OPPOSITION DIVISION
OPPOSITION No B 2 801 077
Sappe Public Company Limited, 9/3 Bangchan Industrial Estate, Serithai Road,
Kannayao, Bangkok 10230, Thailand (opponent), represented by Rapisardi
Intellectual Property Limited, 2A Collier House, 163/169 Brompton Road, London
SW3 1PY, United Kingdom (professional representative)
a g a i n s t
Frisk energi AB, c/o Jacob Berglund Herserudsvägen 9D, 181 50 Lidingö, Sweden
(applicant), represented by Groth & Co. KB, Birger Jarlsgatan 57 B, 113 56
Stockholm, Sweden (professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 801 077 is upheld for all the contested goods.
2. European Union trade mark application No 15 834 682 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 834 682 for the word mark ‘MOGO’. The opposition is based on
European Union trade mark registration No 13 443 544 for the figurative mark
. 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 2 801 077 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 32: Non-alcoholic beverages, namely, mineral water, fruit juices, soda
water, drinking water, aloe vera mixed drink, fruit juices with Nata de
coco, energy drink and sport drinks, non-alcoholic functional drinks
containing vitamins and nutrients, not for medical purposes; beer.
The contested goods are the following:
Class 32: Energy drinks; mineral and aerated waters and other non-alcoholic
beverages; Fruit beverages and fruit juices; syrups and other
preparations for making beverages; beer.
Class 33: Alcoholic beverages (except beer); alcopops.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods to a broader category, is exclusive and restricts the scope of
protection only to the goods specifically listed.
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 32
Energy drinks; mineral waters; fruit juices; beer are identically contained in both lists
of goods (despite minor differences in wording).
The contested aerated waters are included in the broad category of the opponent’s
non-alcoholic beverages, namely, drinking water. Therefore, they are identical.
The contested other non-alcoholic beverages overlap with the opponent’s non-
alcoholic beverages, namely, mineral water, fruit juices. Therefore, they are identical.
The contested fruit beverages overlap with the opponent’s non-alcoholic beverages,
namely, fruit juices. Therefore, they are identical.
The contested syrups and other preparations for making beverages are similar to a
high degree to the opponent’s non-alcoholic beverages, namely, mineral water, fruit
juices. The goods have the same purpose. Moreover, they are in competition, have
the same distribution channels and target the same public.
Contested goods in Class 33
Decision on Opposition No B 2 801 077 page: 3 of 6
The contested alcoholic beverages (except beer); alcopops are similar to the
opponent’s beer. The goods have the same nature. They have the same distribution
channels and target the same relevant public. Moreover, they can originate from the
same undertakings.
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 to varying degrees are
directed at the public at large.
The degree of attention is considered average.
c) The signs
MOGO
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 is a figurative mark that contains the expression ‘MOGU MOGU’ in
black, slightly stylised, upper case letters. The expression ‘MOGU MOGU’ has no
meaning in the relevant territory and is therefore distinctive.
The contested sign is the word ‘MOGO’, which has no meaning in the relevant
territory and is therefore distinctive.
Visually, the signs coincide in the sequence of letters ‘MOG*’ at the beginnings of
the signs. Although they differ in their final letters, ‘U’ in the earlier mark and ‘O’ in the
contested sign, the shapes of these vowels are visually similar. The signs also differ
in the repetition of the word ‘MOGU’ in the earlier mark and the slight stylisation of
the earlier mark. However, repetition of a word does not have a great impact on the
visual impression; therefore, the importance of this difference is less.
It is important to note that consumers generally tend to focus on the beginning of a
sign when they encounter a trade mark. This is because 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. Moreover, the contested sign is almost
completely included in the beginning of the earlier mark.
Decision on Opposition No B 2 801 077 page: 4 of 6
Therefore, the signs are visually highly similar.
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
‛MOG*’, present identically at the beginnings of both signs. The pronunciation differs
in the sound of the final letters of the signs, ‘U’ in the earlier mark and ‘O’ in the
contested sign, which are both vowels. As remarked above, the repetition of the word
‘MOGU’ in the earlier mark does not have a great impact from an aural perspective
and may even be omitted because of this repetition.
Therefore, the signs are aurally similar at least to an average degree.
Conceptually, neither of the signs has a meaning for 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.
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.
e) 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, and the degree
of similarity between the marks and between the goods or services identified
(recital 8 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).
In the present case, the goods are identical and similar to varying degrees.
The marks in dispute are visually highly similar and aurally similar at least to an
average degree, as the contested sign is almost completely included in the first word
of the earlier mark; the only difference is in the final letters, ‘U’ versus ‘O’. Although
the marks differ in the repetition of the first word of the earlier mark, this additional
verbal element does not result in a striking difference given that it simply repeats the
first word. Both marks will be perceived as meaningless and do not evoke any
specific concepts.
Furthermore, the category of goods involved may increase the importance of one of
the different aspects considered when assessing the degree of similarity between
Decision on Opposition No B 2 801 077 page: 5 of 6
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 (15/01/2003, T-99/01, Mystery,
EU:T:2003:7, § 48, which reflects this line of reasoning). Moreover, when ordered
orally, names of drinks are often shortened and it cannot be ruled out that the earlier
mark will be referred to as ‘MOGU’.
In addition, the manner in which the goods are marketed increases the likelihood that
the consumer will not be able to inspect the mark on the label and that their order will
be placed exclusively by means of a spoken request. In the present case, when the
goods are ordered orally under the abovementioned circumstances, the likelihood of
confusion between the marks increases, since they differ only in their final vowels.
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 European
Union trade mark registration No 13 443 544. 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.
The Opposition Division
Marta GARCÍA
COLLADO
Jorge ZARAGOZA
GOMEZ
Vanessa PAGE
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.
Decision on Opposition No B 2 801 077 page: 6 of 6
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.