OPPOSITION No B 2 670 886

Aquadirect Blue Planet, S.L., Cesar Martinell i Brunet, 30, 08191 Rubi (Barcelona), Spain (opponent), represented by Oficina Ponti SLP, Consell de Cent, 322, 08007 Barcelona (Barcelona), Spain (professional representative)

a g a i n s t

Blue Skies Holdings Limited, Paddock View, Spring Hill Farm, Harborough Road  Pitsford, Northampton NN6 9AA, United Kingdom (holder), represented by Dolleymores, 9 Rickmansworth Road, Watford, Hertfordshire WD18 0JU, United Kingdom (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 670 886 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 858 922 for the figurative mark. The opposition is based on Spanish trade mark registration No 2 664 056 for the figurative mark. 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 waters.

The contested goods are the following:

Class 29:        Preserved, frozen, dried and cooked fruits and vegetables; prepared fruit; prepared vegetables; prepared nuts; prepared seeds; jellies, jams and compotes.

Class 30:        Coffee, tea, cocoa and artificial coffee; confectionery; edible ices; ice-cream; frozen yoghurts; sorbets; sugar, honey, treacle; spices; ice.

Class 31:        Fresh fruit; fresh vegetables; grains and oats; seeds; pulses; berries; nuts; natural plants and flowers.

Class 32:        Non-alcoholic drinks; non-alcoholic beverages; fruit juices; fruit beverages; fruit extracts; vegetable juices; vegetable 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 Classes 29, 30 and 31

The contested goods cover different processed and unprocessed foodstuff as well as seeds, plants and flowers. These goods have a different nature than the opponent’s mineral waters. They also differ in their purpose and come from different producers. Even if some of these goods may be found in the same stores as mineral waters, such as supermarkets, they are in different sections. They are neither in competition with nor complementary to each other. Therefore, these goods under comparison are dissimilar.

Contested goods in Class 32

The contested non-alcoholic drinks; non-alcoholic beverages include, as broader categories, the opponent’s mineral waters. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested fruit juices; fruit beverages; vegetable juices; vegetable beverages are similar to the opponent’s mineral waters since they have the same purpose, namely to accompany a meal or quench thirst. In addition, these goods are in competition, their end users are the same and they are sold through the same distribution channels, sold or served side-by-side in supermarkets or grocery stores or at places such as restaurants and bars. They also may coincide in producers. For these reasons, the goods are considered highly similar.

However, this is not the case for the contested fruit extracts. These goods do not share any point of contact with the opponent’s mineral waters. They are different in nature, purpose and producers and are not in competition or complementary. Therefore, these goods are dissimilar.

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 considered to be identical or highly similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 sign is a figurative mark consisting of the verbal elements ‘Blue Planet AQUASYSTEM’ and the representation of two drops of water. The words ‘Blue Planet’ are depicted in a slightly stylised typeface and are, together with the figurative element, the more eye-catching elements given their position, size and dimensions. These elements will be understood by the relevant public, ‘BLUE’ is a very basic English word (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30) and ‘Planet’ is very close to the Spanish equivalent, ‘planeta’. Consequently, the relevant public will understand these two words as ‘planeta azul’ and therefore associate these with the Earth. The distinctiveness of these verbal elements is average whereas the figurative element is weak for the relevant goods (mineral waters).

Below these elements is the verbal element ‘AQUASYSTEM’ in smaller grey letters. The relevant consumers, when perceiving a verbal sign, are likely to break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The component ‘AQUA’ is a common Latin term which the European Union consumer may be assumed to know (28/01/2015, AquaPerfect, T-123/14, EU:T:2015:52, § 34) and is also very close to the equivalent word in Spanish (‘agua’). This term is non-distinctive with regard to the relevant goods. The element ‘SYSTEM’ will be understood by the relevant public, as it is close to the equivalent word in Spanish (‘sistema’). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative sign composed of the verbal elements ‘BLUE SKIES’ and a figurative element consisting of a black pelican carrying a pineapple in its beak. Below, the two words ‘BLUE SKIES’ are written in white upper case against a blue rectangular background. ‘BLUE’ will be perceived as explained above whilst ‘SKIES’ has no meaning for the relevant public. These elements are distinctive for the relevant goods.

Visually, the signs only coincide in the letters ‘BLUE’ albeit that these are represented in a different way. They differ further in all the additional elements of the marks, as described above.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BLUE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛PLANET- AQUASYSTEM’ of the earlier mark and ‘SKIES’ of the contested sign which have no counterpart in the other mark. The figurative elements of the signs are not subject to a phonetic assessment.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. While the signs coincide in the meaning of the element ‘BLUE’, the earlier mark contains further concepts in the word ‘PLANET’ and the figurative elements. Therefore, the signs are conceptually similar to a very 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 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 some less distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical or highly similar and partly dissimilar and target the public at large whose degree of attention is average.

As concluded above, the signs are visually and aurally similar only to a low degree, and conceptually to a very low degree. The only coinciding element between the marks is the word ‘BLUE’ which is placed at the beginning of the verbal part of the signs. Although consumers generally focus on the beginning of a sign when they encounter a trade mark, as argued by the applicant, this is only one of the factors to take into consideration when evaluating the existence of a likelihood of confusion. Indeed, in the present case, despite the coinciding word placed at the beginning of both signs, these include additional verbal and figurative elements which are at least as striking as the coinciding element and outweigh the latter by far.

The opponent refers to a previous decision of the Office to support its arguments (Decision of 14/05/2012, B 1 253 857, BLUE BBVA / BLUE PROFITS). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the opponent is not comparable to the present case, at least not to such an extent as to weigh significantly in favour of an identical outcome. In that case, the signs were purely word marks and were found to be more similar visually, aurally and conceptually than in the present case and all services were identical. Therefore, the previous decision mentioned by the opponent is not relevant to the present proceedings.

Even taking into account that the relevant public does not always have the possibility to compare marks side by side, and that consumers must place trust in the imperfect picture that they have kept in mind, in the present case, it is considered that the public will be able to safely distinguish between them and that there are no reasons to consider that the consumer would establish a link between the earlier mark and the contested mark and would think that the relevant goods bearing the marks are offered by the same undertaking or economically linked undertakings.

In view of the above, the Opposition Division concludes that the above analysed differences between the marks safely counteract the similarities and are sufficient to exclude likelihood of confusion. Therefore, the opposition must be rejected.

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.

The Opposition Division

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Martina GALLE

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.