OPPOSITION No B 2 729 732

Sumol + Compal Marcas, S.A., Rua Dr. António João Eusébio, nº. 24, 2790-179 Carnaxide, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Balvinder Singh, 21 Selwyn Avenue, Ilford IG3 8JP, United Kingdom (applicant), represented by Laytons LLP, 2 More London Riverside, London SE1 2AP, United Kingdom (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 729 732 is partially upheld, namely for the following contested goods:

Class 30:        Tea and tea-based beverages, green tea, herbal teas, fruit teas; coffee; artificial coffee; ices; cocoa, chocolate; fruit infusions.

2.        European Union trade mark application No 14 958 672 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 958 672 for the word mark ‘SUMO FRESH’. The opposition is based on the following trade mark registrations:

1. EUTM No 14 180 541 for the figurative mark ;
2. EUTM No 14 180 591 for the figurative mark;
3. Portuguese trade mark registration No 548 373 for the figurative mark .

The opponent invoked Article 8(1)(b) EUTMR in respect of its EUTM registrations and Article 8(5) EUTMR in respect of its Portuguese registration.

ADMISSIBILITY IN RELATION TO PORTUGUESE REGISTRATION No 548 373

According to Rule 15(2)(c) EUTMIR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered to be properly indicated if the earlier mark is identified and it is possible to unequivocally identify the grounds and the opposition as based on Article 8(1) EUTMR.

According to Rule 17(2) EUTMIR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 06/07/2016, the same date the opposition period expired, the opponent filed notice of opposition against the contested application. In relation to its earlier Portuguese trade mark registration No 548 373 the opponent invoked, as the only basis of its opposition, Article 8(5) EUTMR. The opponent failed to indicate Article 8(1)(b) EUTMR.

On 10/11/2016, the opponent included its Portuguese trade mark registration in the assessment of likelihood of confusion together with its European trade mark registrations for which Article 8(1)(b) EUTMR was invoked. The Opposition Division cannot take this inclusion as if Article 8(1)(b) EUTMR was also invoked in respect of the Portuguese trade mark registration because it was performed after the expiry of the opposition period.

The opposition must therefore, be rejected as inadmissible, as far as it is based on this earlier mark and Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Portuguese trade mark registration No 548 373, for which the opponent claimed repute in Portugal.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 13/07/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 18/11/2016.

On 10/11/2016, within the substantiation period, the opponent submitted its explanation of grounds and other remarks; however, the opponent did not submit any evidence concerning the reputation of the earlier Portuguese trade mark.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

The assessment of likelihood of confusion will proceed in relation to the opponent’s earlier European Union trade marks.

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 European trade mark registration No 14 180 541 for the figurative mark .

1. The goods and services

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

Class 30:        Beverages based on chocolate, cocoa, coffee, tea, artificial coffee and other cereals.

Class 32:        Beverages, namely organic fruit juices, drinking waters, flavoured waters, mineral and aerated waters and other non-alcoholic drinks; beers; energy and sports drinks; soft drink beverages, crushed-ice drinks, fruit and/or vegetable drinks and fruit and/or vegetable juices, sparkling fruit-juice and/or vegetable-juice drinks; syrups for beverages, concentrates, powders and other preparations for making beverages.

Class 33:        Spirits (beverages) (except beers); alcoholic beverages containing fruit juice.

The contested goods and services are the following:

Class 30:        Tea and tea-based beverages, green tea, herbal teas, fruit teas; wasabi; coffee; artificial coffee; ginger; ices; rice; soya sauce; noodles; cereal products; prepared foods made wholly or principally from rice, soya, noodles or cereal products; dressings; vinegar, wine vinegar and rice vinegar; spices; sauces (condiments); soy sauce; horseradish; sushi; sauces; dumplings; stuffed dumplings; ready-to-eat meals made wholly or principally of fruit or vegetables; cocoa, chocolate; fruit infusions.

Class 41:        Entertainment services; night club services; night club services [entertainment]; night clubs; nightclub services; night-club services; nights-clubs; education services; training services; cookery education services; sushi-making classes (education); consultancy, information, advisory and reservation services relating to all the aforesaid services.

Class 43:        Services for providing food and drink; preparation of food and drink; bar and restaurant services; temporary accommodation services; self-service restaurants; take away services; café and cafeteria services; catering services for the provision of food and drink; cocktail lounge services; provision of information relating to bars and restaurants; provision of information relating to the preparation of food and drink; consultancy, information, advisory and reservation services relating to all the aforesaid services.

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 30

The contested tea and tea-based beverages, green tea, herbal teas, fruit teas; coffee; artificial coffee; cocoa, chocolate; fruit infusions are identical to the opponent’s beverages based on chocolate, cocoa, coffee, tea, artificial coffee either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested ices are frozen desserts, usually made of water, fruit juice, egg white, milk and sugar. The opponent’s crushed-ice drinks are confections consisting of crushed ice with fruit-flavoured syrup poured over it. They serve to the same purposes and can have the same end users and distribution channels. Furthermore they are in competition. Therefore they are similar.

The contested wasabi; ginger; rice; soya sauce; noodles; cereal products; prepared foods made wholly or principally from rice, soya, noodles or cereal products; dressings; vinegar, wine vinegar and rice vinegar; spices; sauces (condiments); soy sauce; horseradish; sushi; sauces; dumplings; stuffed dumplings; ready-to-eat meals made wholly or principally of fruit or vegetables are dissimilar the opponent’s goods in Classes 30, 32 and 33. The applicant’s goods are foodstuffs, ready-to-eat meals and sauces and condiments. The opponent’s goods are all drinks, or preparations for making beverages. They are of different nature and have different purposes. They are not in competition or complementary to each other.

