OPPOSITION No B 2 757 170

Indi Essences S.L., Calle Cielos 22, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Esther Urteaga Pintado, C/ Principe de Vergara, 31, 28001 Madrid, Spain (professional representative)

a g a i n s t

IndyGo GmbH, Eifflerstraße 43, 22769 Hamburg, Germany (applicant).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 757 170 is partially upheld, namely for the following contested goods:

Class 30:        Coffee, teas and cocoa and substitutes therefor; Tea bags.

Class 32:        Non-alcoholic beverages; Preparations for making beverages.

2.        European Union trade mark application No 15 447 683 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 447 683. The opposition is based on European Union trade mark registration No 10 897 239. 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:        Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices.

The contested goods are the following:

Class 5:        Medicine; Nutritional supplements; Dietary supplemental drinks.

Class 30:        Coffee, teas and cocoa and substitutes therefor; Tea bags.

Class 32:        Non-alcoholic beverages; Preparations for making beverages.

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 5

The contested medicine; nutritional supplements; dietary supplemental drinks include mainly pharmaceuticals and other preparations for health-care purposes. They are intended and used with the purpose of treating or preventing disease or to provide nutrients that otherwise may not be consumed in sufficient quantities. They serve a specific medical purpose and are usually consumed under the supervision of a doctor, or at least on a doctor’s recommendation.

The opponent’s goods belong to Class 32, which includes soft drinks as well as other non-alcoholic beverages. These goods are aimed primarily at satisfying the thirst of individuals. The purposes of the goods under comparison are clearly different. They are neither in competition with each other nor complementary. Moreover, they do not normally originate from the same undertakings, the contested goods normally being produced by pharmaceutical companies and the opponent’s goods being produced by companies specialised in food and drinks for mass consumption. The goods at issue are not normally sold through the same distribution channels, the contested goods being sold in pharmacies or specialised drugstores, whereas the opponent’s goods can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. The fact that some of the contested goods and the goods of the earlier mark may coincide in nature (liquids) and in that they are intended for human consumption (drinking) and even in the possible effects they may have (providing energy) is not enough to establish similarity. Therefore, the contested goods in Class 5 are dissimilar to all the opponent’s goods in Class 32.

Contested goods in Class 30

The contested coffee, teas and cocoa and substitutes therefor; tea bags are similar to the opponent’s other non-alcoholic beverages in Class 32, as these goods, irrespective of whether they are prepared for immediate consumption as beverages or are dry leaves, granules, powders, etc., for the preparation of such beverages, target the same relevant public. Furthermore, they can be served in restaurants and in bars and are on sale in supermarkets and grocery stores, and they are often in competition. These products have the same distribution channels (e.g. they can be found in the same sections of supermarkets) and can originate from the same undertakings.

Contested goods in Class 32

Non-alcoholic beverages are identically contained in both lists of goods.

The contested preparations for making beverages are highly similar to the opponent’s other non-alcoholic beverages because they have the same purpose, distribution channels (e.g. the same sections in supermarkets) and relevant consumers. Moreover, the goods are in competition.

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 to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

	IndyGo
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). 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 Italian-, Portuguese- and Spanish-speaking parts of the relevant public, for the reasons given below.

The earlier mark comprises the word ‘INDI’, depicted in orange and yellow upper case letters, the word ‘Co’, depicted in a smaller typeface, and a yellow figurative element depicting an elephant, all of which are displayed in a device combining stylised depictions of flowers and leaves in red and orange. The figurative element ‘&’ preceding ‘Co’, due to its size and blurry depiction, is hardly noticeable and decipherable at first sight. As it is likely to be disregarded by the relevant public, this negligible element will not be taken into consideration for the purposes of comparison.

The word ‘INDI’, present in the verbal element ‘INDI Co’, on account of its size, central position and yellow typeface, is the most eye-caching component of the earlier mark. This word may be perceived as indicating the country of India. On the other hand, the word ‘Co’ has no meaning in the relevant territory. Nonetheless, taken as whole, the verbal element ‘INDI Co’ enjoys an average degree of distinctiveness.

With regard to the figurative elements of the earlier mark, while the elephant device is distinctive for the relevant goods, the others are commonplace ornamental elements on the packaging of the relevant goods and/or are of a purely decorative nature. As the latter are incapable of indicating commercial origin on their own, it may be reasonably assumed that consumers will direct their attention to the other, more distinctive, elements of the mark. Moreover, it has to be kept in mind 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 sign comprises the word ‘IndyGo’. Notwithstanding that part of the relevant public may perceive the concept of a specific shade of blue in this word, which sounds like ‘indigo’, the majority of the public will not find any clear or evident meaning in the contested sign. The goods will not trigger such a semantic association with the contested sign either. In any event, this expression is distinctive for the relevant goods.

The assessment of the opposition will proceed in relation to the part of the public for which the contested sign lacks any meaning.

Conceptually, while the relevant public will perceive the abovementioned semantic content in the earlier mark, the other sign lacks any meaning in the relevant language areas. It follows that the signs are not conceptually similar.

Visually, bearing in mind the abovementioned and that the contested sign is a word mark and therefore differences in the use of lower or upper case letters are immaterial, the signs coincide in the letters ‘IND**O’. However, they differ in their fourth letters, ‘I’ in the earlier mark and ‘Y’ in the contested sign, in their fifth letters, ‘C’ in the earlier mark and ‘G’ in the contested sign, and in the additional figurative elements in the earlier mark, some of which will have little impact on the perception of the sign by the public.

Moreover, 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. The fact that the verbal elements ‘INDI Co’ and ‘IndyGo’ have in common a three-letter sequence at their beginnings must be taken into consideration.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛IN/DI/’, present identically in both signs, as the graphemes ‘I’ and ‘Y’ are identically pronounced in the relevant language areas. Furthermore, the signs are similar in their third syllables, /CO/ versus /GO/. The pronunciation differs in the sounds of only the letters ‘C’ and ‘G’.

Therefore, the signs are aurally highly 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 clear meaning for any of the goods in question from the perspective of the public in the relevant language areas. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the conflicting goods are partially identical, partially similar to various degrees and partially dissimilar. They target the public at large, with an average degree of attention and the earlier mark enjoys a normal degree of distinctiveness in relation to the relevant goods.

The signs are visually similar to average degree and aurally highly similar due to a similar verbal element, (‘INDI CO’ vs ‘INDYGO’). This similar element is the entirety of the contested sign, and will be, bearing in mind what has been said above in section c), the most important element of the earlier mark.

Taking account of the fact that 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), the Opposition Division is of the opinion that the differences are not sufficient to counteract the visual and aural similarities between the signs, which together result in the signs creating similar impressions when perceived by the public as a whole.

It is true that the earlier mark includes additional figurative elements. However, in companies specialised in food and drinks for mass consumption, it is common practice to create product lines and denote them with trade marks derived from the main brand.

Considering all the above, there is a likelihood of confusion for the Spanish-, Italian- and Portuguese-speaking parts of the public for which the word ‘IndyGo’ lacks any meaning. 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 10 897 239. It follows that the contested trade mark must be rejected for the contested goods 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Vita VORONECKAITE

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.