OPPOSITION No B 2 533 845
Hero, AG, – 5600 Lenzburg, Switzerland (opponent), represented by Raffay & Fleck, Grosse Bleichen 8, 20354 Hamburg, Germany (professional representative)
a g a i n s t
P&B (Foods) Limited, Prologis Park, Newhall Way, Bradford, West Yorkshire BD5 8LZ, United Kingdom (applicant), represented by Page Hargrave, Southgate, Whitefriars, Lewins Mead, Bristol BS1 2NT, United Kingdom (professional representative).
On 13/10/2017, the Opposition Division takes the following
1. Opposition No B 2 533 845 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 808 894, ‘HEERA’, namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 13 269 345, . The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.
- The goods
The goods on which the opposition is based are the following:
Class 32: Fruit drinks and fruit juices, lemonades and other non-alcoholic drinks; nectars; syrups and other preparations for making beverages; mineral and aerated waters and other non-alcoholic beverages.
The contested goods are the following:
Class 32: Non-alcoholic drinks; fruit drinks and fruit juices; syrups for the preparation of beverages.
Non-alcoholic drinks; fruit drinks and fruit juices; syrups for the preparation of beverages are identically contained in both lists of goods (including synonyms).
- 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.
- The signs
Earlier trade mark
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 earlier mark is a figurative mark containing the word ‘Hero’ in a white font with a rather original depiction of the letter ‘r’ (reminiscent of a letter ‘i’ with a dot angled upwards and to the right). Furthermore, the element ‘Hero’ is depicted within a blue oval. A part of the public, for example the English-speaking part, may associate the sign’s word element with a meaning, because ‘hero’ is an English word that refers to ‘a person who is admired for their courage, outstanding achievements, or noble qualities’ (information extracted from Oxford Dictionaries on 21/09/2017 at https://en.oxforddictionaries.com/definition/hero). However, for other parts of the relevant public, the word ‘Hero’ will be meaningless. This is, for example, the case for the majority of the Dutch- and the German-speaking parts of the public or the Italian-speaking part of the public. Insofar as ‘hero’ is not understood, it is a distinctive element in the earlier mark.
The contested word mark, ‘HEERA’, does not have any meaning and will be perceived as a fanciful term by the relevant public; therefore, it is distinctive.
The Opposition Division finds it appropriate to focus its examination of the opposition on the part of the public that will not perceive any concept in the signs. As mentioned above, this is, for example, the case for the majority of the Dutch- and German-speaking parts of the public and for the Italian-speaking part of the public. This is the best-case scenario for the opponent, since, for this part of the public, the signs cannot be differentiated by any concept conveyed by the earlier mark (e.g. that of a ‘hero’ or a brave person, which would be perceived by the English-speaking public).
Conceptually, as stated above, none of the signs’ verbal elements has a meaning for the public under consideration. The oval shape in the earlier mark does not convey a concept, per se, and does not have any impact on the conceptual comparison of the signs. Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.
Visually, the signs’ word elements coincide in the letters ‘HE*R*’. However, the depiction of the letter ‘r’ stands out in the earlier mark (as explained above). In addition, the signs differ in the additional letter ‘E’ of the contested sign and in their final letters (‘o’ and ‘A’). Although the blue oval in the earlier mark is rather banal and the white typeface (with the exception of the letter ‘r’) is not very original, these elements do contribute to distinguishing the signs visually. The elements ‘Hero’ and ‘HEERA’ coincide in three letters. Nevertheless, these coinciding letters are not adjacent to each other. Furthermore, as the verbal elements are rather short, they will be perceived in detail and the differences in their middle parts and in their endings will not go unnoticed. Consequently, the signs are visually similar to a low degree overall.
Aurally, depending on the language under consideration; the signs’ first letter, ‘H’, will either be pronounced in the same way or will not be pronounced at all; in any case, this does not constitute a difference between the signs. The following letters, ‘er’ in the earlier mark and ‘EER’ in the contested sign, differ only slightly in their pronunciation; the double letter ‘E’ of the contested sign will be pronounced with a longer vowel sound than that of the single letter ‘e’ of the earlier mark by some members of the public, or merely as a repetition of the single letter ‘e’ of the earlier mark. Nevertheless, the Opposition Division finds that the letters ‘er’ and ‘EER’ will be pronounced differently by at least some members of the public under consideration. Finally, the signs’ final letters, ‘o’ and ‘A’ (both vowels), will be pronounced with clearly different sounds.
Therefore, neither of the two syllables of each sign are identical, since the pronunciation of their vowels is not the same. In addition, bearing in mind that the verbal elements of the signs are relatively short, the signs are at most aurally similar to an average degree for the public under consideration.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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 part of the public for which the signs do not convey any meaning. This is the most favourable scenario in which the opponent’s case can be examined, and is, however, without prejudice to the applicant, as will be shown below.
In the present case, the relevant goods are identical. The signs are visually similar to a low degree and are at most aurally similar to an average degree. The conceptual aspect does not influence the comparison of the signs for the public under consideration, leaving the consumers to rely on their visual and aural perceptions of the signs when comparing them. Bearing this in mind, the Opposition Division finds that, although the relevant goods are identical, the differences between the signs offset their similarities to the extent that there are noteworthy visual differences in the signs’ middle and final parts (those differences are particularly perceptible in relatively short signs/word elements), as well as aural differences (none of the signs’ syllables coincide fully because the vowel sounds are different).
Therefore, there is no likelihood of confusion between earlier European Union trade mark registration No 13 269 345 and the contested sign on the part of the public for which the signs convey no meaning, even for identical goods.
For the sake of completeness, the Opposition Division points out that there is no need to proceed to a detailed comparison of the signs for the part of the public for which the earlier mark has a meaning (e.g. that of a ‘hero’), as the outcome of the present decision would still be the same. If there is no likelihood of confusion for those consumers that do not perceive any concept in either sign, a fortiori, there is no likelihood of confusion for those consumers, such as English-speaking consumers, who will associate the earlier mark with a concept. For these consumers, the signs are conceptually not similar, and they can be safely differentiated.
The opponent argues that the final letters of the sign’s word elements (‘o’ and ‘A’) denote the masculine and feminine forms of the same word in Spanish. The opponent also argues that the additional letter ‘E’ of the contested sign is silent in Spanish.
Although the letters ‘o’ and ‘a’ are commonly used to distinguish between the masculine and feminine forms of the same word in Spanish, a link is unlikely to be made between ‘Hero’ and ‘HEERA’ on this basis. They are not Spanish words and the public will, therefore, not expect Spanish grammar/spelling rules to apply to them. This is true also for other Romance languages in which the masculine and feminine forms of a word are usually identified by the letters ‘o’ and ‘a’, such as Italian. The contested sign will be perceived as a meaningless word in all languages and not as the feminine form of any particular word. In addition, and especially with regard to Spanish, a part of the Spanish-speaking public may associate the earlier mark with the Spanish word ‘héroe’ (meaning ‘hero’); the feminine form of this word is not ‘hera’ (or ‘heera’) but ‘heroina’.
Moreover, there is a difference (albeit a slight one) in the pronunciation of ‘ER’ and ‘EER’, while the difference in the pronunciation of the final letters, ‘o’ and ‘A’, is obvious. Therefore, the opponent’s arguments, as explained above, are not particularly relevant and the outcome of this decision is also valid with regard to the Spanish-speaking part of the public, regardless of whether or not it associates the earlier mark with the concept of a ‘hero’.
Therefore, the opposition must be rejected.
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.