OPPOSITION No B 2 575 481

Edeka Zentrale AG & Co. KG, New-York-Ring 6, 22297 Hamburg, Germany (opponent), represented by Tim Christiansen, New-York-Ring 6, 22297 Hamburg, Germany (professional representative)

a g a i n s t

FAL Healthy Beverages Pty Ltd, SE7.02, 247 Coward Street, Mascot NSW 2020

Australia (holder), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester  M3 2JA, United Kingdom (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 575 481 is upheld for all the contested goods.

2.        International registration No 1 258 825 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 258 825. The opposition is based on German trade mark registration No 2 016 875. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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: Non-alcoholic beverages including fruit juices and vegetable juices, particularly made with bulk substances and/or minerals.

The contested goods are the following:

Class 32: Beverages consisting of a blend of fruit and vegetable juices; bottled coconut water; coconut milk (beverages); fruit drinks and fruit juices; mineral and aerated waters and other non-alcoholic drinks; energy drinks; sports drinks (non-medicated); isotonic drinks (not for medical purposes); electrolyte replacement beverages for general and sports purposes; whey beverages; syrups and other 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.

The term ‘including’ used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Consequently, the opponent’s broad category non-alcoholic beverages (including fruit juices and vegetable juices, particularly made with bulk substances and/or minerals) includes, and thus is identical to all the following contested goods: beverages consisting of a blend of fruit and vegetable juices; bottled coconut water; coconut milk (beverages); fruit drinks and fruit juices; mineral and aerated waters and other non-alcoholic drinks; energy drinks; sports drinks (non-medicated); isotonic drinks (not for medical purposes); electrolyte replacement beverages for general and sports purposes; whey beverages.

As for the contested syrups and other preparations for making beverages, they can coincide in producer, end user and distribution channels with the opponent’s non-alcoholic beverages (including fruit juices and vegetable juices, particularly made with bulk substances and/or minerals). Furthermore they are in competition. Consequently, these goods 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

BOOSTER
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The English word ‘BOOSTER’ which the earlier sign consists of is likely to be understood by a significant part of the relevant public as something that increases a positive or desirable quality. This word, therefore, has a certain laudatory connotation in the context of drinks, fruit juices, by referring to their presumed ability to increase one’s energy levels, performance, and health. Consequently, the distinctive character of the earlier mark must be seen as lower than average.

As for the contested sign, the relevant public throughout Germany will immediately perceive the sign’s first element, ‘ISO’, as an abbreviation of isotonic, in German isotonisch. Consequently, the relevant goods being beverages, the relevant public will immediately draw a link with isotonic drinks, which are sports drinks that replace water and electrolytes and contain either fructose or glucose polymers allowing slow release of carbohydrates for replenishing reserves of energy consumed while exercising. 

Consequently, in relation to beverages and preparations for making them, this term has weak distinctive character as it directly refers to the composition and purpose of the goods at hand.

The term ‘BOOST’ in the contested sign is the English verb corresponding to the noun of the earlier sign. This word is also likely to be understood by a significant part of the relevant German public as referring to the act of increasing a positive or desirable quality. Therefore, similar considerations apply as above for the earlier sign: its distinctiveness is lower than average.

Conceptually, the signs coincide in the concept of increasing positive qualities.

Despite the laudatory connotation of the terms ‘BOOSTER’/’BOOST’ these elements still retain a distinctive character which is relatively higher when compared to the weak differing element in the contested sign, ‘ISO’, which simply refers to the goods’ nature.

Therefore, the signs are conceptually similar to a high degree.

Similar considerations apply to the visual and aural comparison, where the signs will coincide in the letters/sounds ‘BOOST’.

Visually, in spite of the stylisation of the two orange wavy lines, the contested sign’s letter ‘S’ will be perceived as a single letter given that the public is likely to recognise the concept of ‘BOOST’. The signs visually differ in the design of the contested sign, although the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consequently, the signs coincide in the five initial letters/sounds of the earlier sign, and all the letters/sounds of the second word element of the contested sign. The differing element, ‘ISO’, in the contested sign has comparatively less distinctive character than the coinciding element.  

The signs also differ in the (sounds of the) last two letters of the earlier mark, ‘ER’, although this difference generally has less of an impact, given that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question.

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).

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

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).

In the present case, the contested mark replicates the first five letters and the concept of the earlier mark. While acknowledging the low distinctive character of the coinciding element, the Opposition Division finds that this element still has a relatively greater capacity to indicate commercial origin compared to the differing, even weaker element, ‘ISO’. Consequently, the coincidence cannot be sufficiently offset by the differences placed in the even weaker element, ‘ISO’, the last two letters, ‘ER’, of the earlier sign, or the stylisation of the contested sign, which will have less impact on consumers.

Consequently, a likelihood of confusion as to the commercial origin of the identical or highly similar goods, for consumers with an average degree of attentiveness, cannot be ruled out.

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. 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 holder 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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.