OPPOSITION No B 2 666 066

Cristal Roc, Le Clos Des Sources, 61420 La Ferriere Bochard, France (opponent), represented by Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

Unione Territori Italiani SRL, Via Monte Aquilino 2, 63039 San Benedetto Del Tronto (AP), Italy (applicant), represented by Agazzani & Associati S.R.L., Via dell’Angelo Custode, 11/6, 40141 Bologna, Italy (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 666 066 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 837 033, namely against some goods in Class 32. The opposition is based on French trade mark registration No 1 514 811. The opponent invoked Article 8(1)(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: Beer, ale, porter, mineral waters, sparkling waters, fruit juices, other non-alcoholic beverages.

The contested goods are the following:

Class 32: Beer; Waters; Aerated water; Mineral water [beverages]; Non-alcoholic beverages; Syrups for making soft drinks; Fruit juice 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.

Beer; mineral water [beverages]; fruit juice beverages and non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested waters include, as a broader category, the opponent’s mineral waters. 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 aerated water and the opponent’s sparkling waters are also identical, as they overlap.

Syrups for making soft drinks are similar to a high degree to fruit juices of the earlier mark, as they have the same purpose. They can have the same producers, end users and distribution channels. Furthermore, they are in competition.

Preparations for making beverages are similar to a high degree to other non-alcoholic beverages. They have the same purpose. They can also have the same end users and distribution channels. Furthermore, they are in competition.

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.

The goods at issue target the public at large (27/06/2013, T-89/12, R, EU:T:2013:335, § 44). The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). Therefore, in relation to these goods, the degree of attention paid by the relevant public will be normal.

3. The signs

ROC
Earlier trade mark	Contested sign

The relevant territory is France.

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 ‘ROC’ is a short word mark; it means ‘rock’ in French (extracted at http://www.larousse.fr/dictionnaires/francais-anglais/roc/68904).

The contested mark is a complex mark, in black, white and grey, which consists of the words ‘LA ROCCA’, underneath which is a figurative element that resembles a coat of arms.

It must be noted that the depiction of the coat of arms has an important position within the mark applied for, as it is central and covers almost two thirds of the area of the mark. The position of the word element ‘LA ROCCA’ is also important within the mark, as it is portrayed in a large typeface and takes up about one third of the area of the mark.

The opponent argues that the verbal element of the contested sign, ‘LA ROCCA’, (which means ‘the rock’ in Italian) will be understood by the French-speaking public, as both the Italian word and the equivalent word in French are derived from Latin. The Opposition Division respectfully disagrees with this; there is no proof of this assertion. ‘LA ROCCA’ has no meaning in French.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, even small differences may frequently lead in short words to a different overall impression (06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39; 21/02/2013, T-444/10, Kmix, EU:T:2013:89, § 27; 03/12/2014, T-272/13, M&Co., EU:T:2014:1020, § 47).

According to well-established case-law, figurative or stylistic elements of a composite sign cannot summarily be dismissed as negligible for the purposes of the comparison of the signs to the extent to which they can add to the differentiation between them, or even contribute to a different overall impression, and this regardless of whether the words to which that different stylisation is applied are identical in whole or in part (12/02/2014, T-26/13, Caldea, EU:T:2014:70, § 39 and the case-law cited therein). Therefore, the presence of figurative elements in the contested mark tends to increase the dissimilarity between the signs when they are assessed visually as a whole (05/10/2005, T-423/04, B.K.R., EU:T:2005:348, § 67).

Visually, the signs coincide in the letters ‘ROC’, which constitute the earlier mark. However, they differ in their beginnings, LA versus RO (on which consumers are more likely to focus their attention), and the additional elements of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, while the earlier mark will be pronounced as [roc], that is, as one syllable, the contested sign will be pronounced as [la-ro-ca], that is, as three syllables. The pronunciation of the signs coincides in the three letters ‘ROC’, although they are pronounced in different ways. Moreover, the sequence of syllables, the rhythms and the intonations of the signs are different. The mere coincidence of the letters ‘ROC’ in the signs is not sufficient to outweigh the differences at the beginnings of the signs.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the relevant public will perceive the concept conveyed by the figurative element of the contested mark, namely the coat of arms, which is not present in the earlier mark. Together with the meaning conveyed by the earlier mark and the fact that the verbal elements of the contested mark (‘LA ROCCA’) are meaningless, there is a conceptual difference between 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.

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.

5. Global assessment, other arguments and conclusion

The inherent distinctiveness of the earlier mark is normal. An enhanced distinctiveness of the earlier mark due to its intensive use and reputation has not been claimed by the opponent.

The differences between the signs have been fully analysed above and the signs are visually and aurally similar to a low degree. Moreover, the conflicting marks are not conceptually similar.

The clearly perceptible differences between the signs will not be overlooked by the relevant consumer, even if the signs are used for identical goods. The letters ‘ROC’ of the contested mark, which coincide with the word element of the earlier sign, do not play an independent distinctive role in the mark and will not be artificially split from the letters ‘LA ROCCA’.

Moreover, with reference to the verbal elements, differences are immediately recognisable at the beginnings of the signs. In that regard, the Opposition Division recalls that the consumer generally pays greater attention to the beginning of a mark than to the end (25/03/2009, T-109/07, Spa Therapy, ECLI:EU:T:2009:81, § 90).

None of the aforementioned differences are negligible in the overall impression of the signs; on the contrary, they will determine the visual impression perceived by consumers. Therefore, despite the three letters that the signs have in common, in view of the striking differing elements, both verbal and figurative, it must be held that the contested sign conveys a different impression from that created by the earlier mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Erkki MÜNTER

Birgit FILTENBORG

Loreto URRACA LUQUE

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.