OPPOSITION No B 2 746 066
Spar International B.V., Rokin 101, 1012 Km Amsterdam, the Netherlands (opponent), represented by Nlo Shieldmark B.V., New Babylon City Offices. 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, the Netherlands (professional representative)
a g a i n s t
Zhs Ip Europe Sàrl, Avenue Reverdil 14, 1260 Nyon, Switzerland (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 746 066 is upheld for all the contested goods, namely
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
2. European Union trade mark application No 15 363 955 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 15 363 955 (), namely against some of the goods in Class 32. The opposition is based on European Union trade mark registration No 3 437 373 (‘BLUE BEAR’). The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
The applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use.
According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.
Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.
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 goods
The goods on which the opposition is based are the following:
Class 32: Non-alcoholic beverages including energy drinks.
The contested goods are the following:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other 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.
The contested mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.
The contested syrups and other preparations for making beverages have the same purpose as the opponent’s non-alcoholic beverages. These goods target the same relevant public, they may have the same producers and they are often sold through the same distribution channels, namely supermarkets and grocery shops, where they are normally displayed in close proximity to each other. Moreover, they may be in competition. Therefore, they are similar to a high degree.
- 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 a high degree are directed at the public at large. The degree of attention is deemed average.
- The signs
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BLUE BEAR |
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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 earlier mark is a word mark consisting of the verbal elements ‘BLUE BEAR’. In word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is depicted in upper or lower case characters or a combination thereof.
The contested sign is a figurative mark consisting of the word ‘Blueberi’ written in capitalized black typeface with the yellow outline in a slightly stylised manner. This element is placed against the image of blueberries with a white background. The whole mark is finished with the decorative dark blue and yellow lines (in various thickness) that appear on its top and bottom side in such a way that over the bottom lines there is a dark blue and gold circled label placed with the verbal elements ‘Stoli est. 1938’ in its middle.
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, all of the abovementioned verbal elements in both marks have several concepts in different countries of the relevant territory. However, contrary to the applicant’s opinion, in certain territories they are meaningless. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on Czech-, Finnish-, Polish-, Portuguese-, Slovak- and Spanish-speaking parts of the relevant public as it serves as an example of the public which does not perceive these elements with any meaning. Therefore, they are all considered distinctive in relation to the relevant goods.
Regarding the verbal elements ‘Stoli est. 1938’ in the contested sign, the Opposition Division considers them negligible as they are hardly noticeable at a first sight due to their size and position in this complex mark. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.
The figurative element of the blueberries in the contested sign may refer to the main ingredient of the applicant’s products and therefore it is considered weak for the goods at issue.
The degree of distinctiveness of the additional figurative elements in the contested sign is also weak, since they have purely decorative character and they do not have a distinguishing value in the contested sign.
The Opposition Division also concludes, that there is no element that could be considered clearly dominant (visually eye-catching) in the contested sign.
Visually, the signs are similar to the extent that they coincide in the letters ‘BLUEBE*R*’. On the other hand, they differ in the additional weak figurative elements of the contested sign, which have only little impact on the comparison of the signs, and in the differing letters, namely ‘A’ and ‘I’, placed at the last positions in both marks.
Considering all the above, the signs are considered visually similar to an average degree.
Aurally, the pronunciation of the signs differs only in their last syllables, ‘AR’ versus ‘RI’. The remaining characters of the signs are pronounced identically and the length of the whole verbal element that will be pronounced in the marks is also the same.
Therefore, the signs are aurally similar to a high degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the figurative element in the contested sign will be associated with the blueberries. However, this element is considered weak and therefore it has only little impact on the comparison of the signs.
In any case, since only one of the signs will be associated with a 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.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the contested goods are identical or highly similar to the opponent’s goods and they target the public at large. The degree of attention in relation to the goods in question is average. The marks were found to be visually similar to an average degree, aurally similar to a high degree and conceptually not similar.
It should also be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Considering the above and the fact that the main differences between the signs lie in weak elements that have only little impact on the overall comparison of the marks, and in the differing letters ‘A’ and ‘I’ placed at the last positions in both marks, it is highly conceivable that the relevant consumer will perceive that the goods at issue marked with the signs at dispute come from the same undertaking or from economically linked undertakings. This finding is also reinforced by the fact that the beginnings of the marks are the same, the pronunciation of the signs is, apart from the last syllable, identical and the goods were found to be identical or highly similar.
Considering all the above, there is a likelihood of confusion on the part of the Czech-, Finnish-, Polish-, Portuguese-, Slovak- and Spanish-speaking parts of the public. 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 3 437 373. 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
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Steve |
Begoña |
Pedro |
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.