OPPOSITION No B 2 701 467

Sociedad Anónima Damm, Roselló, 515, 08025 Barcelona, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Mustapha Moussadik, Viale Tre Febbraio 1891, 2, 41049 Sassuolo (MO), Italy, and Bouchaib Cherif El Meslouhi, Via 25 Luglio nº 45, 41049 Sassuolo (MO), Italy (applicants).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 467 is upheld for all the contested goods, namely 

Class 32: Syrups and other preparations for making beverages; Mineral and aerated waters and other non-alcoholic beverages.

2.        European Union trade mark application No 14 098 073 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicants bear the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 098 073, namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 11 728 367. 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.

1. The goods

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

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Lithia water; Seltzer water; Waters [beverages]; Table waters; Aerated water; Preparations for making aerated water; Mineral water [beverages]; Preparations for making mineral water; Aperitifs, non-alcoholic; Whey beverages; Aloe vera drinks, non-alcoholic; Non-alcoholic fruit juice beverages; Powders for effervescing beverages; Isotonic beverages; Preparations for making beverages; Non-alcoholic beverages; Non-alcoholic honey-based beverages; Beers; Beer wort; Cider, non-alcoholic; Cocktails, non-alcoholic; Essences for making beverages; Non-alcoholic fruit extracts; Orgeat; Ginger ale; Fruit juice; Vegetable juices [beverages]; Kvass [non-alcoholic beverage]; Milk of almonds [beverage]; Peanut milk [non-alcoholic beverage]; Preparations for making liqueurs; Smoothies; Lemonades; Syrups for lemonade; Extracts of hops for making beer; Malt beer; Malt wort; Must; Fruit nectars, non-alcoholic; Pastilles for effervescing beverages; Soda water; Syrups for beverages; Sorbets [beverages]; Tomato juice [beverage]; Grape must, unfermented; Sarsaparilla [non-alcoholic beverage].

The contested goods are the following:

Class 32: Syrups and other preparations for making beverages; Mineral and aerated waters and other non-alcoholic beverages.

Syrups and other preparations for making beverages; mineral and aerated waters and other non-alcoholic beverages are identically contained in both lists of goods.

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. The degree of attention will be, on the whole, average.

3. The signs

TURIA MÄRZEN
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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public since the contested sign includes the phrase ‘LA BONNE QUALITÉ’ which conveys a meaning in French.

The earlier mark is a word sign which consists of the terms ‘TURIA MÄRZEN’. None of these words has any meaning for the relevant public therefore they have an average degree of distinctive character. The earlier mark, since it is a word mark, has no elements that could be considered more dominant than other elements.

On the other hand, the contested sign consists of a white oval form in the central of which the word ‘TURIA’ is written in white standard characters. Above this element and in a smaller size, the word ‘LALLA’ is written in upper case white letters. Both elements are placed on a grey background form outlined in white forming two rounded forms in both sides. None of these words has any meaning for the relevant public therefore they have an average degree of distinctive character. Below these two elements and in a smaller size, the phrase ‘LA BONNE QUALITÉ’ is included in upper case black characters. This slogan will be immediately understood by the relevant consumers as general excellence of standard or level and it is descriptive and non-distinctive for the relevant goods since it emphasis a positive characteristic of the products.

Below the oval form to the left, the figure of a woman with her thumb up is depicted in white, black and grey colours and it is distinctive for the relevant consumers. At the bottom of the sign, in a much smaller size, almost imperceptible, a label including the word ‘TURIA’ appears. However, it is unlikely that the consumers, due to its size and position, will perceive it, therefore, it will not be taken into account in the comparison.

The oval form and the element ‘TURIA’ in the contested sign are the co-dominant elements as they are the most eye-catching, the other elements playing a secondary role within the sign.

Visually, the signs coincide in their common term ‘TURIA’, which is co-dominant in the contested sign and the first element of the earlier mark.  However, they differ in the word ‘MÄRZEN’ of the earlier mark and in the remaining figurative and word elements of the contested sign as well as in the graphical representation and colours of those elements within the sign.

As regards the contested sign, it has to be noted 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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /turia/, present identically in both signs. The pronunciation differs in the sound of the letters /märzen/ of the earlier mark and in the word /lalla/ and in the descriptive phrase /la bonne qualité/.

Therefore, the signs are aurally similar to an average degree. 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Although the public in the relevant territory will perceive the meaning of the descriptive phrase ‘LA BONNE QUALITÉ’ and it will attribute a concept to some of the figurative elements of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgement 29/09/1998, C-39/97, Canon, EU:C:1998:442).

The goods are identical and the earlier mark enjoys a normal distinctive character.

Taking into account all the above, and especially the fact that the marks share the element ‘TURIA’, being an independent element within both signs, it is considered that the additional terms ‘MÄRZEN’ and ‘LALLA’ and the descriptive and non-distinctive phrase ‘LA BONNE QUALITÉ as well as the figurative elements of the contested sign cannot counteract the similarities between the signs so as to exclude a likelihood of confusion.

The relevant consumers may think that the identical goods come from the same or from economically-related companies. Those consumers are likely to notice the distinctive element ‘TURIA’ in both signs as it plays an independent role therein, when remembering the marks based on the imperfect recollection of them and might consequently not notice the differences between them, or they might confuse the trade marks based on the common element ‘TURIA’ and therefore assume that the contested sign is a sub-brand of goods connected to the earlier mark.

In addition, the Opposition Division notes that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, the consumer may easily conclude that the goods labelled and offered under the contested sign come from the same or from an economically-linked undertaking as the earlier mark.  

Considering all the above, there is a likelihood of confusion on the part of the French-speaking 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 European Union trade mark registration No 11 728 367. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicants are the losing parties, they 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

Elisa ZAERA CUADRADO

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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.