OPPOSITION No B 2 386 251

Privatbrunnen Tönissteiner Sprudel Dr. C. Kerstiens GmbH, Postfach 82, 56654 Brohl-Lützing, Germany (opponent), represented by Dompatent von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

EFR B.V., Princenhagelaan 9, 4813 DA Breda, the Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 386 251 is upheld for all the contested goods, namely:

Class 32:        Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices, Vegetable juices; Spring water; Drinking water; Smoothies.

2.        European Union trade mark application No 12 655 114 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 655 114, namely against all the goods in Class 32. The opposition is based on German trade mark registration No 30 042 845. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication 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 shall be rejected.

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

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

The contested application was published on 22/04/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 22/04/2009 to 21/04/2014 inclusive.

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

Class 32:        Mineral and table waters for mineral well refreshing drinks as well as fruit juice and vitamin drinks.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 26/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/07/2016 to submit evidence of use of the earlier trade mark. This time limit was extended until 01/09/2016. On 25/08/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: a picture of an undated product label, on which the four largest inscriptions are ‘Tönissteiner’, ‘Apple Mix’, ‘go fresh’ and ‘Mineralwasser-Apfelschorle’, the last of which, as translated by the opponent, means ‘mineral water-apple spritzer’. This label is shown on a plastic bottle of a drink under Item 2 and on a number of drinks in glass bottles in a crate under Item 3 as follows:

                          .

                       Item 1                                 Item 2                       Item 3

 

• Item 4: a copy of an undated advertising sheet and a screenshot from an internet site of the ‘Tönissteiner’ brand in German in relation to the product ‘Tönissteiner Apple Mix Mineralwasser – Apfelschorle’ (i.e. ‘mineral water – apple spritzer’). The evidence shows, inter alia, the opponent’s name and address and the earlier mark, as described under Items 1-3.

• Item 5: a copy of a product data sheet, in German, for the ‘Tönissteiner Apple Mix’ product featuring the sign ‘go fresh’ and showing, inter alia, that the product number is 0352.

• Item 6: copies of 24 invoices dated between 20/07/2005 and 17/03/2014, issued by the opponent and addressed to various companies with addresses in different German locations in relation to the sale of, inter alia, ‘Mineral water-Apple spritzer’ drinks, which are described as ‘TS Apple Mix PET’ in the invoices. The product number (i.e. 0352) from the invoices refers to the product as shown in Items 1-5, where ‘go fresh’ is visible on the label of the bottles, although this wording is missing from the invoices. The number of bottles of this drink sold varies from around 700 to more than 5 000 units and the sales figures total approximately EUR 300 to EUR 2 000 per invoice.

• Item 7: an affidavit dated 08/08/2016 and signed by the opponent’s managing partner (previously senior commercial manager), Klaus Körner. The affidavit states that the mark ‘go fresh’ has been used since March/April 2005 as an indicator of the opponent’s apple spritzer ‘Tönissteiner Apple Mix’ in the whole territory of Germany, and includes a table with turnover figures for the sales of this product between 2005 and 2016. The table indicates that the annual turnovers ranged from more than EUR 2.6 million (in 2006) to more than EUR 1 million (in 2015).

• Items 8-10: copies of the opponent’s submissions (invoices, evidence of use, affidavit and decision of the German Patent and Trademark Office) in opposition proceedings before the German Patent and Trademark Office based on the earlier mark and a copy of the decision terminating these proceedings, which concludes, inter alia, that the opponent had provided sufficient prima facie evidence of use of the earlier mark between 05/2006 and 04/2013 for soft drinks with mineral water.

Assessment of genuine use – factors

The evidence shows that the place of use is Germany. This can be inferred from the language of the documents and the customers’ addresses in the invoices submitted. Further, the territory was also confirmed by the affidavit. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period and therefore the opponent has provided sufficient indications as regards the time of use.

As regards the extent of use, the documents submitted (particularly the copies of invoices under Item 6) provide the Opposition Division with sufficient information concerning the commercial volume (thousands of bottles of the drink were sold) and the territorial scope of use (invoices were issued to various companies with addresses in different German locations). The duration and the frequency of use can be deduced from the invoices that were issued in various months in 2005-2015. It is therefore concluded that the evidence filed by the opponent contains sufficient indications concerning the extent of use. However, this conclusion applies to only some of the goods for which the earlier mark is registered (as explained in detail below under ‘Nature of use’ – ‘Use in relation to the registered goods’).

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The applicant argues that the earlier mark is not genuinely used, since ‘go fresh’ is not used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it is registered. According to the applicant, the product is referred to in the invoices as ‘Tönissteiner Apple Mix’ or ‘TS Apple Mix’, which would indicate that ‘go fresh’ is neither the mark nor the product name. Furthermore, it claims that the mark used on the label to guarantee the identity of the origin of the goods is clearly ‘Tönissteiner’, as it has ‘a prominent position’ and ‘go fresh’ is depicted in a much smaller font. Finally, the applicant submits that ‘go fresh’ is used in a stylised form that differs from the registered form. Such claims are ill founded and have to be set aside for the reasons given below.

