OPPOSITION No B 2 707 639

Bys Dis Ticaret Anonim Sirketi, Evren Mahallesi Atatürk Bulvari, No 35 Karacailyas-Mersin, Turkey (opponent), represented by Esquivel, Martin, Pinto & Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 – piso 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Arzum Elektrikli Ev Aletleri Sanayi Ve Ticaret Anonim Sirketi, Otakçilar Cad. No 78 Kat: 1 B Blok No :B1b, Eyüp-Istanbul, Turkey (applicant), represented by HMS. Barthelmeß Görzel, Hohenstaufenring 57 a, 50674 Köln, Germany (professional representative)

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

DECISION:

1.        Opposition No B 2 707 639 is upheld for all the contested goods, namely

Class 30: Coffee; Coffee oils; Coffee pods; Coffee in whole-bean form; Coffee bags; Coffee flavorings [flavourings]; Coffee capsules; Coffee-based beverages; Instant coffee; Decaffeinated coffee; Artificial coffee; Mixtures of coffee essences and coffee extracts; Ice beverages with a coffee base; Filters in the form of paper bags filled with coffee; Aerated beverages [with coffee, cocoa or chocolate base]; Coffee, teas and cocoa and substitutes therefor; Preparations for making beverages [coffee based]; Extracts of coffee for use as flavours in beverages.

2.        European Union trade mark application No 15 114 441 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 114 441, namely against the goods applied for in Class 30. The opposition is based on international trade mark registration No 909 242 designating, among others, Ireland, and the United Kingdom. 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.

The opposition is based on an International Registration designating more than one territory. The Opposition Division finds it appropriate to first examine the opposition in relation to the designations covering Ireland and the United Kingdom.

1. The goods

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

Class 30: Coffee, cocoa, artificial coffee, vegetal preparations for use as coffee substitutes, cocoa-based beverages, coffee-based beverages; tapioca, sago; macaroni, ravioli, vermicelli, bakery products; pastries; flour-based products, namely chips, pasta; dough products, namely pizza dough, cake dough, bread dough; biscuits, waffles, crackers, tarts, cakes, bread, pizzas, sandwiches; puddings; ready cake mixes, baking dough, honey, royal jelly for human consumption, propolis for human consumption; flour, semolina and starch for food; chewing gum not for medical purposes; ice cream, ice, edible fruit ices; salt; rice; tea; spices, namely, pepper, ginger, cinnamon powder; snacks and crisps made of cereals, namely, corn flakes, oatmeal.

The contested goods are the following:

Class 30: Coffee; Coffee oils; Coffee pods; Coffee in whole-bean form; Coffee bags; Coffee flavorings [flavourings]; Coffee capsules; Coffee-based beverages; Instant coffee; Decaffeinated coffee; Artificial coffee; Mixtures of coffee essences and coffee extracts; Ice beverages with a coffee base; Filters in the form of paper bags filled with coffee; Aerated beverages [with coffee, cocoa or chocolate base]; Coffee, teas and cocoa and substitutes therefor; Preparations for making beverages [coffee based]; Extracts of coffee for use as flavours in 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 30

Coffee, cocoa, artificial coffee, coffee based beverages and tea(s) are identically contained in both lists of goods.

The contested coffee oils; coffee pods; coffee in whole-bean form; coffee bags; coffee capsules; decaffeinated coffee; instant coffee; filters in the form of paper bags filled with coffee; preparations for making beverages [coffee based] are included in the broad category of the opponent’s coffee. Therefore, they are identical.

The contested ice beverages with a coffee base is included in the broad category of the opponent’s coffee based beverages, thus these goods are identical.

The contested aerated beverages [with coffee, cocoa or chocolate base] are included in the broad category of the opponent’s coffee based beverages and cocoa-based beverages. Therefore, they are identical.

As for the contested substitutes (‘coffee, teas and cocoa and substitutes therefor’ in the exact wording of the list of goods), coffee substitutes, as a broader category, include the opponent’s vegetal preparations for use as coffee substitutes, therefore they are identical. The contested tea substitutes are highly similar to the opponent’s tea, and the contested cocoa substitutes are highly similar to the opponent’s cocoa, as these are beverages (or basic ingredients thereof) that can be prepared hot or cold, they have the same method of use, they share the same distribution channels, target the same public and are in competition with each other.

