of the Fifth Board of Appeal
of 16 January 2017
In Case R 926/2016-5
FELIX SOLIS, S.L.
Autovía de Andalucía Km. 199
13300 Valdepeñas (Ciudad Real)
Applicant / Appellant
represented by José María Sánchez Wolff, Avenida Cantabria 48, 3ºa, 28042 Madrid, Spain
SUMOL + COMPAL MARCAS, S.A.
Rua Dr. António João Eusébio, nº. 24
Opponent / Respondent
represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal
APPEAL relating to Opposition Proceedings No B 2 499 716 (European Union trade mark application No 13 571 989)
THE FIFTH BOARD OF APPEAL
composed of G. Humphreys (Chairperson and Rapporteur), A. Pohlmann (Member) and A. Szanyi Felkl (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- By an application filed on 15 December 2014, FELIX SOLIS, S.L. (‘the applicant’) sought to register the word mark
for the following list of goods:
Class 33 – Alcoholic beverages (except beer).
- The application was published on 26 December 2014.
- On 26 March 2015, SUMOL + COMPAL MARCAS, S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the goods applied for.
- The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
- The opposition was based on the following earlier rights:
- Portuguese trade mark No 352 806 ‘FRIZE’, filed on 18 January 2001 and registered on 11 May 2001 for ‘mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices’ in Class 32.
- International registration No 1 047 316 ‘FRIZE’, with effects in AT, BE, BG, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HR, HU, IE, IT, LT, LU, LV, MT, NL, PL, PT, RO, SE, SI, SK, filed and registered on 7 June 2010 for ‘mineral water, sparkling or aerated water; tonic waters’ in Class 32.
- By decision of 24 March 2016 (‘the contested decision’), the Opposition Division upheld the opposition in its entirety, refusing the contested mark in respect of all the goods applied for because it was found to be confusingly similar with earlier Portuguese trade mark No 352 806 ‘FRIZE’. It gave, in particular, the following grounds for its decision:
- The goods in conflict are often sold side by side, both in shops and in bars, and they often appear on the same drinks menus. Therefore, these goods target the same public and may be in competition. They also have the same methods of use. Consequently, these goods are similar to a low degree;
- The relevant territory is that of Portugal. The goods are directed at the public at large paying an average degree of attention;
- The signs are visually similar to an average degree as they share their respective beginnings;
- The signs are aurally almost identical for a significant part of the Portuguese-speaking public. For the remaining part of that public the signs are aurally similar to an average degree;
- Since both signs are meaningless, no relevant conceptual comparison can be carried out;
- The opponent did not explicitly claim that the earlier mark considered is particularly distinctive by virtue of intensive use or reputation. As a result, given that the mark in question is meaningless, it is considered that it possesses a normal degree of inherent distinctive character;
- The numerous and strong similarities between the signs are sufficient for at least part of the public to believe that the conflicting goods come from the same undertaking or economically-linked undertakings. These similarities outweigh the low degree of similarity between the goods.
- On 19 May 2016, the applicant filed an appeal against the contested decision, requesting that the decision be set aside. The statement of grounds of the appeal was received on 14 July 2016.
- On 15 September 2016, the opponent filed observations in reply.
Submissions and arguments of the parties
- The arguments raised in the statement of grounds may be summarised as follows:
- The Opposition Division erred in finding that the goods in conflict were similar, even to a low degree. Indeed, they are distributed through separate sale channels and are always placed in different areas in stores, supermarkets and grocery shops;
- The signs are dissimilar and, in addition, there is coexistence with other signs which reproduce the same, or almost the same, letters (FRÏS, FRIZZ, FRIZZIE, FRISS, etc.);
- As regards the comparison of the signs, it is submitted that the presence of the letters ‘SS’ followed by the letter ‘É’ is very noticeable and has a significant impact on the signs;
- Contrary to the conclusion in the contested decision, the signs are aurally dissimilar because the accents are placed on different syllables. Furthermore, the letters ‘S’ and ‘Z’ are pronounced differently in Portuguese. In particular, the sound given by the pronunciation of the letter ‘S’ is a voiceless dental/alveolar fricative, whereas the sound given by the pronunciation of the letter ‘Z’ is a voiced dental/alveolar fricative;
- Since the goods are dissimilar and the signs can be distinguished due to their dissimilarities, the Opposition Division should have excluded that there was a likelihood of confusion pursuant to Article 8(1)(b) EUTMR.
- The arguments raised in reply to the appeal may be summarised as follows:
- The goods in conflict are similar and this is according to the Office’s previous decisions;
- The word elements of the signs are practically the same. In that regard, account must be taken of the fact that four out of the five letters of the earlier mark are contained in the same order in the contested one;
- The signs are pronounced in almost the same way. Furthermore, the signs display graphic similarities;
- Therefore, given that the consumer will not see the marks simultaneously and will have an imperfect recollection of them, the similarity between the goods and the virtual identity between the signs will lead to a likelihood of confusion, as correctly stated by the Opposition Division in the contested decision.
- The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
- However, the appeal is not well founded. The Board’s reasons are outlined hereunder.
- Although the opposition has been based on more than one earlier right, the Board, for the sake of consistency, will first examine the opposition based on earlier Portuguese trade mark No 352 806 ‘FRIZE’.
- Only if necessary, will the Board also examine the opposition based on the other earlier right invoked by the opponent.
Article 8(1)(b) EUTMR
- In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
- According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30-33 and the case-law cited therein).
- The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited therein).
- The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark considered and those under appeal (see, by analogy, 01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23).
- The Board recalls that the perception of the consumer of the goods and services concerned plays a decisive role in assessing the likelihood of confusion. In that regard, the average consumer’s attention is likely to vary according to the category of goods and services (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
- In the present case, the Board endorses the Opposition Division’s finding that the relevant public is made up of the public at large, whose consumers will pay a normal level of attention in relation to the goods. This finding has not been disputed by the parties and must be confirmed.
