OPPOSITION No B 2 688 326

Ritzenhoff & Breker GmbH & Co. KG, Industriestr. 21, 33014 Bad Driburg, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Gie Cristaline, 70 avenue des Sources, 03270 Saint-Yorre, France (applicant), represented by Casalonga Alicante S.L., Avenida Maisonnave 41-6C, 03003 Alicante, Spain (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 326 is upheld for all the contested goods, namely 

Class 21: Bottles; Drinks containers.

2.        European Union trade mark application No 15 056 138 is rejected for all the contested goods. It may proceed for the remaining non-contested goods, namely:

Class 20: Corks for bottles; Cap closures (Non-metallic -) for containers.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 056 138, namely against all the goods in Class 21. The opposition is based on international trade mark registration No 890 223 designating the European Union and on German trade mark registration No 30 609 090. 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 international trade mark registration No 890 223 designating the European Union.

1. The goods

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

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware (included in class 21).

The contested goods are the following:

Class 21: Bottles; Drinks containers.

Contested goods in Class 21

The contested bottles; drinks containers are included in the broad category of, or overlap with, the opponent’s household or kitchen utensils and containers (not of precious metal or coated therewith). Therefore, they are identical.

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 are directed at the public at large but could also include a more specialised business consumer (for example, drink manufacture industry). The degree of attention is considered to be average.

 

3. The signs

	SNAP CLIC
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SNAP’ in the signs is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the German-, Spanish-, Bulgarian- and Portuguese- part of the public with no knowledge of English.

The earlier mark is figurative and consists of a red device containing the word element ‘Snap’ in its centre, in white and orange colour, and, on a second line, the much smaller verbal elements ‘by R & B’. The contested sign is a word mark and consists of the verbal elements ‘SNAP CLIC’.

The element ‘Snap’ included in the signs has no (descriptive/weak) meaning in relation to the relevant goods and public and its inherent distinctiveness is normal. The same goes for the smaller verbal elements ‘by R & B’ of the earlier mark.

The word ‘CLIC’, however, included in the contested sign will be associated by the relevant public with ‘a short, sharp sound of two objects coming into contact; pressing a button’. This is because the same or similar counterparts exist in the relevant languages (e.g. ‘clique’ in Portuguese, ‘klik, klikvam’ in Bulgarian, ‘Klick’ in German and ‘clic’ in Spanish). Bearing in mind the nature of the relevant goods (bottles and containers) this element is not particularly strong for these goods, as it may indicate their characteristics, for example that the goods have a click closure system or make a click when they close, or in order to indicate proper closure. Therefore, it is considered that this element is weak in relation to the goods.  

As regards the figurative elements of the earlier sign (such as the font and positioning of the letters, the red device and the colours) account must be taken of the fact that 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).

The contested mark, being a word mark, has no elements that could be considered more dominant (visually eye-catching) than other elements. As regards the earlier mark, the verbal elements ‘by R & B’ are much smaller in size and in a subordinate position as compared to the size and position of the remaining elements (namely the word ‘Snap’ and the red device), which are more visually eye-catching and, therefore, dominant.

Visually, the signs coincide in that they both contain the distinctive verbal element ‘Snap’, which is a visually eye-catching element in the earlier mark and represents the first and more distinctive verbal element of the contested sign. In addition, account must be taken of the fact that 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. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the contested sign.

The signs differ in the second, less distinctive verbal element ‘clic’ of the contested sign, as well as in the figurative elements of the earlier mark and the non-dominant verbal element ‘by R & B’ of the earlier mark.

Taking into account that the most important and distinctive verbal element of the earlier mark is fully included in the beginning of the contested sign, but also the mentioned differences in the signs, it is considered that they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘SNAP’ and differs in the sound of the verbal element ‘by R & B’ of the earlier mark and ‘CLIC’ of the contested sign. However, in view of the non-dominant position and small size of the element ‘by R & B’ of the earlier sign, it will probably be not pronounced. As regards the difference in ‘CLIC’, its impact will be reduced due to its weak character.  Therefore, the signs are aurally similar to an average degree.

Conceptually, as indicated above, the elements ‘by R & B’ and ‘SNAP’ of the signs have no meaning for the relevant public and territory and the element ‘clic’ of the contested sign will be associated with a meaning. However, in spite of the fact that ‘CLIC’ evokes a concept that is not present in the earlier mark and this brings about a certain conceptual difference between the signs, the impact of this conceptual difference is rather limited as this element is not particularly distinctive.

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 contested goods are identical to the opponent’s goods and they are directed at the public at large and at professional consumers. The degree of attention is average.

The earlier trade mark and the contested sign are visually and aurally similar to an average degree. The signs have a certain conceptual difference, albeit with a rather limited impact, as explained above. The similarities between the signs are on account of the common and normally distinctive element ‘Snap’, which constitutes a (co)dominant element in the earlier mark and is represented as the initial verbal element of the contested sign.

 

As regards the difference in the element ‘clic’ placed as a second element in the contested sign, its impact is not overwhelming and its role as a trade identifier is rather limited. The remaining different elements of the earlier sign are either figurative or non-dominant and their role (as indicators of trade origin) in the earlier sign is less important than that of the verbal element ‘Snap’.

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical goods.

Account is taken also of the imperfect recollection factor stipulating that the average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In addition, in the present case it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade marks has launched a new line of goods designated by the trade mark applied for.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public such as the German-, Spanish-, Bulgarian- and Portuguese- part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 890 223 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right IR No 890 223 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Robert MULAC

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.