OPPOSITION DIVISION
OPPOSITION No B 2 722 711
Green Coco Europe Marketing & Vertriebsgesellschaft mbH, Prinzregentenufer
3, 90489 Nuremberg, Germany (opponent), represented by MG&P – Meinhardt,
Gieseler & Partner, Rathenauplatz 4–8, 90489 Nuremberg, Germany (professional
representative)
a g a i n s t
Grand Money Karol Urbaniak, Ul. Ks. Boguckiego 3a/31, 01-508 Warsaw, Poland
(applicant), represented by Grażyna Padée, ul. Nowowiejska 1/3 m. 9, 00-643
Warsaw, Poland (professional representative).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 722 711 is partially upheld, namely for the following
contested goods:
Class 29: Coconut butter; coconut milk powder; coconut fat; coconut oil;
coconut, desiccated.
Class 30: Coconut meal for human consumption.
Class 32: Waters; non-alcoholic beverages; juices; coconut milk used as
beverage; coconut water as beverage; powders used in the
preparation of coconut water drinks.
2. European Union trade mark application No 15 466 519 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
Initially, the opponent filed an opposition against some of the goods of European
Union trade mark application No 15 466 519 ‘Dr. Coco’, namely against all of the
goods in Classes 29, 30 and 32. However, following the restriction of the contested
trade mark application received at the Office on 28/11/2016 in multiple opposition
proceedings No B 2 773 227 by which goods in Class 25 were deleted, at the
moment of taking this decision the opposition is directed against all of the goods for
which protection is sought by the contested trade mark application. The opposition is
based on European Union trade mark registration No 9 849 861 . The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 722 711 page: 2 of 7
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
a) The goods
The goods on which the opposition is based are the following:
Class 29: Preserved, frozen, dried and cooked fruits; jellies, jams, compotes; edible
oils and fats.
Class 32: Beverages containing coconut, coconut multi-fruit juices, coconut juices,
coconut water, syrups for beverages.
The contested goods are the following:
Class 29: Coconut butter; coconut milk powder; coconut fat; coconut oil; coconut,
desiccated.
Class 30: Coconut meal for human consumption; sugar.
Class 32: Waters; non-alcoholic beverages; juices; coconut milk used as beverage;
coconut water as beverage; powders used in the preparation of coconut
water drinks.
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 29
The contested coconut, desiccated is included in the broad category of the
opponent’s dried fruits. As regards the contested coconut milk powder, it is a fine,
white powder made from dried coconut milk, a liquid that comes from the grated meat
of a mature coconut. As such, it falls in the same broader categories of the
opponent’s goods. Therefore, these goods are identical.
Decision on Opposition No B 2 722 711 page: 3 of 7
The contested coconut butter; coconut fat; coconut oil are included in the broad
categories of the opponent’s edible oils and fats. Therefore, they are identical.
Contested goods in Class 30
The contested coconut meal for human consumption is a flour preparation made from
dried and ground coconut meat. It is a natural by-product of coconut milk production.
It has some relevant points in common with the opponent’s preserved, frozen, dried
and cooked fruits which category of goods includes dried and ground coconut meat.
Thus, these goods are closely related and usually come from the same producers,
and are sold in the same outlets to the same consumer circles. Therefore, they are
considered similar.
As regards the contested sugar it has nothing in common with the opponent’s goods
in Classes 29 and 32. These goods do not coincide with any of the opponent’s goods
in Class 29 and 32 in terms of the nature and purpose, the distribution channels, the
sales outlets (they may be found in distinct sections in the supermarkets), the
producers, the method of use and competitiveness, or complementarity. For this
reason, they are considered dissimilar.
Contested goods in Class 32
The contested waters include, as a broader category the opponent’s coconut water.
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 non-alcoholic beverages; juices include, as broader categories the
opponent’s beverages containing coconut, coconut multi-fruit juices. Since the
Opposition Division cannot dissect ex officio the broad categories of the contested
goods, they are considered identical to the opponent’s goods.
The contested coconut water as beverage and the opponent’s coconut water are
synonyms. Therefore, they are identical.
The contested coconut milk used as beverage is included in the broad category of
the opponent’s beverages containing coconut. Therefore, they are identical.
The contested powders used in the preparation of coconut water drinks and the
opponent’s syrups for beverages have the same purpose as both are used as a base
or additives for making beverages. Hence, their methods of use are also the same.
Furthermore, they are usually produced by the same companies, and are sold in the
same sections in the supermarkets. Moreover, they target the same consumers. They
are in competition with each other. For all these reasons, they are considered similar
to a high degree.
b) 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 in question.
In the present case, the goods found to be identical or similar to various degrees are
directed at the public at large.
