OPPOSITION No B 2 697 988
British & Irish Lions Designated Activity Company, 1st Floor Block B, Simmonscourt House, Simmonscourt Road, Dublin 4, Ireland (opponent), represented by Ancient Hume Limited, 21 Lansdowne Crescent, Edinburgh EH12 5EH, United Kingdom (professional representative)
a g a i n s t
Yeke Energy Drink S.L, Maria De Molina 39 8º, 28006 Madrid, Spain (applicant), represented by Carmen Blázquez, Estrella Polar 28 8I, 28007 Madrid, Spain (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 697 988 is upheld for all the contested goods.
2. European Union trade mark application No 15 140 189 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 140 189. The opposition is based on European Union trade mark registration No 12 336 293. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 32: Beer, stout, ales; mineral and aerated waters, fruit juices and fruit drinks, syrups; table waters and seltzer waters; vegetable juices, aperitifs non alcoholic; sports drinks; isotonic drinks; water; all relating to or for the promotion of rugby football or the proprietor´s team.
The contested goods are the following:
Class 32: Energy drinks.
The contested energy drinks overlap with the opponent’s sports drinks; all relating to or for the promotion of rugby football or the proprietor´s team to the extent that the former can include sports drinks although not relating to or for the promotion of rugby football or the opponent´s team whereas the latter, being sports drinks, are energy drinks, but are specifically all relating to or for the promotion of rugby football or the opponent´s team. Therefore, the conflicting goods are identical.
- 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
LION ENERGY DRINK
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part of the public the signs are more similar than in other parts of the relevant territory.
Both signs are word marks, containing the word ‘LION’, either in plural (the earlier mark) or in singular (the contested sign). Contrary to what the applicant argues, the concept of a lion will be understood as distinctive by the public under analysis, since it has no meaning in relation to the relevant goods. The remaining elements of the signs are either less distinctive and/or have less trade mark significance (i.e. the English definite article ‘THE’ in the earlier mark) or are descriptive and non-distinctive (i.e. ‘ENERGY DRINK’ in the contested sign).
Visually, the signs coincide in the letters ‘L-I-O-N’. They differ in the last letter ‘S’ of ‘LIONS’ in the earlier mark and in the remaining elements, ‘THE’ and ‘ENERGY DRINK’, which have little impact on the comparison of the signs for the reasons explained above. It is true that ‘THE’ is the initial element of the earlier mark. However, the less distinctive article merely introduces the distinctive word ‘LIONS’ in the sign. Moreover, the coincident letters ‘L-I-O-N’ are placed first in the contested sign. This must be taken into account, since 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 Opposition Division finds the signs visually similar to an average degree.
Aurally, taking into account that ‘ENERGY DRINK’ may not be pronounced in the contested sign (because of the descriptive nature of the words) and that ‘THE’, although pronounced first in the earlier mark, has less impact on the pronunciation of the mark (being merely an article), the audible difference created by the additional ‘S’ in ‘LIONS’ is of little significance when pronouncing the signs’ highly similar elements ‘LIONS’ and ‘LION’. Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the distinctive meaning of ‘LION’ by the public under analysis, although rendered in plural in the earlier mark and in singular in the contested sign. Moreover, the definite article ‘THE’ (the earlier mark) and the descriptive elements ‘ENERGY DRINK’ (the contested sign) will have less or no influence on the conceptual comparison of the signs. Therefore, the signs are conceptually highly similar.
- 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
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are identical and the signs are visually and aurally similar. Moreover, the signs are conceptually highly similar for the public under analysis and the earlier mark is distinctive. The degree of attention of the relevant public is average and 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 its observations, the applicant argues that the signs’ common element ‘LION(S)’ is an element that cannot be monopolised. In support of its argument the applicant refers to some trade mark registrations in, inter alia, Romania and the European Union, where ‘LION’ is included in similar expressions as in the contested sign.
The Opposition Division notes firstly (as stated above) that ‘LION’ is a distinctive element for the relevant goods, and, secondly, that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LION’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 336 293. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.