OPPOSITION DIVISION
OPPOSITION No B 2 764 531
Greenme SA, Route de l’Allondon 18, 1242 Satigny, Switzerland (opponent),
represented by Abecsa Patentes y Marcas, Alcalá, 117, 2 Izqda., 28009 Madrid,
Spain (professional representative)
a g a i n s t
Nicolaus Müller, Darumerstraße 25, 49086 Osnabrück, Germany (holder),
represented by Hoyng Rokh Monegier Partnerschaftsgesellschaft von
Rechtsanwälten Advocaten und Avocats À La Cour MBB, Steinstr. 20,
40212 Düsseldorf, Germany (professional representative).
On 16/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 764 531 is upheld for all the contested goods, namely
Class 32: Non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; non-
alcoholic beverages; non-alcoholic honey-based beverages; aloe vera drinks,
non-alcoholic; sherbet powder for beverages; compressed sherbet powder for
beverages; non-alcoholic cocktails; energy drinks; peanut milk (non-alcoholic
beverage); essences for making non-alcoholic beverages; concentrates for
making fruit juices; non-alcoholic fruit nectars; juices; vegetable juices
(beverages); isotonic non-alcoholic drinks; lemonades; syrups for lemonade;
almond milk (syrup); whey beverages; mineral and aerated waters;
preparations for making beverages; powders used in the preparation of
beverages; powders used in the preparation of cocoa-based beverages (as far
as not included in class 30); powder for the preparation of beverages, made of
dried fruits, dried vegetables, dried seeds, dried mushrooms, dried seaweeds
or other dried vegetable substances; syrups and other preparations for making
beverages; smoothies; sorbets (beverages); beverages made of fruits,
vegetables, seeds, mushrooms, seaweeds or other vegetable substances.
2. International registration No 1 276 532 is refused protection in respect of the
European Union for all of the contested goods. It may proceed for the
remaining goods.
3. The holder bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 764 531 page: 2 of 8
REASONS
The opponent filed an opposition against some of the goods of international
registration designating the European Union No 1 276 532 ‘GREENIC’, namely
against all the goods in Class 32. The opposition is based on Spanish trade mark
registration No 3 005 557 . The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
As regards the entitlement of the opponent to file the opposition, according to Article
2(2)(h)(i) EUTMDR, the notice of opposition shall contain the identification of the
opposing party in accordance with Article 2(1)(b) EUTMIR.
In the present case, the notice of opposition contained a valid indication of the
opponent: Greenme SA.
Although the registration certificate of the earlier Spanish trade mark No 3 005 557
submitted by the opponent contained an indication of Giontas Holdings Limited as
the owner of the trade mark, according to the Guidelines For Examination Of
European Union Trade Marks, Part C, Opposition, Section 1, Procedural Matters, in
case of transfers of trade marks, an opposition based on a national registration or
application may be entered by the ‘old’ owner or by the successor in title, as there are
different practices in the different Member States regarding the need to register the
transfer in the national trade mark register in order to be able to claim rights arising
from the registration.
In such cases, if the opposition is filed with the new owner as opponent and a copy of
the registration certificate shows the ‘old’ owner as owner of the earlier mark, the
opposition is accepted as admissible on the assumption that the earlier mark was
transferred to the new owner before the opposition was filed. The entitlement to file
the opposition (e. g. evidence of the transfer or of the granting of a licence before the
opposition was filed) has to be proved within the time limit for substantiation.
On 10/02/2017, within the time limit for substantiation, the opponent submitted duly
translated certificate of the transfer of the earlier Spanish trade mark No 3 005 557
issued by the Spanish Patent and Trade Mark Office. According to the certificate,
Greenme SA, i.e. the opponent, is the owner of the earlier Spanish trade mark
registration No 3 005 557 on which the opposition is based.
Therefore, it is considered that the opponent, i.e. Greenme SA, was entitled to file the
opposition as the owner of the earlier Spanish trade mark registration No 3 005 557.
