OPPOSITION No B 2 696 436

Rives Pitman S.A., Aurora, 4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

1528 Drinks, S.L., C/Cielo, 22, 11500 El Puerto de Santa Maria, Cádiz, Spain (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative).

On 18/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 696 436 is upheld for all the contested goods, namely:

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages.

2.        European Union trade mark application No 15 021 504 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 021 504 for the figurative mark , namely against all the goods in Classes 32 and 33. The opposition is based on European Union trade mark registration No 5 437 884, and Spanish trade mark registrations No 950 057 and No 1 980 711, all for the word mark ‘COCUA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant 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 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.

The applicant requested that the opponent submit proof of use of all of the trade marks on which the opposition is based.

The date of filing of the contested application is 20/01/2016. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, or Spain respectively, from 20/01/2011 to 19/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely:

European Union trade mark registration No 5 437 884 ‘COCUA’:

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages (except beers).

Spanish trade mark registration No 950 057 ‘COCUA’:

Class 33:        Anise; spirits and liqueurs in general.

Spanish trade mark registration No 1 980 711 ‘COCUA’:

Class 32:        Beers; mineral waters and sodas and other non-alcoholic drinks; fruit's drinks and juices; syrups and other preparations to make drinks.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/11/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 05/02/2017 to submit evidence of use of the earlier trade marks. On 03/02/2017, within the time limit, the opponent submitted evidence of use.

List of evidence

The evidence to be taken into account is the following:

• Invoices: copies of 68 invoices, dated from 04/02/2011 to 20/01/2016. The invoices were issued by the Spanish company Rives Pitman Distribuidora S.A., and addressed to several customers based in various locations in Spain (e.g. Avilés, Barcelona, Vigo, Mataró, La Coruña, Basauri, Málaga). According to the product descriptions, the goods sold included a range of ‘COCUA’ products (namely ‘Azul Cocua’, ‘Granadina Cocua’, ‘Kiwi Cocua’, ‘Lima Cocua’, ‘Maracuya Cocua’, ‘Melocoton Cocua Sin’, ‘Mora Cocua Sin’, ‘Manzana Cocua Sin’), as well as products under other brands (e.g. ‘Granadina Rives’, ‘Granadina Tropic Rives’, ‘Licor de Menta Rives’, ‘Licor Melocoton Rives’, ‘Vodka King Peter’, ‘Ron Conde Cuba Dulce’). The ‘COCUA’ branded goods were sold in sizeable quantities, indicated in boxes containing six bottles each. The quantities per transaction range from a couple of units to several hundreds of units, translating into transaction values reaching hundreds of Euro, and in some instances even several thousand Euro.

• Price lists: copies of three price lists for the ‘COCUA’ product range, dated 01/01/2012, 01/01/2014 and 01/01/2016. In the heading of each document, the ‘COCUA’ sign is displayed either as or . According to the product descriptions, the ‘COCUA’ product range includes ‘concentrated juices’ (lime, kiwi, grenadine, blue, blackcurrant, mint, or passion fruit flavour) and ‘liqueurs without alcohol’ (green apple, peach, or blackberry flavour). The price lists also feature images showing bottles with labels featuring the ‘COCUA’ sign:

• Product catalogues: excerpts from two product catalogues of the Spanish company Rives Pitman Distribuidora, S.A., dated 2012 and 2013, concerning the ‘COCUA’ range of ‘liqueurs without alcohol’ and ‘concentrated juices’, the former referring to drinks that are ready for consumption, and the latter being intended for mixing with water to make a refreshing beverage. The catalogue for 2012 contains images showing bottles with labels featuring the ‘COCUA’ sign:

   

   

The catalogue for 2013 shows various trade marks distributed by the company, which coincide with those mentioned on the invoices. Under the ‘COCUA’ brand, only ‘liqueurs without alcohol’ and ‘concentrated juices’, with various flavours, are mentioned.

 

• Certificate of sales, dated 30/01/2017, signed by Mr Manuel Gomez Casero, the Secretary of the Administrative Board of the opponent, declaring that the opponent has an exclusive agreement with the company Rives Pitman Distribuidora S.A., regarding the sale and distribution of the ‘COCUA’ branded goods. It is certified that, from 2011 to 2015, the physical volumes of sales involving different ‘COCUA’ goods exceeded 162.000 units (boxes of six bottles), generating a turnover of more than 1.300.000 Euro.

Assessment of the evidence

The evidence, particularly the invoices, show that the place of use is Spain. This can be inferred from the customer-specific information indicated on the invoices. Therefore, the evidence relates to the relevant territory.

Almost all of the evidence is dated within the relevant period. The sole exception is the invoice dated 20/01/2016, which is the day immediately following the last day of the relevant time frame (from 20/01/2011 to 19/01/2016).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period, as explained above.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence, and particularly the invoices showing frequent sales transactions involving considerable physical volumes of non-alcoholic beverages/preparations in each year of the relevant period, do provide the Opposition Division with sufficient information concerning the commercial volume, the duration, and the frequency of use of the opponent’s mark.  

