OPPOSITION No B 2 658 436
Ferrarelle S.p.A., Via di Porta Pinciana, 4, 00187 Roma, Italy (opponent), represented by De Simone & Partners S.P.A., Via Vincenzo Bellini, 20, 00198 Roma, Italy (professional representative)
a g a i n s t
Usina São Francisco S.A., Fazenda São Francisco s/nº – Zona Rural, Sertãozinho – São Paulo, Brazil (applicant), represented by Raquel Cuba Martins, Rua D. Francisco Manuel de Melo 21, 1070-085 Lisboa, Portugal (professional representative).
On 17/03/2017, the Opposition Division takes the following
1. Opposition No B 2 658 436 is upheld for all the contested goods, namely
Class 32: Juices; Non-alcoholic beverages; Fruit drinks; Non-alcoholic fruit juice beverages.
2. European Union trade mark application No 14 835 425 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 835 425, namely against all the goods in Class 32. The opposition is based on, inter alia, European Union trade mark registration No 7 471 601. The opponent invoked Article 8(1)(b) and 8(5) 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 European Union trade mark registration No 7 471 601.
- The goods
The goods on which the opposition is based are the following:
Class 32: Beers; 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: Juices; Non-alcoholic beverages; Fruit drinks; Non-alcoholic fruit juice beverages.
Non-alcoholic beverages are identically contained in both lists of goods (including synonyms).
The contested juices; fruit drinks; non-alcoholic fruit juice beverages are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they 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. Taking into account that the relevant goods are mass consumption goods, which are purchased frequently and have a relatively low price, the degree of attention is considered to be lower than average.
- The signs
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 earlier mark consists of the word ‘NATIA’. The contested sign is a figurative mark in green colour formed by the stylized word ‘Native’ where the dot of the letter ‘I’ is replaced by two wavy thick lines.
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 elements ‘NATIA’ of the earlier mark and ‘Native’ of the contested sign are not meaningful in certain territories, for example, in those countries where Czech and Bulgarian is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech and Bulgarian-speaking part of the public.
In light of the above, the conceptual aspect does not influence the assessment of the similarity of the signs.
The elements ‘NATIA’ of the earlier mark and ‘Native’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the sequence of letters ‘Nati-’, but differ in the stylization of the contested sign. Moreover, they differ in the final letter ‘-a’ of the earlier mark and the final letters ‘-ve’, the figurative elements and the colour of the contested sign.
Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. In the case at hand, the fact that the main coincidences are placed in the initial part of the signs (‘Nati-’) is relevant.
Moreover, when signs consist of figurative and word components the word components of the signs have a stronger impact on the consumer. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component [see Judgment of 22/06/2005, T-34/04, Plus Warenhandelsgesellschaft mbH v OHIM, (TURKISH POWER (fig.)/POWER), EU:T:2005:248, § 56].
Therefore, the signs are similar 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 ‘Nati’, present identically in both signs. The pronunciation differs in the sound of the letter /a/ of the earlier mark and the sound of the letters /v/e/ of the contested sign which have no counterparts in the other sign.
For the same reasons stated in the visual comparison, the signs are similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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
The compared goods are identical.
As far as the signs are concerned, they are visually and phonetically similar to an average degree. Since none of the terms composing the signs has any meaning for the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs.
The similarities lie in the fact that the signs share the sequence of letters ‘Nati-’ placed at the beginning of the signs and in the same order. Moreover, the beginning of the sign is precisely where consumers generally tend to focus when being confronted with a trade mark. The signs differ in their final letters ‘a’ versus ‘ve’. However, this is the place where consumers are normally more likely to overlook differences between signs.
In addition, the signs also differ in the figurative elements and the colour of the contested sign. However, as it has been explained in section c) of the present decision, the word components of the signs have a stronger impact on the consumer, whereas the figurative component of the contested sign will be perceived as simple graphic means of bringing the element ‘Native’ to the attention of the public.
Account is also 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).
Furthermore, likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trademarks and between the goods. Accordingly, a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the Opposition Division finds that the identity between the goods at hand has a determining weight and offsets a lesser degree of similarity between the signs.
Bearing in mind all the foregoing, and in particular the identity of the goods and similarity of the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian and Czech-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 7 471 601. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 7 471 601 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8 (5) EUTMR.
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
Isabel DE ALFONSETI HARTMANN
Ignacio IGLESIAS ARROYO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.