PROOF OF USE
In accordance with Article 47(2) and (3) EUTMR, if the applicant/holder so requests,
the opponent must furnish proof that, during the five-year period preceding the date
of filing or, where applicable, the date of priority of the contested trade mark, the
Decision on Opposition No B 2 764 531 page: 3 of 8
earlier trade mark has been put to genuine use in the territories in which it is
protected in connection with the goods or services for which it is registered and which
the opponent cites as justification for its opposition, or that there are proper reasons
for non-use. The earlier mark is subject to the use obligation if, at that date, it has
been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
For international registrations designating the European Union, the ‘date of filing’ or,
where applicable, the ‘date of priority’ of the contested mark within the meaning of
Article 47(2) EUTMR, that is to say for the purposes of establishing the five-year
period of use obligation for the earlier mark, is considered to be the date of
registration, the date of subsequent designation of the European Union or the date of
priority of the contested international registration, as applicable. The earlier mark is
subject to the use obligation if, at that date, it has been registered for at least five
years.
The holder requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely the Spanish trade mark registration
No 3 005 557.
In the present case, the relevant date for the contested international registration (that
is, the priority date) is 18/12/2014.
Earlier Spanish trade mark No 3 005 557 was registered on 15/02/2012. Therefore,
the request for proof of use is 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.
a) The goods
The goods on which the opposition is based are the following:
Class 32: Beer; mineral and aerated waters and other non-alcoholic beverages; fruit
juice beverages; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beer).
After the limitation of the extent of the opposition by the opponent, the contested
goods are the following:
Class 32: Non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; non-
alcoholic beverages; non-alcoholic honey-based beverages; aloe vera drinks, non-
Decision on Opposition No B 2 764 531 page: 4 of 8
alcoholic; sherbet powder for beverages; compressed sherbet powder for beverages;
non-alcoholic cocktails; energy drinks; peanut milk (non-alcoholic beverage);
essences for making non-alcoholic beverages; concentrates for making fruit juices;
non-alcoholic fruit nectars; juices; vegetable juices (beverages); isotonic non-
alcoholic drinks; lemonades; syrups for lemonade; almond milk (syrup); whey
beverages; mineral and aerated waters; preparations for making beverages;
powders used in the preparation of beverages; powders used in the preparation of
cocoa-based beverages (as far as not included in class 30); powder for the
preparation of beverages, made of dried fruits, dried vegetables, dried seeds, dried
mushrooms, dried seaweeds or other dried vegetable substances; syrups and other
preparations for making beverages; smoothies; sorbets (beverages); beverages
made of fruits, vegetables, seeds, mushrooms, seaweeds or other vegetable
substances.
Contested goods in Class 32
The (non-alcoholic) fruit juice beverages; non-alcoholic beverages; mineral and
aerated waters; preparations for making beverages; syrups and other preparations
for making beverages are identically contained in both lists of goods (including
synonyms).
The contested non-alcoholic honey-based beverages; aloe vera drinks, non-
alcoholic; non-alcoholic cocktails; energy drinks; peanut milk (non-alcoholic
beverage); non-alcoholic fruit nectars; juices; vegetable juices (beverages); isotonic
non-alcoholic drinks; lemonades; whey beverages; smoothies; sorbets (beverages);
beverages made of fruits, vegetables, seeds, mushrooms, seaweeds or other
vegetable substances are all non-alcoholic drinks insofar as they are classified in
Class 32. As each of them is included in the broad category of the opponent’s non-
alcoholic beverages, these goods are, therefore, considered identical.
The contested non-alcoholic fruit extracts; sherbet powder for beverages;
compressed sherbet powder for beverages; essences for making non-alcoholic
beverages; concentrates for making fruit juices; syrups for lemonade; almond milk
(syrup); powders used in the preparation of beverages; powders used in the
preparation of cocoa-based beverages (as far as not included in class 30); powder
for the preparation of beverages, made of dried fruits, dried vegetables, dried seeds,
dried mushrooms, dried seaweeds or other dried vegetable substances are liquid or
powdered preparations in concentrated form for making beverages. As such, they are
included in the broad category of the opponent’s syrups and other preparations for
making beverages and are considered identical.
b) 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 is considered to vary from low to average depending
on the frequency of purchases and the price of the goods.