The contested coffee flavorings [flavourings], mixtures of coffee essences and coffee extracts and extracts of coffee for use as flavours in beverages coincide in purpose and method of use with the opponent’s coffee. Therefore, they are similar to a low degree.

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 varying degrees are directed at the public at large.

The degree of attention may vary from low to average. As regards foodstuffs and beverages in general, consumers are attentive to, among others, ingredients and nutritional information, even if the goods at issue are relatively cheap goods for daily consumption. Furthermore, the price of coffee may vary from cheap to expensive, depending on its origin and quality.

3. The signs

Earlier trade mark	Contested sign

The relevant territories are Ireland and the United Kingdom.

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 applicant sets out in its observations that the term ‘OKKA’ has a low distinctive character regarding the goods at hand, due to its resemblance to the term ‘MOKKA’, which refers to (Turkish) coffee in several languages. However, as regards the English-speaking public, the Opposition Division disagrees with this statement. It is true that the English word ‘mocha’ refers to ‘a type of fine quality coffee’, and also to ‘the colour of mocha coffee; a dark brown colour’ (information extracted from the Oxford English Dictionary online on 07/08/2017 at http://www.oed.com/view/Entry/120517?rskey=iQXBVJ&result=1#eid). Nevertheless, the word ‘mocha’ differs from the word element ‘OKKA’ in many aspects, and it is unlikely that the English speaking public would link the earlier mark to the term in question.

As such, the common verbal element ‘OKKA’ present in both marks has no meaning for the relevant public and is, therefore, distinctive. The verbal element ‘ARZUM’ of the contested sign has no meaning either, and is, therefore, distinctive.

It follows that the earlier mark consists of a distinctive word element upon a red rectangular background. The latter is a commonplace and banal element considered non-distinctive.

The contested mark ‘ARZUM OKKA’ has no elements that could be considered clearly more distinctive than other elements. However, the word element ‘OKKA’ dominates in the contested sign, due to its size and bold letters. The word ‘ARZUM’ is written above it with significantly smaller, slightly stylised thin letters, similar to handwriting.

Visually, the figurative signs coincide in the distinctive word element ‘OKKA’, written with thick capital letters. However, they differ in the distinctive word element ‘ARZUM’ of the contested sign, and the non-distinctive red rectangular background and the dim grey colour of the letters.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly 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. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, §  52).

Accordingly, the fact alone that the initial part of the contested sign consists of the differing word element ‘ARZUM’, cannot overcome the similarity between the signs under comparison, as the distinctive verbal element ‘OKKA’ of the earlier mark is fully included in the contested mark, and it is also the dominant element in the contested sign, due to its size and bold letters, which catches consumers’ attention.

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

Aurally, the signs coincide in the pronunciation of the verbal element ‘OKKA’ present identically in both signs. The pronunciation differs in the verbal element ‘ARZUM’ of the contested mark, which has no counterpart in the earlier sign.

The common word element ‘OKKA’, as well as the different word element ‘ARZUM’ consists of two syllables. Although the different word element ‘ARZUM’ is the first to be heard by the relevant consumers, the second word element of the contested sign will not have any less impact on consumers. In addition, the earlier mark is fully included in the contested sign.

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

Conceptually, as neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible, thus the conceptual aspect does not influence the assessment of the similarity of the signs.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

In the present case, the majority of the goods at issue were found to be identical, while the remaining goods were found to be similar to various degrees.

The earlier mark has an average degree of distinctiveness, and the attention of the relevant public may vary from average to low.

The signs at issue are similar to an average degree both visually and aurally, while their conceptual comparison is not possible, due to the fact that their verbal elements do not have any meaning for the English-speaking public.

Considering all the above, a likelihood of confusion exists on behalf of the relevant public, even with regard to the goods found to be similar only to a low degree, as the marks were found to be similar to an average degree in more than one aspect, and the verbal element of the earlier mark is included in the contested mark constituting the dominant element of the latter, written with almost identical bold capital letters.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 909 242 designating Ireland and the United Kingdom and as such it is not necessary to examine the remaining designated territories. 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 applicant 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 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

Vanessa PAGE

Alexandra APOSTOLAKIS

Martin EBERL

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.