- Consequently, the relevant public consists of average, reasonably well-informed and reasonably observant and circumspect consumers in respect of the competing goods.
- Moreover, since the earlier mark considered is a Portuguese registration, the relevant public consists of Portuguese consumers.
Comparison of the goods
- According to settled case-law, in order to assess the similarity of the goods or services at issue, all the relevant factors of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37 and the case-law cited).
- Goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 57 and the case-law cited).
- The goods applied for are the following:
Class 33 – Alcoholic beverages (except beer).
- The goods covered by the earlier mark considered are the following:
Class 32 – Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.
- The applicant argues that the Opposition Division erred in finding a similarity between the goods in conflict. However, the Board cannot share the applicant’s argument since, in view of the abovementioned criteria and of the relevant case-law of the Court, the goods in question must considered as displaying a degree, albeit low, of similarity.
- Indeed, drinks with a low-alcohol content in Class 33, that are included in the specification ‘alcoholic beverages’ are intended, just as Class 32 products, to quench thirst. Thus, they are in competition with each other and there indeed exist non-alcoholic variants of alcoholic beverages (e.g. alcohol-free wine). This is also because both sets of goods may be consumed with food. In effect, account must be taken of the fact that these goods can be consumed on the same occasions and in the same establishments. They are also complementary in the sense that water and other non-alcoholic drinks are commonly mixed with spirits, wine and liquors, and in cocktails.
- Furthermore, the method of use and distribution channels of the goods at stake may coincide, although they are not offered in the same area in stores and supermarkets.
- Even though the Court recognized that the two types of drinks present different characteristics (alcoholic beverages being consumed in special and convivial circumstances as opposed to water and non-alcoholic beverages that are consumed daily and are necessary for life), these differences simply served to justify the finding that the degree of similarity was low (05/10/2011, T421/10, Rosalia de Castro, EU:T:2011:565, § 32).
- To conclude, since non-alcoholic beverages are often sold and consumed with alcoholic beverages and pass through the same distribution channels (05/10/2011, T421/10, Rosalia de Castro, EU:T:2011:565, §§ 31 to 33; 09/03/2005, T33/03, Hai, EU:T:2005:89, §§ 43 and 44), the Opposition Division did not err in finding a low degree of similarity.
Comparison of the signs
- The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
- Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (02/12/2009, T-434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T-149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T-466/08, Acno focus, EU:T:2011:182, § 52).
- In the present case, the signs to be compared are as follows:
Earlier mark considered
- Visually, the Board considers that the relevant public will perceive an immediately noticeable overlap between the first three letters ‘F-R-I’ composing the signs under comparison. Further, the signs also share the final letter ‘E’ – although the acute accent on the contested sign does represent a small difference.
- On the other hand, the signs visually differ in their middle parts since the contested mark includes the repetition of the ‘S’ letter, whilst the earlier mark comprises the letter ‘Z’.
- Despite these dissimilarities, the Board considers that, overall, the marks convey a visual impression of a certain degree of similarity as the differences are not enough to neutralise the similarities.
- Aurally, both signs will be pronounced in two syllables. In that regard, the Board observes that the respective pronunciations of the signs are very similar if not almost identical as correctly argued in the contested decision. In particular, in Portuguese, the letters ‘S-S’ and the letter ‘Z’, when pronounced, will produce an almost identical sound.
- This circumstance, in addition to the identical sound given by the pronunciation of the initial parts of the signs ‘F-R-I’, which, according to the above, are identical, will create an almost identical sound.
- The presence of the final accented letter ‘É’ in the contested sign creates a phonetic difference with respect to the sound given by the pronunciation of the letter ‘E’. However, the said difference does not offset the presence of the identity and similarity between the signs.
- Conceptually, the Board finds that, according to the contested decision, the signs are meaningless for the Portuguese public. Therefore, no relevant conceptual comparison can be carried out and this has not been disputed.
- Given the above considerations, the Board takes the view that the signs at issue are visually similar to a certain degree and almost identical aurally.
Overall assessment of the likelihood of confusion
- The assessment of a 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 mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
- A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account, and in particular, the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).
- In the present case, the opponent has not claimed that the earlier mark considered is particularly distinctive because of its intensive use in the relevant territory. Therefore, its distinctive character must be seen as normal.
- The contested goods are similar to the opponent’s goods to a below average degree. The conflicting signs are visually similar to a certain degree and almost identical aurally. Furthermore, due to the nature of goods concerned, the attentiveness of the public will not be particularly high.
- Having regard to these circumstances, and in particular to the fact that alcoholic and non-alcoholic drinks are often purchased orally in bars and cafés by consumers who are only averagely attentive and who are subject to imperfect recollection, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR cannot be excluded even for goods which are similar to a below average degree.
- Consequently, the opposition is successful on the basis of the earlier mark considered and there is no need to examine the opposition based on the other earlier right invoked by the opponent.
- It follows that the applicant’s appeal has to be dismissed.
- Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must bear the fees and costs pursuant to Article 85(6) EUTMR.
- The Board fixes the amount of costs to be paid by the applicant to the opponent at EUR 550 for the representation in the appeal proceedings and at EUR 300 for the representation in the opposition proceedings. The opposition fee is EUR 350. The total amount is EUR 1 200.
On those grounds,
- Dismisses the appeal;
- Orders that the applicant bear the costs of the opposition and appeal proceedings;
- Fixes the amount of costs to be paid by the applicant to the opponent with respect to the opposition and appeal proceedings at EUR 1 200.
A. Szanyi Felkl
16/01/2017, R 926/2016-5, Frissé / FRIZE et al.