The invoices show that goods bearing the sign at issue were sold to various customers based in a number of towns in Spain, which is the relevant territory for the opponent’s Spanish trade mark registrations, and constitutes a significant part of the European Union, being the relevant territory of the opponent’s European Union trade mark registration. As regards the latter, as stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

There are more than ten invoices submitted in relation to each year in the relevant period (11 invoices in relation to 2011 and 2012 each; 12 invoices in relation to 2013; 16 invoices in relation to 2014; 15 invoices in relation to 2015; three invoices in relation to 2016), thus demonstrating sufficient frequency and duration of use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks but only for certain goods, as discussed below.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence, and particularly the price lists and product catalogues show use of the ‘COCUA’ sign in a trade mark sense. It was affixed on the goods themselves as a badge of commercial origin in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing. Moreover, the use was public and outward. In view of the above, the Opposition Division considers that the evidence shows use of the ‘COCUA’ sign as a trade mark.

As regards the price lists and product catalogues submitted by the opponent, the applicant argues that the opponent has not indicated how, where, when and to whom the documents were used. The Opposition Division notes that these items of evidence have to be assessed in the context of the entirety of the proof of use submitted. When seen in conjunction with the invoices that demonstrate sales transactions involving the ‘COCUA’ branded goods, the price lists and catalogues, even in the absence of information about their circulation or target auditory, still serve for the purposes of establishing the actual manner of use of the opponent’s marks.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s marks as registered, and the actual manner of use are as follows:

COCUA	(1)
	(2) (3)
Registered form (word marks)	Examples of actual use

As regards actual manner of use shown under (1), it constitutes a stylised representation of the word mark. The stylisation only plays a minor role, being merely decorative, thus the distinctive character of the sign as registered is not affected.

Concerning the actual manner of use as shown under (2) and (3), it is noted that the depictions of the sign contain some additional elements, both verbal and figurative. Specifically, the word ‘COCUA’ is adorned with the image of a macaw. Further, the labels under (3) feature entirely descriptive indications of the flavour of the beverage/preparation, and some figurative elements of a purely decorative character, either illustrating the indications of the flavour, or reinforcing the exotic get-up created by the presence of the macaw.

Some of the additional verbal and figurative elements, such as the names of flavours, the pictures of fruits, the banal shapes, have no distinguishing capacity on their own. On the other hand, the image of the macaw is distinctive for the goods at issue. Nevertheless, the addition of this figurative element does not automatically lead to the conclusion that the opponent’s marks were not used as registered. It should be noted that the obligation of using a trade mark as registered does not require its proprietor to use the mark in isolation in the course of trade. Article 18(1) EUTMR does not preclude the possibility of the trade mark’s proprietor adding other marks such as its house mark on the product packaging. Each case must be looked at on its own merits. In this case, notwithstanding the addition of the image of the macaw in the actual manners of use, the ‘COCUA’ sign remains clearly recognisable and retains its distinctive character in an unaltered form.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of some of the earlier marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use for all the goods covered by the earlier marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and 46).

In the present case, the evidence proves use only for ‘liqueurs without alcohol’ and ‘concentrated juices’.

‘Liqueurs without alcohol’ are fruit-based beverages. They are ready for consumption as a non-alcoholic aperitif for example. They belong to the category of fruit drinks. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier marks are registered and as the abovementioned goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use for fruit drinks.

‘Concentrated juices’ are non-alcoholic concentrates for use in the preparation of fruit drinks and other soft drinks, for mixing in cocktails and other purposes. These goods can be considered to form an objective subcategory, namely concentrates for making beverages, of the broad category of syrups and other preparations for making beverages that encompass a broad range of raw and semi-finished preparations for making beverages, such as various syrups, essences, extracts, concentrates, must, powders/pastilles for effervescing beverages, malt wort, etc.

Therefore, the Opposition Division considers that the evidence shows genuine use of some of the earlier marks for the following goods:

European Union trade mark registration No 5 437 884 ‘COCUA’:

Class 32:        Fruit drinks; concentrates for making beverages.

Spanish trade mark registration No 1 980 711 ‘COCUA’:

Class 32:        Fruit's drinks; concentrates for making beverages.

The evidence furnished by the opponent does not succeed in proving genuine use for the remaining goods on which the opposition is based. The evidence exclusively relates to the abovementioned goods, whereas there is no reference whatsoever to any other goods. This is clear, for example, from the price lists and product catalogues seen in conjunction with the invoices, where in connection with the ‘COCUA’ trade mark only ‘liquors without alcohol’ and ‘concentrated juices’ are mentioned.

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 Spanish trade mark registration No 1 980 711.

1. The goods

According to the outcome of the assessment of proof of use, the goods on which the opposition is based are the following:

Class 32:                Fruit's drinks; concentrates for making beverages.

The contested goods are the following:

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 32

The contested fruit beverages refer to the same goods as the opponent’s fruit’s drinks. They are identical.

