OPPOSITION DIVISION
OPPOSITION No B 2 640 087
Promieso S.A., 29, Duchscherstrooss, 6868 Wecker, Luxembourg (opponent),
represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald,
Luxembourg (professional representative)
a g a i n s t
Suntory Beverage & Food Limited, 3-1-1 Kyobashi, Chuo-Ku, Tokyo, Japan
(applicant), represented by Sheridans, Seventy Six Wardour Street, London
W1F 0UR, United Kingdom (professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 640 087 is upheld for all the contested goods.
2. European Union trade mark application No 14 861 322 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
PRELIMINARY REMARK:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 861 322 for the word mark ‘LOVI’. The opposition is based on
European Union trade mark registration No 11 987 112 for the word mark ‘LOVIE’.
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.
Decision on Opposition No B 2 640 087 page: 2 of 6
a) The goods and services
The goods and services 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.
Class 33: Alcoholic beverages (except beers); Alcoholic beverages containing fruit;
Alcoholic beverages, except beer; Alcoholic essences; Alcoholic extracts; Anise
[liqueur]; Anisette [liqueur]; Aperitifs; Arak [arrack]; Bitters; Brandy spirits; Cider;
Cocktails; Curacao; Digesters [liqueurs and spirits]; Distilled beverages; Fruit
extracts, alcoholic; Gin; Hydromel [mead]; Kirsch; Liqueurs; Nira [sugarcane-based
alcoholic beverage]; Peppermint liqueurs; Perry; Piquette; Pre-mixed alcoholic
beverages, other than beer-based; Rice alcohol; Rum; Sake; Spirits [beverages];
Vodka; Whisky; Wine.
Class 43: Services for providing food and drink.
The contested goods are the following:
Class 30: Tea; beverages made of tea; beverages with tea base; non-medicated tea
based beverages; preparations for making beverages (tea based); coffee; coffee
based beverages; coffee beverages.
Class 32: Soft drinks; fruit beverages and fruit juices; whey beverages; vegetable
juices (beverages); isotonic beverages; isotonic beverages made of tea; isotonic
beverages made of tea extracts; isotonic beverages made of antioxidants; soft drinks
made of tea extracts containing antioxidants; isotonic beverages containing natural
minerals; non-alcoholic beverages; carbonated beverages (non-alcoholic, except
beers); syrups for beverages; beverages consisting of a blend of fruit and vegetable
juices; beverages made from fruit concentrates; extracts of vegetables (beverages);
fruit concentrates for making beverages; mineral water (beverages); spring water
(beverages), other than for medical purposes; tonic water (non-medicated
beverages); soft drinks for energy supply; sports drinks (non-medicated);
concentrates for use in the preparation of soft drinks; vegetable juice concentrates;
powders for effervescing beverages; water (beverages); aerated water.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
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.
Contested goods in Class 30
The contested tea; beverages made of tea; beverages with tea base; non-medicated
tea based beverages; preparations for making beverages (tea based); coffee; coffee
based beverages; coffee beverages are similar to the opponent’s other non-alcoholic
drinks in Class 32. This is because the goods are in competition. Moreover, they
have the same distribution channels, relevant public and producers.
Decision on Opposition No B 2 640 087 page: 3 of 6
Contested goods in Class 32
Fruit beverages and fruit juices; non-alcoholic beverages; syrups for beverages;
mineral water (beverages); spring water (beverages), other than for medical
purposes; water (beverages); aerated water are identically contained in both lists of
goods (including synonyms).
The contested soft drinks; whey beverages; vegetable juices (beverages); isotonic
beverages; isotonic beverages made of tea; isotonic beverages made of tea extracts;
isotonic beverages made of antioxidants; soft drinks made of tea extracts containing
antioxidants; isotonic beverages containing natural minerals; carbonated beverages
(non-alcoholic, except beers); beverages consisting of a blend of fruit and vegetable
juices; beverages made from fruit concentrates; extracts of vegetables (beverages);
tonic water (non-medicated beverages); soft drinks for energy supply; sports drinks
(non-medicated) are included in the broad category of, or overlap with, the
opponent’s other non-alcoholic drinks. Therefore, they are identical.
The contested fruit concentrates for making beverages; concentrates for use in the
preparation of soft drinks; vegetable juice concentrates; powders for effervescing
beverages are included in the broad category of, or overlap with, the opponent’s
other preparations for making beverages. Therefore, they are identical.
b) 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 similar are directed at the
public at large. The degree of attention is considered average.
c) The signs
LOVIE LOVI
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 earlier mark consists of the word mark ‘LOVIE’. The contested mark consists of
the word ‘LOVI’.
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
Decision on Opposition No B 2 640 087 page: 4 of 6
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.
According to the opponent, the signs have the same meaning. However the
Opposition Division does not agree with this statement. The contested mark does
have a meaning from the perspective of a part of the public in the relevant territory,
for example the Bulgarian- and Romanian-speaking parts of the public. However, the
coinciding element ‘LOVI’ is not meaningful in certain territories, for example in
France, Greece Italy, Portugal or Spain. Consequently, the Opposition Division finds
it appropriate to focus the comparison of the signs on the French-, Greek-, Italian-,
Portuguese- and Spanish-speaking parts of the public.
Visually, the signs coincide in the sequence of letters ‘LOVI’, which are the first four
letters of the earlier mark and constitute the entire contested mark. However, they
differ in the letter ‘E’, present at the end of the earlier mark.
Therefore, the signs are visually similar at least to an average degree.
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
‛LOVI’, present identically in both signs. The pronunciation differs in the sound of the
letter ‛E’ of the earlier sign, which has no counterpart in the contested mark.
Therefore, the signs are aurally similar at least to an average degree.
Conceptually, neither of the signs has a meaning for the French-, Greek-, Italian-,
Portuguese- and Spanish-speaking parts of the public in the relevant territory. Since
a conceptual comparison is not possible, the conceptual aspect does not influence
the assessment of the similarity of the signs for this part of the public.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
Decision on Opposition No B 2 640 087 page: 5 of 6
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The goods are partly identical and partly similar. The degree of attention is
considered average and the distinctiveness of the earlier mark is normal.
The comparison of the signs has shown that these are visually and aurally similar to
at least an average degree. The only differentiating element is the letter ‘E’ at the end
of the earlier mark. However, the contested sign is entirely incorporated in the earlier
mark. Moreover, the coinciding letters ‘LOVI’ are in the first position in the earlier
mark and therefore will first catch consumers’ attention. Furthermore, there is nothing
to differentiate the signs conceptually from the perspective of the French-, Greek-,
Italian-, Portuguese- and Spanish-speaking parts of the public.
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).
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).
Considering all the above, there is a likelihood of confusion for the French-, Greek-,
Italian-, Portuguese- and Spanish-speaking parts 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 11 987 112. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 640 087 page: 6 of 6
The Opposition Division
Denitza STOYANOVA-
VALCHANOVA
Anna POLITIVít MAHELKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.