverages flavoured with coffee; non-carbonated soft drinks; sports drinks containing electrolytes; cocktails, non-alcoholic; water-based beverages containing tea extracts; cola drinks; non-alcoholic soda beverages flavoured with tea; low-calorie soft drinks; carbonated non-alcoholic drinks; non-alcoholic flavoured carbonated beverages; cola; colas [soft drinks]; lemonades; non-alcoholic beer flavoured beverages; non-alcoholic beer; fruit-based soft drinks flavoured with tea; non-alcoholic beverages containing fruit juices; non-alcoholic fruit cocktails; fruit flavoured soft drinks; cordials; squashes [non-alcoholic beverages] are included in the broad category of the opponent’s non-alcoholic drinks. Therefore, they are identical.

The contested waters include, as a broader category the opponent’s mineral and aerated waters. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested juices include, as a broader category the opponent’s fruit juices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested concentrates for making fruit drinks; concentrates for use in the preparation of soft drinks; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; essences for making non-alcoholic drinks, not in the nature of essential oils; non-alcoholic fruit extracts used in the preparation of beverages; extracts for making beverages; syrups for beverages; syrups for making soft drinks are included in the broad category of the opponent’s syrups and other preparations for making beverages. Therefore, they are identical.

The contested beer-based beverages and beer-based cocktails are highly similar to the opponent’s beer. They have the same nature and purpose. They also coincide in the producers, distribution channels and relevant consumers and they are in competition with each other.

Contested goods in Class 33

Alcohol beverages (except beer) are identically contained in both lists of goods.

The contested alcoholic energy drinks; sangria; wine; alcoholic beverages of fruit; cider; pre-mixed alcoholic beverages; spirits and liquors; aperitifs; cocktails; white wine; rose wines; sparkling wines; red wine; potable spirits; distilled beverages; liqueurs; coffee-based liqueurs; cream liqueurs are included in the broad category of the opponent’s alcoholic beverages (except beers). They are, therefore, identical.

The contested preparations for making alcoholic beverages refer to preparations containing alcohol and aromatic essences or extracts obtained from a plant, spice, herb or fruit, used as flavouring ingredients by the manufacturers of beverages. They are similar to the opponent’s preparations for making beverages because they have the same nature and method of use. Thy also coincide in the distribution channels, producers and end users.

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 found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

101, ONE O ONE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 sign is a word mark, ‘101, ONE O ONE’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the beginning of the earlier sign, namely the numerals ‘101’, has a greater impact on the relevant public than the verbal elements ‘ONE O ONE’.

Considering the fact that the earlier mark is a word mark, there are no elements that could be considered more dominant (visually eye-catching) than others.

The contested sign is a figurative mark composed of a depiction of a tiger in the middle of the sign, three stars in the colours green, white and red above it,  the verbal element ‘one’ written vertically up the left side of the sign in bold small case letters with a stylized numeral ‘1’ inside the letter ‘o’, the sign ® underneath and the verbal elements ‘oneitalianpremium’ written conjoined in small case letters in the colours green, white and red on the bottom of the sign, all of this represented on a rectangular blue background.

The stars in the colours green, white and red correspond to the Italian flag and will be perceived by the relevant public as a designation of origin of the goods in question. They, therefore, lack distinctiveness.

The word ‘premium’ is according to case-law of the General Court a laudatory term for something outstanding and due to its frequent use in commerce it is easily comprehensible for the average consumer in the European Union (22/05/201, T-60/11, SUISSE PREMIUM (FIG. MARK) / PREMIUM (FIG. MARK), ECLI:EU:T:2012:252, § 44). The word ‘italian’ in the expression ‘oneitalianpremium’ will be understood by the consumers in the entire relevant territory as a designation of origin of the contested goods, namely that they originate from Italy. This perception is also reinforced by the colours of the Italian flag in which the expression is represented. The whole expression ‘oneitalianpremium’ is non-distinctive as it alludes to the notion that the goods in question are of a superior quality and originate from Italy.

The verbal element ‘one’ together with the stylized numeral ‘1’ inside the letter ‘o’ and the depiction of a tiger are neither descriptive, nor allusive, nor otherwise weak for the goods in question. They have, therefore, normal distinctiveness.

The contested mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

In the contested mark the verbal elements ‘oneitalianpremium’ are less dominant because the other elements are visually more outstanding.

Visually, the signs coincide in the verbal element ‘ONE’ and the numeral ‘1’ present in both signs. However, they differ in the other numeral and verbal elements, namely the additional ‘01’ and ‘O ONE’ contained in the earlier sign, as well as the verbal element ‘oneitalianpremium’ and the figurative elements contained in the contested sign.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ONE’, present identically in both signs. It differs in the sound of the additional letters ‛O ONE’ of the earlier sign, as well as the less dominant and non-distinctive verbal element ‘oneitalianpremium’ of the contested sign.

The signs also differ in the pronunciation of the numerals ‘101’ which at the beginning of the earlier sign will first catch the attention of the public in question and the numeral ‘1’ of the contested sign. However, the numeral ‘1’ of the contested sign may be omitted by the relevant public when pronouncing the mark, since it is a stylized integrated part of the letter ‘o’ and it is, therefore, more likely that the attention of the consumers is caught by the verbal element ‘one’.

The figurative elements of the contested sign cannot be pronounced and are not subject to the phonetic comparison.

Considering the above, the signs are similar to a low degree.

Conceptually, the common verbal element ‘ONE’ being a basic English word (see decision of 04/04/2017, R 1811/2016-2, ONE WAY/ONE DAY, § 50) will be understood by the relevant consumers throughout the relevant territory as referring to the numeral ‘1’. To this extent the signs share the same concept. The signs differ, however, in the concept born by the numerals, respectively  ‘one hundred one’ in the earlier sign and ‘one’ in the contested sign, as well as the tiger depicted in the contested sign.

Therefore, the signs are conceptually similar to a low degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness through its high reputation but did not file any evidence in order to prove such a claim.

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 and services 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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 conflicting goods were found in part identical and in part similar, the conflicting signs were found visually, aurally and conceptually similar to a low degree.

It should be borne in mind that the relevant goods in the case at hand are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

The conflicting signs share the numeral element ‘1’ and the verbal element ‘ONE’ but they differ, however, in all their other elements. The earlier sign represents the numeral ‘one hundred one’ and the contested sign the numeral ‘one’. The contested sign is composed also of figurative elements which have no counterparts in the earlier sign. Therefore, the similarities between the signs are not sufficient to lead to a likelihood of confusion.

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

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs under comparison are obviously not identical.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lars HELBERT

Alexandra APOSTOLAKIS

Martin EBERL

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.