OPPOSITION No B 2 693 318

 

Fevertree Limited, Kildare House, 3 Dorset Rise, London EC4Y 8EN, United Kingdom (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)

 

a g a i n s t

 

Chez Popol, 50 Avenue du Port, 83270 Saint-Cyr-sur-Mer, France (applicant), represented by Christelle Grenier, 90, rue Edmond Rostand, 13006 Marseille, France (professional representative).

 

On 31/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 693 318 is rejected in its entirety.

 

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

 

 

REASONS:

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 033 491, namely against some of the goods in Class 32. The opposition is based on European Union trade mark registrations No 10 803 559 and No 12 865 011. 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. Examination of the opposition in relation to earlier European Union trade mark registration No 10 803 559

 

1. The goods

 

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

 

Class 32:        Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; soft drinks, energy drinks and sports drinks; fruit drinks and juices; tonic waters; ginger beers; lemonades; soda waters; ginger ales; bitter lemon; syrups, concentrates and powders for making beverages.

 

The contested goods are the following:

 

Class 32:        Preparations for making beverages; concentrates for making fruit drinks; cordials; squashes [non-alcoholic beverages]; fruit juice for use as a beverages; mixed fruit juice; concentrated fruit juice; mineral water [beverages].

 

Mineral water [beverages] is identically contained in both lists of goods (including synonyms).

 

The contested fruit juice for use as a beverages is included in the broad category of the opponent’s fruit drinks and juices. Therefore, these goods are identical.

 

The contested cordials; squashes [non-alcoholic beverages] are included in the opponent’s broad category syrups for making beverages, since cordials and squashes are concentrated syrups used in beverage making. Therefore, these goods are identical.

 

The contested mixed fruit juice; concentrated fruit juice are included in the broad category of the opponent’s fruit juices. Therefore, they are identical.

 

The contested concentrates for making fruit drinks are included in the broad category of the opponent’s concentrates for making beverages. Therefore, they are identical.

 

The contested preparations for making beverages includes, as a broader category, the opponent’s concentrates and powders 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.

 

 

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 are directed at the public at large.

 

The degree of attention is considered average.

 

 

 

 

3. The signs

 

 

 

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).

 

For the part of the public that understands French, the verbal elements of the contested sign will be understood as meaning ‘from or by your craftsman Popol’, with ‘Popol’ being the distinctive verbal element and the element that is most likely to be perceived as the indication of the origin of the goods. Nevertheless, for the non-French-speaking part of the public, the phrase ‘De votre artisan Popol’ will be perceived as having no meaning (as not evoking any concept) and as distinctive. Therefore, the Opposition Division finds it appropriate to focus its examination of the opposition in relation to the opponent’s earlier mark for the non-French-speaking part of the public, since this leads to a higher degree of conceptual similarity to the contested sign (which is the best-case scenario for examining the opponent’s case).

 

Furthermore, the contested sign depicts a golden tree on a black background, which is distinctive for the relevant goods. The opponent argues that ‘it is the Tree Device which forms the dominant and distinctive element’. The Opposition Division agrees that the ‘tree device’ is more visually dominant in the contested sign than its verbal elements, but does not find the verbal elements of the sign to be negligible. In fact, the figurative and verbal elements are equally distinctive.

 

The earlier mark is a figurative mark depicting the silhouette of a tree with its branches and leaves pointing upwards. The concept of a tree has no relation to the relevant goods and is distinctive.

 

Visually, the earlier mark and the contested sign coincide in that they include a figurative depiction of a tree. However, there are obvious visual differences between how the trees are depicted in the marks. In the earlier mark, the tree is black and white, with its branches pointing upwards and the trunk ‘swinging’ from right to left, while in the contested sign the tree is in gold on a black background, its branches are not pointing in any particular direction and it has a straight trunk. Furthermore, the contested sign contains verbal elements, and although they are not understood by the public taken into account, they contribute to differentiating the signs even further visually. Bearing this in mind, and the fact that the figurative trees of the signs have more dissimilarities than similarities, the Opposition Division finds the signs to be visually dissimilar.