Even though the sign ‘go fresh’ is not the only brand or text on the product label, as described under Item 1, the Opposition Division holds that it was used in such a way as to establish a link between the goods concerned and the opponent’s company and, therefore, it does serve as a trade mark with a function of guaranteeing the identity of the origin of the goods for which it is registered. In addition, it is normal practice in the market to have several trade marks on a single product. There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). Further, the way the sign is depicted, namely in moderately stylised red letters, does not alter the distinctive character of the earlier word mark in the form in which it was registered, since the words are clearly legible. Therefore, contrary to the applicant’s arguments, the opponent’s use of the earlier mark in moderately stylised red letters constitutes use of the earlier mark within the meaning of Article 15(1)(a) EUTMR. Finally, while it is true that the earlier sign is not featured as such in the invoices, the evidence has to be assessed in its entirety and it is clear from other items of evidence that ‘go fresh’ appears on the label of ‘Tönissteiner Apple Mix’ or ‘TS Apple Mix’ products.

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

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the 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).

In the present case, the evidence proves use for only ‘mineral water – apple spritzer’, belonging to the following category in the specification: fruit juice drinks. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the 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 of the trade mark for the following goods:

Class 32:         Fruit juice drinks.

The opponent did not submit any evidence of use in relation to the rest of the goods. Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

For the sake of completeness, with regard to Items 8-10, it should be stressed that the decisions of national courts and of national offices in cases regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office. Since the practice of examination of proof of use of the Office and that of the national institutions may differ considerably and, since the evidence submitted to the German institutions does not bring any material of additional value to the proof of use listed under other items, the deliberations and decision of the German Patent and Trademark Office cannot influence the outcomes of the present decision.

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. The goods

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

Class 32:        Fruit juice drinks.

The contested goods are the following:

Class 32:        Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices, Vegetable juices; Spring water; Drinking water; Smoothies.

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 other non-alcoholic beverages include, as a broader category, the opponent’s fruit juice drinks. 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 smoothies, fruit beverages and fruit juices cannot be clearly separated from the opponent’s fruit juice drinks. Therefore, they are identical.

The contested mineral and aerated waters; vegetable juices; spring water and drinking water are similar to the opponent’s fruit juice drinks. These goods have the same general purpose, as they are all non-alcoholic beverages that may be consumed on the same occasions to quench thirst. Therefore, they are in competition and may also have the same producer, target public and distribution channels.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

go fresh
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, ‘go fresh’. In the case of word marks, it is the word as such that is protected and not its written form.

The contested sign is a figurative mark consisting of the same elements, ‘go’ and ‘fresh’, depicted in white and green respectively, and a figurative element of an orange circle, inside which the element ‘go’ and a white curved arrow are positioned. The arrow, by virtue of its size and position, occupies a secondary role in the sign (most probably to reinforce the meaning of the word ‘go’), whereas none of the remaining elements is clearly dominant in the overall composition of the mark. The orange circle has nothing more than a decorative purpose. Furthermore, when a sign consists 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).

The German-speaking public would recognise the two common English words ‘go’ and ‘fresh’ in both signs, since ‘go’ is a basic English word and ‘fresh’ is very similar to the German ‘frisch’. The element ‘go’ would be distinctive in relation to the relevant goods, as it has no particular meaning in relation to them, but the element ‘fresh’ would be seen as descriptive of the qualities of these goods (i.e. drinks) and, therefore, would be perceived as non-distinctive. The combination of the two words would not have a particular meaning for the relevant public, other than the sum of its parts.

Visually, the signs coincide in the distinctive verbal element ‘go’ and the non-distinctive verbal element ‘fresh’. However, they differ in the stylisation of the verbal elements of the contested sign and in that it contains colours and figurative elements, as described above. Therefore, also bearing in mind the impact attributed to the figurative elements of the contested sign as explained above, the signs are visually similar to at least an above average degree.

Aurally, the signs are identical.

Conceptually, the signs are highly similar because they contain the same meaningful verbal elements and the contested sign also contains a figurative element depicting an arrow.

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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

The goods are partly identical and partly similar.

The signs are visually similar to at least an above average degree, aurally identical and conceptually highly similar. The distinctiveness of the earlier mark is normal.

In the present case, it should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments, the phonetic identity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Since the verbal components are identical, the differences between the signs, lying in the stylisation of the verbal elements and the presence of some figurative elements in the contested sign, are not sufficient to safely rule out a likelihood of confusion. It is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 042 845. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Milda CERNIAUSKAITE

Oana-Alina STURZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.