Decision on Opposition No B 2 764 531 page: 5 of 8
c) The signs
GREENIC
Earlier trade mark Contested sign
The relevant territory is Spain.
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 a composite figurative trade mark made up of a rectangular label
which contains the verbal element ‘GREENICE’ written in standard green and white
letters with a red dot above the letter ‘I’ set against a green background. The label
contains also a rectangular element with a red stripe and a picture of the green
butterfly and the grass. Such ornamentations, as well as colours, are not particularly
sophisticated as regards the relevant market sector and will be perceived as rather
decorative and hence of secondary importance within the overall impression of the
sign. Moreover, although, the figurative elements of the earlier sign cannot be
overlooked, it should be remembered 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 most distinctive
element of the earlier mark is thus the word ‘GREENICE’, which is meaningless in
the relevant territory. The earlier mark has no element that could be considered
clearly more dominant than other elements.
The contested mark is a word mark ‘GREENIC’. Being a word mark, it has no
element that could be considered clearly more dominant than other elements. The
mark is meaningless and has no element that could be considered more distinctive
neither.
Visually, the signs coincide in ‘GREENIC’. They differ in the last letter ‘E’ and in the
figurative elements of the earlier sign. As such, the coinciding part of the word
elements is visually much longer and occupies the initial part of the signs which is the
one that first catches the attention of the reader. This is because the public reads
from left to right and consumers generally tend to focus on the beginning of a sign
Decision on Opposition No B 2 764 531 page: 6 of 8
when they encounter a trade mark. As regards the figurative elements of the earlier
sign, it has been explained above that they are of secondary importance within the
overall impression of the sign and thus have a limited effect on the comparison of the
signs.
Therefore, the signs are considered visually similar to an average degree.
Aurally, the signs coincide in ‘GREENIC’ and differ in ‘E’ of the earlier sign. As
explained above, the coinciding element ‘GREENIC’ is much longer than the single
letter ‘E’ and will be the one that catches first the attention of the consumers.
Therefore, the signs are aurally highly similar.
Conceptually, although the figurative elements of the earlier mark are of secondary
importance, as explained above, they cannot be completely disregarded. Thus, the
earlier mark may evoke a concept of the butterfly or the grass and to this extent the
signs are conceptually not similar (since the contested sign lacks any meaning).
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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, despite the presence of the some weak elements in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
It has been established in the previous sections of the decision that the contested
goods are identical to the opponent’s goods. The signs under comparison are
considered to be visually similar to an average degree and aurally highly similar,
inasmuch as they coincide in ‘GREENIC’.
While it is true that the trade marks have certain differences between them, they are
confined to the additional (final) letter ‘E’ and figurative elements of the signs.
However, as explained above, it is the verbal component of the signs that has a
stronger impact on the consumer than the figurative components. As such, the
element ‘GREENICE’ of the earlier sign is more likely to attract the attention of the
relevant public, and the imperfect image which the public will keep in its mind will be
very closely connected to it.
Decision on Opposition No B 2 764 531 page: 7 of 8
The contested sign is contained in its entirety in the earlier mark and the Opposition
Division takes the view that the lack of letter ‘E’ in the contested mark may be easily
overlooked by the relevant public. This is particularly true as the goods in question
are addressed to the general public which pays a low to normal degree of attention
when purchasing them. Although, the average consumer of the category of products
concerned is deemed to be reasonably well-informed and reasonably observant and
circumspect, account should be taken of the fact that the average consumer only
rarely has the chance to make a direct comparison between the different marks and
must place trust in the imperfect picture of them that he or she has kept in mind. It
should also be borne in mind that the average consumer’s level of attention is likely
to vary according to the category of goods or services in question (judgment of
22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 3 005 557. It follows that the contested trade mark must
be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Steve HAUSER Anna BAKALARZ Katarzyna ZANIECKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
Decision on Opposition No B 2 764 531 page: 8 of 8
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.