Contested services in Class 41

The contested entertainment services; night club services; night club services [entertainment]; night clubs; nightclub services; food night-club services; nights-clubs; education services; training services; cookery education services; sushi-making classes (education); consultancy, information, advisory and reservation services relating to all the aforesaid services are dissimilar to all the opponent’s goods in Classes 30, 32 and 33. Although it is true that there is a certain link between some of the services e.g. nightclubs and the goods of the opponent, they are of different nature and have different the purposes, entertain the consumers and quench their thirst. They come from different commercial origin and target different consumers. Moreover, they are not in competition nor complementary to each other.

Contested services in Class 43

The contested services for providing food and drink; preparation of food and drink; bar and restaurant services; self-service restaurants; take away services; café and cafeteria services; catering services for the provision of food and drink; cocktail lounge services are intended to serve food and drinks directly for consumption. They can have the same origin and distribution channels of the opponent’s spirits (beverages) (except beers). Furthermore they are complementary. Therefore, they are similar to a low degree.

The contested provision of information relating to the preparation of food and drink are intended to inform consumers on how to prepare food and drinks. It is common in the market for the producer of drinks to provide consumers with cocktails’ recipes based on their own drinks. Therefore, they are similar to a low degree as they are often complementary and can have the same origin and distribution channels of the opponent’s spirits (beverages) (except beers).

The contested temporary accommodation services consist of the provision of bed and board to consumers. Although drinks are served or offered for sale in establishments of this kind, it is not common in the market for the producer of beverages to provide accommodation services. They have different commercial origin, target different consumers and they are not in competition or complementary to each other. Therefore, they are dissimilar to all the opponent’s goods in Classes 30, 32 and 33.

The contested provision of information relating to bars and restaurants; consultancy, information, advisory and reservation services relating to all the aforesaid services are dissimilar to all the opponent’s goods. It is not common in the market for the producer of beverages in Class 30, 32 and 33 to provide such information services.

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 and services found to be identical or similar to a low degree are directed at the public at large. Most of them are daily consumption goods or frequently requested services which are not very expensive.

The degree of attention may vary from low to average, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

	SUMO FRESH
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.

The element ‘FRESH’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark contains the word ‘SUMOL’ which is meaningless in English and, therefore, is distinctive for the goods and services in question.

This element is presented in a characteristic black and white typeface and placed diagonally on a black and white background consisting of two fruit-like semi-circular segments separated by several lines that go in sloping directions and some blurred splash-like effects. The letter ‘S’ of the word ‘SUMOL’ reproduces the figure formed by the semi-circular segments of the background.

The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. Nevertheless, 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 is the word mark ‘SUMO FRESH’. The word ‘SUMO’, although of Japanese origin, will be understood by the English-speaking public as the sport of traditional Japanese wrestling. This word is distinctive for the goods and services in question. On the other hand, the word ‘FRESH’ is descriptive in the English-speaking part of the EU as far as it indicates that food and drink has been produced recently and has not been preserved, and therefore is non-distinctive for this part of the public for the relevant goods and services. That is to say the impact of this element will be of lesser relevance.

Visually, the signs coincide in the string of letters ‘SUMO’ identically present in both signs. However, they differ in the final letter ‘L’ of the earlier mark and the characteristic stylisation of the earlier mark’s verbal element and in its figurative elements which have no counterparts in the contested sign. The descriptive word ‘FRESH’ of the contested sign constitutes a further point of difference between the signs. Therefore, the signs are similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SUMO’, present identically in both signs. The pronunciation differs in the sound of the letter ‛L’ of the earlier mark, which has no counterpart in the contested sign and in the sound of the non-distinctive word ‘FRESH’ of the contested sign. The figurative elements in the earlier mark have no influence in its aural aspect. Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the contested sign, as explained above, the earlier mark 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 and services 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods at issue are identical and some are dissimilar. In respect of the services some of them are similar to a low degree and the remaining are dissimilar. They target the general public whose degree of attention varies from low to average.

The similarity between the signs results from the visual and aural commonalities in the distinctive verbal elements ‘SUMOL’/‘SUMO’ identically contained at the beginning of the signs.

The differences in the remaining verbal element of the contested sign (‘FRESH’) are likely to have a limited impact on the public’s perception because it lacks of any distinctive character.

In respect of the identical goods, it should be borne in mind that they are beverages and, since these are frequently ordered in noisy establishments like bars, the phonetic similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

However, in respect of the services similar to a low degree although verbal elements usually have a stronger impact on the consumer than the figurative component, in the present case, the figurative elements of the earlier sign together with the conceptual differences are of such significance as to outweigh the visual and aural commonalities of the verbal elements in accordance to the interdependence principle.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 14 180 541. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The opposition is not successful insofar as the services that are similar to a low degree are concerned.

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• EUTM No 14 180 591 for the figurative mark

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements such as colours (different shades of green in the background and the verbal element is in red) which are not present in the contested trade mark and make the visual differences even more apparent. Moreover, it covers the same scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

The Opposition Division

Julia SCHRADER

Octavio MONGE GONZALVO

Sigrid DICKMANNS

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.