OPPOSITION No B 2 708 702

Optimum Mark Sp. z o.o., ul. Dolna 3, 00-773 Warsaw, Poland (opponent), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative)

a g a i n s t

Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi, Küçükçamlıca Cumhuriyet Mah. Libadiye Cad. No: 37 İç Kapı No: 3 Üsküdar, Istanbul, Turkey (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto, 41, 20052 Monza (MI), Italy (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 702 is upheld for all the contested goods, namely:

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

2.        European Union trade mark application No 15 090 772 is rejected for all the contested goods. It may proceed for the remaining non-contested 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 15 090 772, namely against all the goods in Class 32. The opposition is based on, inter alia, Polish trade mark registration No 242 030. 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.

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 Polish trade mark registration No 242 030.

1. The goods

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

Class 32: Beverages.

The contested goods are the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; 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 contested beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices are included in the broad category of the opponent’s beverages. Therefore, they are identical.

The contested syrups and other preparations for making beverages are similar to a high degree to the opponent’s beverages as they have the same purpose. They can coincide in end user 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.

In the present case, the goods found to be identical and similar to a high degree are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

Although the word ‘Lemo’ in the earlier mark might be somewhat allusive for ‘lemonade’ as the Polish word is ‘lemoniada’, this is not a commonly used word or abbreviation to refer to ‘lemonade’. Therefore, the term ‘Lemo’ is considered to have a normal degree of distinctiveness. Moreover, it is the dominant element in the earlier mark as it overshadows the smaller words ‘O SMAKU LIMONKI’, which meaning ‘of a lime taste’ also makes it non-distinctive. The green/yellow background of the earlier mark vaguely incorporates the representation and colour of limes/lemons, it will therefore be perceived as purely decorative and non-distinctive.

The word ‘LEEMO’ in the contested sign is meaningless and therefore distinctive. The number ‘1’ in the contested sign will be perceived as laudatory as it might refer to ‘first quality’ or ‘number 1 product’. Therefore, it is non-distinctive. The true-life representation of lemons in the contested sign is also non-distinctive as it is a direct indication of the flavour of the goods and/or one of their ingredients. The contested sign has no elements that are considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in the letters ‘LE*MO’ of their first elements, the dominant and most distinctive element in the earlier mark and the most distinctive verbal element in the contested sign, despite the fact that these elements appear in lower case in the earlier mark and in upper case in the contested sign. The signs also coincide in the stylisation of these elements, namely that all letters are white outlined with green and inclined to the left. However, they differ in the fact that the verbal element of the contested sign has an additional letter ‘E’, which is however in the middle of the word where it might get less attention (also because it is repeated). They also differ in the additional verbal elements ‘O SMAKU LIMONKI’ in the earlier mark which will however not contribute to distinguish between the marks because they are non-distinctive and non-dominant. Furthermore, the signs differ in the green/yellow background of the earlier mark, the hyphen followed by the number ‘1’ and the figurative element representing lemons in the contested sign. The impact of these differing elements is also very limited because they are less distinctive, as explained above.

Therefore, the signs are visually similar to an average degree.

Aurally, the dominant and most distinctive verbal element, ‘LEMO’, of the earlier mark and the most distinctive verbal element of the contested sign, ‘LEEMO’, are pronounced in a highly similar way as the double ‘E’ will only have a very limited impact on the pronunciation. The pronunciation differs in the number ‘1’ in the contested sign, which has however a limited distinctiveness as it is laudotary. The hyphen in the contested sign will not be pronounced and as ‘O SMAKU LIMONKI’ from the earlier mark is both non-distinctive and non-dominant it is also unlikely that it will be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, although the words ‘O SMAKU LIMONKI’ in the earlier mark, the number ‘1’ and the figurative element representing lemons in the contested sign evoke certain concepts, these elements are non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Therefore, 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.

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 some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This is particularly relevant in the present case as the conflicting goods are partly identical and partly similar to a high degree.

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and the level of attention is average.

The signs are visually similar to an average degree and aurally similar to a high degree. As all concepts evoked by the marks are non-distinctive, the conceptual aspect does not influence the assessment of the similarity of the signs.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity 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).

Furthermore, 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).

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 Polish trade mark registration No 242 030. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Polish trade mark registration No 242 030 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).

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

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.