The contested syrups and other preparations for making beverages include, as a broader category, the opponent’s concentrates for making beverages. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested other non-alcoholic beverages; fruit juices include, as a broader category, or overlap with, the opponent’s fruit’s drinks. They are identical.

The contested beers are commonly consumed for quenching thirst. This coincides with the ultimate purpose of the opponent’s concentrates for making beverages, which are diluted with water in order to prepare a refreshing drink. These goods are directed at the same public and are available in the same sales outlets. Therefore, they are similar.

Along the same lines of reasoning, the contested mineral and aerated waters have the same purpose as the opponent’s concentrates for making beverages. Moreover, water is often mixed with other preparations for preparing a flavoured beverage. These goods are directed at the same public and are available in the same sales outlets. Therefore, they are similar.

Contested goods in Class 33

The contested alcoholic beverages have the same method of consumption and can be seen as being in competition with the opponent’s non-alcoholic fruit drinks in Class 32. These goods are directed at the same public and share the same distribution channels. 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 is considered to be, on the whole, average.

3. The signs

COCUA
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 relevant public will perceive the earlier mark as an arbitrary word that lacks any meaning and enjoys an average degree of distinctiveness for the goods at issue.

As regards the contested sign, it comprises a stylised representation of the word ‘COCOA’ that is incorporated in the middle section of an oblong shape with five lines running from top to bottom.

The applicant argues that the verbal element ‘COCOA’ is purely descriptive of the main ingredient or flavour of the goods at issue. Admittedly, the English word ‘cocoa’ means, inter alia, ‘a powder made from cocoa beans after they have been roasted, ground, and freed from most of their fatty oil’; ‘a hot or cold drink made from cocoa and milk or water’ (www.colllinsdictionary.com). This term might be considered as a reference to some objective characteristics of the non-alcoholic or alcoholic beverages at issue. Further, the applicant asserts that ‘cocoa’ is a standard and commonly known English word, and that in the European Union – also in Spain – there is common knowledge of the English language without, however, putting forward any evidence that this word is used and understood by Spanish consumers.

As correctly pointed out by the applicant, the word ‘cocoa’ is the English equivalent of the Spanish word ‘cacao’. Nevertheless, the differences in the spellings and pronunciations between these words are strong enough as to safely conclude that at least a substantial part of the relevant public will not perceive the element ‘COCOA’ as a variant of the Spanish word ‘cacao’ when encountering the contested sign, even the more so because this English word does not belong to the category of basic English words that a significant part of the public in Spain would be familiar with. Rather this word will lack any clear semantic content for a part of the relevant public, as will the figurative element present in the contested sign.

The assessment of the opposition proceeds in relation to this part of the public.

It follows that the verbal and figurative elements in the contested sign are endowed with an average degree of distinctiveness for the goods at issue. However, it has to be borne in mind 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).

Whilst the earlier mark is composed of a single verbal element that by definition has no dominant component, the contested sign comprises two elements. Although the verbal element is integrated in the curvilinear shapes of the oval, and notwithstanding the fact that the oval is larger than the verbal element, the word ‘COCOA’ is still readily perceptible as an eye-catching element in the sign’s middle section. Therefore, it is considered that the contested sign has no element that can be clearly considered more dominant (visually outstanding) than others.  

Visually, the signs coincide in the sequence of the letters ‘COC*A’. However, they differ in the penultimate letters in their respective verbal components, namely ‘U’ in the earlier mark and ‘O’ in the contested sign. Although the contested sign further differs in the stylisation of the verbal element, the figurative element and the colour combination (shades of brown mixed with white), it has to be borne in mind that the verbal components only differ in one letter and that this difference is placed in an inconspicuous position. Therefore, the signs are similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the letters ‛COC*A’. The pronunciations differ in the sound of the penultimate letters, namely the vowel ‘U’ in the earlier mark and the vowel ‘O’ in the contested sign. The pronunciations of the signs have the same lengths and rhythms. Therefore, the signs are highly similar.

Conceptually, in the absence of any meaningful elements in either of the signs, the conceptual comparison does not influence the assessment of similarity of the marks.

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 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

As has been concluded above, the contested goods are identical or similar, to varying degrees, to those of the earlier mark and are directed at the public at large whose degree of attention is average. The earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually similar to an average degree, whilst aurally being even highly similar, without this impression being altered by any conceptual perception.

In the light of the foregoing, the degree of similarity between the signs at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the relevant goods bearing the figurative sign ‘COCOA’ come from the same undertaking, or from an economically-linked undertaking, as those bearing the earlier word mark, ‘COCUA’.

Considering all the above, there is a likelihood of confusion on the part of the part of the public which perceives the verbal element ‘COCOA’ of the contested sign as meaningless. Given that a likelihood of confusion for only part of the relevant public of the pertinent territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

As regards the goods that have been found similar to a low degree, it is recalled that 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 similarity between the signs is sufficient to counteract the remote similarity between some of the goods, and a likelihood of confusion exists also in relation to them.  

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 980 711. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Spanish trade mark registration No 1 980 711 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 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

Birgit FILTENBORG

Solveiga BIEZA

Andrea VALISA

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.

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.