 

Aurally, purely figurative signs are not subject to an aural assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

 

Conceptually, the earlier mark will be perceived as being highly similar to the contested sign (for the part of the relevant public taken into account), since both signs include the concept of a tree and the contested sign is also composed of verbal elements. Although these verbal elements are not understood by the non-French-speaking part of the public, the public will still note their presence in the contested sign, which prevents the signs from being perceived as conceptually identical.

 

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.

 

According to the opponent, ‘as a result of substantial and continuous use of its Tree Device the Opponent has acquired a world-wide reputation in its Tree Device subject of EU TM Registration No 10803559’ in connection with ‘drinks and particularly non-alcoholic drinks’. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The opponent submitted the following evidence:

 

• Printouts from websites: Annex 1 contains screenshots from the opponent’s website www.fever-tree.com, while Annex 2 contains a printout showing the first page of results of a search for ‘fever tree’ on the internet.

 

The Opposition Division finds that the printouts from the opponent’s website alone do not demonstrate that the earlier mark enjoys a high degree of distinctiveness because they do not contain any reference to market knowledge or actual trade mark awareness. Similarly, Annex 2, showing the results of a Google search, does not contain any references to the recognition of the opponent’s mark. Furthermore, the evidence is undated and originates from the opponent itself and is not corroborated or supported by other reliable sources and additional evidence from independent parties. Therefore, there is no other tangible information that could be used to assess the actual degree of knowledge of the earlier mark among the relevant public. The materials submitted by the opponent do not provide any information about the market share held by the mark or how intensive, geographically widespread and long-standing the use of the mark has been. They are, therefore, not sufficient to clearly establish all the facts required to safely conclude that the mark is known by a significant part of the public and that it has acquired a high degree of distinctiveness through its use.

 

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

 

As stated above in section c) of this decision, the assessment of the similarity of the signs has been carried out based on the perception of the non-French-speaking part of the public. This is the most favourable scenario in which the opponent’s case can be examined, which is, however, without prejudice to the applicant, as will be shown below.

 

Although the signs will be perceived as highly similar conceptually and the relevant goods are identical, the signs are visually dissimilar and an aural comparison is not possible because the earlier mark is figurative. Therefore, the conceptual similarities and the fact that the goods are identical cannot counterbalance the dissimilarities between the signs.

 

The opponent refers to previous decisions of the Office to support its arguments, that is, to opposition decisions B 654 956 and B 2 376 914. In B 654 956 none of the figurative signs included any verbal elements, which the Opposition Division found to be an argument in favour of a likelihood of confusion (therefore, the signs were purely figurative). In the present case, the figurative depictions of the trees are considered to be significantly different, while the contested sign also contains verbal elements (although they will not be understood by the relevant public). Therefore, the Opposition Division does not find B 654 956 to be comparable with the present case. In B 2 376 914, the Opposition Division found that all the earlier marks enjoyed a reputation in accordance with Article 8(5) EUTMR. Therefore, this case is not comparable with the present case either. As mentioned above, the opponent did not succeed in demonstrating that the earlier mark has acquired a high degree of distinctiveness.

 

Moreover, 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).

 

In view of the foregoing, the Opposition Division considers that the differences between the signs offset their similarities and that there is no likelihood of confusion on the part of the non-French-speaking part of the public between earlier European Union trade mark registration No 10 803 559 and the contested sign.

 

For the sake of completeness, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the part of the public that understands French and understands the meaning of the verbal elements of the contested sign, as the outcome of the present decision would still be the same. Indeed, if there is no likelihood of confusion for those consumers that do not understand the verbal element ‘De votre artisan Popol’ in the contested sign, a fortiori, there is no likelihood of confusion for those consumers who understand this expression in French, since for these consumers the verbal elements of the contested sign convey an additional concept and the conceptual similarities between the signs are even smaller.

 

 

2. Examination of the opposition in relation to earlier European Union trade mark registration No 12 865 011

 

 

1. The goods

 

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

 

Class 32:        Non-alcoholic drinks.

