OPPOSITION No B 2 690 033

Hansa Mineralbrunnen GmbH, Halstenbekerweg 98, 25462 Rellingen, Germany (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

United Sugar Company, P.O. Box 23023, Jeddah 21426, Saudi Arabia (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street Walthamstow, London E17 9AP, United Kingdom (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 033 is upheld for all the contested goods, namely 

Class 32:        Beers; Mineral water; Aerated mineral waters; Non-alcoholic

beverages; Aerated water; fruit beverages and fruit juices; Syrups for making

beverages; Preparations for making beverages.

2.        European Union trade mark application No 14 778 617 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 778 617 , namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 5 135 331 ‘Hella’ and German trade mark registration No 302 013 060 242 ‘hella’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PRILIMENARY REMARK

The opponent filed initially the opposition against all goods in Classes 29, 30 and 32. The list of goods of the contested sign was limited to goods in Class 32 after a decision in parallel opposition B2 691 544. The opponent maintained the opposition which is now directed against all goods in Class 32.

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 German trade mark registration No 30 2013 060 242.

1. The goods and services

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

Class 30:        Tea; non-medicated herbal teas; tea drinks; tea-based beverages; soft drinks with tea extract; iced tea; herbal flavorings for beverages, other than essential oils.

Class 32:        Mineral waters; spring waters; table waters; aerated waters; other non-alcoholic drinks; soft drinks such as fruit and effervescent drinks [nonalcoholic]; lemonades; mineral drinks; flavored mineral waters; fruit juice staggered mineral waters; Apple juice; Fruit drinks [non-alcoholic]; Fruit juices; dietetic soft drinks not for medical purposes; Syrups and other preparations for making beverages.

Class 43:        Services for providing food and drinks.

The contested goods, after limitation, are the following:

Class 32:        Beers; Mineral water; Aerated mineral waters; Non-alcoholic beverages; Aerated water; fruit beverages and fruit juices; Syrups for making beverages; Preparations for making 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.

Contested goods in Class 32

Mineral water, aerated water, fruit beverages, fruit juices, syrups for making beverages and preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested non-alcoholic beverages, include as a broader category, the opponent’s other non-alcoholic 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 mineral water aerated mineral waters are included in the in the broad category of the opponent’s mineral waters. Therefore, they are identical.

The contested beers and the opponent’s other non-alcoholic drinks have the same purpose, producer, end user and distribution channels. Furthermore they are in competition. Therefore, they are highly similar.

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 to be average.

3. The signs

hella
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 consists of the verbal element ‘hella’. The mark has no meaning in relation to the relevant goods and is therefore distinctive.

The contested mark is a figurative mark consisting of the verbal element ‘Hala’, depicted in an easily legible light-grey font. The verbal element has no meaning and it is therefore distinctive. To the left of and underneath the verbal element is an abstract device consisting of four thick curved lines pointing in different directions, depicted in blue and grey. The figurative element is considered distinctive. The mark has no elements that can be considered more distinctive or dominant (visually eye-catching) than other.

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 their respective first letter ‘H’ and last letter ‘A’ and in their middle letter ‘L’. However, they differ in their second letter ‘e’ versus ‘a’, and in the fourth letter ‘l’ of the earlier mark and in the figurative elements of the contested sign.

Taking into account that the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the signs are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛H*L*A’, present identically in both signs. The pronunciation differs in the signs’ respective first vowel ‘e’ (earlier sign) and ‘A’ (contested sign) and in the second ‘l’ of the earlier sign, which has no counterpart in the contested mark. However, both signs have a two syllables and a similar vowel-consonant-structure. Considering the given sequence of letters, the aural difference between the vowels ‘e’ and ‘A’ is limited. The impact of the additional ‘l’, being positioned directly next to the other ‘l’ of the earlier sign, is also limited on the pronunciation of the sign.

Considering all the above, the signs are similar to average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, the earlier mark has been extensively used and has a reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The contested goods were found to be identical and highly similar to the opponent’s goods. The signs under comparison are visually and aurally similar to an average degree. The level of attention will be average when choosing the relevant goods.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, due to the coincidences between the signs, deriving from their visual and aural similarities, when consumers encounter the signs at different times, they may assume that the signs have the same origin or at least economically linked origins.  

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 302 013 060 242. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, German trade mark registration ‘hella’, 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).

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(5) 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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.