OPPOSITION No B 2 695 065

South Beach Beverage Company Inc., 700 Anderson Hill Road, Purchase New York 10577, United States of America (opponent), represented by Bomhard IP S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

UK & Partners Group Korlátolt Felelősségű Társaság, Csomád, Kossuth Lajos út 103, 2161 Hungary (applicant), represented by Szilágyi Aszmann And Partner Law Firm, Budapest, Népfürdő utca 22 A/15/3, 1138 Hungary (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 695 065 is upheld for all the contested goods.

2.        European Union trade mark application No 15 034 259 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 034 259. The opposition is based on European Union trade mark registration No 10 074 029. 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:         Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 32:         Aloe vera drinks, non-alcoholic; mineral waters [beverages]; aerated waters; aerated mineral waters; non-alcoholic beverages; non-alcoholic carbonated beverages; non-alcoholic fruit drinks; non-alcoholic beverages containing fruit juices; waters [beverages]; non-alcoholic fruit extracts; non-alcoholic fruit extracts used in the preparation of beverages.

Contested goods in Class 32

The contested aloe vera drinks, non-alcoholic; non-alcoholic beverages containing fruit juices; non-alcoholic carbonated beverages are included in the broad category of the opponent’s non-alcoholic drinks in Class 32. Therefore, they are identical.

The contested mineral waters [beverages]; aerated waters; aerated mineral waters; non-alcoholic beverages; waters [beverages]; non-alcoholic fruit drinks; are identically mentioned in both lists of goods (including synonyms). Therefore, these goods are identical.

The contested non-alcoholic fruit extracts; non-alcoholic fruit extracts used in the preparation of beverages are included in the broad category of the opponent’s syrups and other preparations for making beverages in Class 32. Therefore, they are identical.

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 are directed at the public at large. The degree of attention will be average at best.

3. The signs

SOBE LIFEWATER
Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common elements ‘LIFE’ and ‘WATER’ of the marks are not meaningful in certain territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the EU public speaking Baltic, Slavic or Finno-Ugric languages, such as in Poland, Slovakia, Latvia, Hungary or Estonia, and who, at the same time, do not speak English as a foreign language.

The earlier mark is a word mark consisting of the words ‘SOBE’ and ‘LIFEWATER’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial.

The contested sign is a figurative sign composed of the words ‘life’, ‘water’ and ‘by forevermore’ written in a slightly fancy white bold lowercase typeface presented against a black rectangular background. Owing to their much bigger size and central position, the word elements ‘life’ and ‘water’ are considered as visually more eye-catching and so these elements are dominant.

The word ‘SOBE’ of the earlier mark and the words ‘by forevermore’ of the contested sign will not be understood either by the relevant public. Therefore, contrary to the applicant’s allegations, the earlier mark has no element that could be considered clearly more distinctive than other elements. Regarding the contested sign, the figurative element in the form of a frame, is not such an uncommon element and more of a decorative nature. The public will not pay as much attention to this weak element as to the other more distinctive elements of the mark, namely the verbal elements.

Visually, the signs coincide in the sequence of letters ‘L-I-F-E-W-A-T-E-R’, that constitutes the contested mark’s most dominant elements, with the only difference in the slightly fancy typeface in which these letters are written in the contested sign and the fact that they are written in one word in the earlier mark whereas they appear one on top of the other in the contested sign. The marks differ in the first verbal element ‘SOBE’ of the earlier mark and the additional elements of the contested sign, i.e. both the verbal elements ‘by forevermore’, which is considered as secondary for the reasons set forth above, and the figurative element in the form of a frame of the contested sign, which is a weak element, as also explained above.

Nonetheless, it should be stressed that 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). This is also applicable in the case at hand with respect to the graphic representation of the contested sign and even more since it is considered weak.

Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

Therefore, the signs are visually similar to an average degree. For the sake of completeness, it should be noted that the applicant’s arguments concerning how the products are placed on the market are irrelevant for the course of the present proceedings. It should be stressed that in the case at hand the Opposition Division looks at the marks as such and not to reality.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /L-I-F-E-W-A-T-E-R/, present identically in both signs. The pronunciation differs in the sound of the word /SOBE/ of the earlier mark and the secondary elements /by forevermore/ in the contested sign respectively. Concerning the latter, it should be pointed out that due to the size and position, most likely, these words will not be pronounced by a part of the relevant public. Thus, the marks are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public, as defined above. 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.

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 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, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods at issue have been found to be identical and the relevant public’s level of attention is average at best. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree and aurally similar to a high degree, without this impression being altered by any conceptual perception. The difference in the figurative element of the contested sign and its verbal element in the bottom has less impact for the reasons explained above.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In light of the foregoing and, in particular the identity between the goods and the striking similarities between the signs, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 10 074 029. It follows that the contested trade mark must be rejected for all the contested goods.

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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.