 

The contested goods are the following:

 

Class 32:        Preparations for making beverages; concentrates for making fruit drinks; cordials; squashes [non-alcoholic beverages]; fruit juice for use as a beverages; mixed fruit juice; concentrated fruit juice; mineral water [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 fruit juice for use as a beverages; mixed fruit juice; concentrated fruit juice; mineral water [beverages] are included in the opponent’s broad category of, or overlap with the opponent’s, non-alcoholic drinks. Therefore, they are identical.

 

The contested preparations for making beverages are highly similar to the opponent’s non-alcoholic drinks, since these goods have the same purpose, can be in competition, are sold through the same distribution channels and target the same relevant public.

 

The contested concentrates for making fruit drinks; cordials; squashes [non-alcoholic beverages] are various preparations for making beverages, basically used for making fruit drinks. These goods are highly similar to the opponent’s non-alcoholic drinks, since they have the same purpose, can be in competition, are sold through the same distribution channels and target the same relevant public.

 

 

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 highly similar are directed at the public at large.

 

The degree of attention is considered average.

 

 

3. The signs

 

 

TREE
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).

 

As mentioned under section c) in part 1 of this opposition, the verbal elements of the contested sign have a meaning in French. At the same time, the earlier word mark, ‘TREE’, has a meaning in English. The Opposition Division finds it therefore appropriate to focus its examination of the opposition in relation to the opponent’s earlier mark on the English-speaking part of the public, since it leads to conceptual similarity with the contested sign (and is the best-case scenario for examining the opponent’s case in relation to its European Union trade mark No 12 865 011). This part of the public will perceive the earlier mark as evoking the distinctive concept of a tree and the contested sign as conveying the same concept, while no meaning will be perceived or understood in the verbal elements, ‘De votre artisan Popol’, of the contested sign.

 

For a more detailed description of the contested sign, the Opposition Division makes reference to its description of the sign under section c) in part 1 of this opposition.

 

Visually, the earlier mark contains a word element (‘TREE’) that is not present in and/or has no similarity to any element (verbal or figurative) in the applicant’s mark. Therefore, the signs are visually dissimilar.

 

Aurally, the earlier mark will be pronounced as the English word ‘tree’ and the contested sign as ‘De votre artisan Popol’. Therefore, the earlier mark is aurally dissimilar to the contested sign.

 

Conceptually, the earlier mark will be perceived as conveying the same concept as the only concept understood in the contested sign, namely the concept of a tree. Nevertheless, the relevant public will note the presence of the additional word elements in the contested sign, and, although not understood by the English-speaking part of the public, these word elements prevent the marks from being perceived as conceptually identical. Therefore, the signs are conceptually highly 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 earlier mark No 12 86 50 11 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

 

As stated above in section c), in part 2 of this decision, the assessment of the similarity of the signs has been carried out on the basis of the perception of the English-speaking part of the public. This is the most favourable scenario in which the opponent’s case can be examined, which is, however, without prejudice to the applicant, as will be shown below.

 

Although the signs will be perceived as highly similar conceptually and the relevant goods are partly identical and partly highly similar, the signs are visually and aurally dissimilar. Therefore, the conceptual similarities and the fact that the goods are partly identical cannot counterbalance the dissimilarities between the signs, and the outcome of the opposition cannot be different; there is no likelihood of confusion for the English-speaking part of the public between earlier European Union trade mark registration No 12 865 011 and the contested sign.

 

For the sake of completeness, the Opposition Division points out that there is no need to proceed further with the comparison of the signs for the part of the public that does not understand English and does not understand the meaning of the verbal element of the earlier mark (‘TREE’), as the outcome of the present decision would still be the same. Indeed, if there is no likelihood of confusion for those consumers that do understand ‘TREE’ in the earlier mark, a fortiori, there is no likelihood of confusion for those consumers who see no concept in the earlier mark, since, for these consumers, there is no conceptual link between the signs whatsoever. Consequently, the signs are dissimilar visually, aurally and conceptually for that part of the public and, therefore, dissimilar overall. According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are clearly dissimilar from the perspective of the non-English-speaking part of the public in the European Union, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled.

 

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

 

 

Adriana VAN ROODEN

Christian RUUD

Boyana NAYDENOVA

 

 

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.