Decision on Opposition No B 2 722 711 page: 4 of 7
The degree of attention is deemed to be average or below average as the goods in
question are generally cheap and purchased on a daily basis.
c) The signs
Dr. Coco
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 common element ‘COCO’ is meaningful (a coconut, coconut palm) in certain
territories, for example, in those countries where English, French, Portuguese and
Spanish are understood. However, there are languages in the European Union in
which this word is meaningless. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on, for instance, the Polish-speaking
part of the public as for this part of the public this word is of normal distinctiveness in
relation to the relevant goods.
The earlier mark is a word mark consisting of the said word ‘Coco’, and the letters
‘Dr’ that are common in the whole European Union as they stand for the word ‘doctor’
/in Polish; ‘doktor’/ (1. a person licensed to practise medicine; 2. a person who has
been awarded a higher academic degree in any field of knowledge), and the full stop
mark coupled with the letters ‘Dr’. The letter combination ‘Dr’ seen alone or together
with the ‘.’ mark is of normal distinctiveness in relation to the goods in question.
The coinciding verbal element ‘COCO’ of the contested sign is placed on the device
depicting a coconut immersed in the transparent liquid with bubbles on the left hand
side near the surface. The font of the word ‘COCO’ is bold and rather standard; the
letters ‘C’ and ‘O’ are alternatively lifted up and lowered.
As can be seen from the description above, the contested sign has no elements that
could be considered clearly more dominant than other elements.
Decision on Opposition No B 2 722 711 page: 5 of 7
Moreover, as regards the contested sign it should be emphasised 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).
Visually, the signs coincide in the distinctive word ‘COCO’. However, they differ in
the letters ‘Dr’ with the ‘.’ mark in the earlier mark, and in the figurative elements of
the contested sign, that is the coconut device surrounded by a liquid with bubbles.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛CO-CO’ of the
distinctive element ‘COCO’, present identically in both signs. The pronunciation
differs in the sound of the letters ‛Dr’ of the earlier mark, which are assumed to be
pronounced by the vast majority of the relevant public as a whole word, namely
‘Doktor’/‘Doctor’/ (even that this abbreviation is normally written without the ‘.’ mark).
Therefore, due to some existing aural differences between the signs pronounced as
wholes, ‘Doktor Coco’/’Coco’, they are considered aurally similar to an average
degree.
Conceptually, the relevant public will perceive the abbreviation ‘Dr’ in the earlier
mark as mentioned above (it will be associated with the concept of the word ‘doctor’).
Therefore, the earlier trade mark has a meaning to this extent; the contested sign has
no meaning for the relevant public. 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.
d) 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.
e) Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the
circumstances of the case. The appreciation of likelihood of confusion on the part of
the public depends on numerous elements and, in particular, on the recognition of the
earlier mark on the market, the association which can be made with the registered
Decision on Opposition No B 2 722 711 page: 6 of 7
mark, the degree of similarity between the marks and between the goods or services
identified (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18;
11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
For the purposes of the global appreciation, the average consumer of the category of
products concerned is deemed to be reasonably well informed and reasonably
observant and circumspect. However, account should be taken of the fact that the
average consumer only rarely has the chance to make a direct comparison between
the different marks, but must place his trust in the imperfect picture of them that he
has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). In
the present case due to the type of the goods in question which are daily, cheap
purchases the relevant public consists of general consumers whose level of attention
will be average or below average. The contested goods in Class 29, 30 and 32 are
found partly identical, partly similar to a various degrees and partly dissimilar to the
opponent’s goods. The earlier mark is of normal distinctiveness.
As explained above, the coincidences in the signs owned to the word ‘COCO’ are
quite obvious and they are attracting much more consumers’ attention than the
differences, which arise from the additional letters ‘Dr’ and the ‘.’ mark (in the earlier
trade mark), and the figurative elements, that is the coconut device surrounded by a
liquid with bubbles (in the contested sign). On such perception of the signs
influences, inter alia, the general principle of a greater importance of the verbal
element in the contested sign over its figurative elements. For these reasons, as set
out above, the marks are visually and aurally similar to an average degree.
Conceptually, the signs are not similar from the perspective of the analysed part of
the public.
Taking into account all the relevant aspects of the comparison, the Opposition
Division finds that there is a likelihood of confusion on the part of the Polish-speaking
part of the relevant public and, therefore, the opposition is partly well-founded on the
basis of the opponent’s European Union trade mark registration No 9 849 861. 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 sign must be rejected for the goods found
to be identical or similar to various degrees to those of the earlier trade mark.
The rest of the contested goods 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 cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 722 711 page: 7 of 7
The Opposition Division
María Clara
IBÁÑEZ FIORILLO
Birgit FILTENBORG 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.