OPPOSITION No B 2 505 017

Grupo Omnilife, S.A. de C.V., Av. Inglaterra Num. 3089 Interior T. Col. Vallarta Poniente, Guadalajara (Jalisco), 44500 Mexico (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Jan Kozioł, ul. Pelikanów 8, 02-843 Warszawa, Poland (applicant), represented by Paweł Kurcman, Leszno 8 Lok. 10, 01-192 Warsaw, Poland (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 505 017 is partially upheld, namely for the following contested goods and services:

Class 32: Non-alcoholic beverages; flavoured carbonated beverages; waters; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; isotonic drinks; isotonic beverages [not for medical purposes]; beverages containing vitamins; guarana drinks; preparations for making beverages.

Class 35: Retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages.

2.        European Union trade mark application No 13 555 131 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 555 131. The opposition is based on, inter alia, European Union trade mark registration No 8 512 774. 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 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 8 512 774.

1. The goods and services

The goods on which the opposition is based are the following:

Class 5: Food supplements and vitamin preparations.

Class 30: Coffee, tea; artificial coffee; coffee-based beverages; tea based beverages; cocoa-based beverages; beverages based on chocolate; infusions, not medicinal; flour and preparations made from cereals, rice, bread, biscuits, pastry and confectionery; biscuits; chewing gum, not for medical purposes.

Class 32: Beers, mineral and aerated water and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; sodas; sodas; whey drinks; isotonic beverages.

The contested goods and services are the following:

Class 32: Non-alcoholic beverages; flavoured carbonated beverages; waters; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; isotonic drinks; isotonic beverages [not for medical purposes]; beverages containing vitamins; guarana drinks; preparations for making beverages.

Class 35: Retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages; advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; loyalty, incentive and bonus program services; product demonstrations and product display services; shop window dressing; presentation of goods on communication media, for retail purposes; market campaigns; direct marketing; production of advertising material; production of video recordings for advertising purposes; production of sound recordings for advertising purposes; product sampling; optimisation of websites; arranging of festivals for advertising purposes; production of advertising films; advertising; banner advertising; advertising and marketing; electronic billboard advertising; on-line advertising on a computer network; advertising through all public communication means; advertising in periodicals, brochures and newspapers; advertising in the popular and professional press; advertising via electronic media and specifically the internet; outdoor advertising; cinema advertising; online advertisements; radio and television advertising; television commercials.

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

Isotonic drinks; isotonic beverages [not for medical purposes]; preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested non-alcoholic beverages include, as a broader category, the opponent’s fruit drinks and fruit juices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested waters include, as a broader category, the opponent’s mineral and aerated water. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The remaining contested goods, namely: flavoured carbonated beverages; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; beverages containing vitamins; guarana drinks are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages are similar to a low degree to the opponent’s other non-alcoholic drinks.

The contested advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; loyalty, incentive and bonus program services; product demonstrations and product display services; shop window dressing; presentation of goods on communication media, for retail purposes; market campaigns; direct marketing; production of advertising material; production of video recordings for advertising purposes; production of sound recordings for advertising purposes; product sampling; optimisation of websites; arranging of festivals for advertising purposes; production of advertising films; advertising; banner advertising; advertising and marketing; electronic billboard advertising; on-line advertising on a computer network; advertising through all public communication means; advertising in periodicals, brochures and newspapers; advertising in the popular and professional press; advertising via electronic media and specifically the internet; outdoor advertising; cinema advertising; online advertisements; radio and television advertising; television commercials all fall under the broad category of advertising services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that the opponent’s goods may appear in advertisements is insufficient for finding similarity. Therefore, the abovementioned contested services are dissimilar to the opponent’s goods in Classes 5, 30 and 32.

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 and services found to be identical or similar to a low degree are directed at the public at large and, for the wholesale services in Class 35, at business customers with specific professional knowledge or expertise.

The degree of attention is considered average.

3. The signs

EGO
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is meaningful for the Spanish- and French-speaking consumers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Spanish-speaking parts of the public.

The earlier mark consists in the word ‘EGO’, which refers to a person’s sense of self-esteem or self-importance. Since it has no meaning in relation to the relevant goods, it is distinctive to an average degree.

The contested sign is figurative. It consists of a black rectangular label with the following elements depicted in grey on different levels: the words ‘Natural’ and ‘madness’, written in standard characters, a figurative element in the form of a fanciful wave resembling a ribbon with rows of dots perpendicular to the wave forming a band around it, the word ‘ORIGINAL’, written in small letters, the word ‘EGOO’, written in stylised characters, and the expression ‘ENERGY DRINK’, written in small letters. The verbal elements ‘Natural madness’ and ‘EGOO’ and the figurative elements are the most eye-catching elements of the sign due to their size compared with the words ‘ORIGINAL’ and ‘ENERGY DRINKS’, written in very small letters.

In relation to the goods and services, the word ‘Natural’ is weak, since it refers to goods produced or existing in nature, not artificial (the French equivalent being ‘naturel’). The word ‘ORIGINAL’ is also weak, since it refers to a genuine product. For a large part of the French-speaking public, the expression ‘ENERGY DRINK’ refers to beverages that provide mental and physical stimulation, since the word ‘drink’ is commonly used to designate a beverage (see Larousse dictionary online), and ‘ENERGY’ is similar to the French words ‘énergie’ and ‘énergétique’. Therefore, it is weak. Even though not all Spanish consumers will understand the expression ‘ENERGY DRINK’ as a whole, they will understand the word ‘ENERGY’ because of its similarity to the corresponding Spanish words ‘energía’ and ‘energetica’ and, in the context of the relevant goods and services (beverages and their retail), the expression is likely to be perceived as referring to beverages that provide mental and physical stimulation. Therefore, it is also a weak element. The word ‘madness’ is meaningless and therefore distinctive, as is the word ‘EGOO’. Even though the latter does not exist as such, because it is pronounced in the same way as the word ‘EGO’, it cannot be ruled out that at least part of the public will perceive it as referring to a person’s sense of self-esteem or self-importance. In any case, it is distinctive.

Regarding the figurative elements of the contested sign, 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). In the present case, the black background of the contested sign is merely decorative and devoid of any distinctive character. The wave and the dots do not convey any particular meaning and will be perceived as essentially decorative elements that do not indicate the commercial origin of the goods and services.

Visually, the earlier mark and the distinctive and independent element ‘EGOO’ of the contested sign coincide in the letters ‘EGO’ and differ in the stylisation and the double final letter ‘O’ of the word ‘EGOO’ of the contested sign. The signs also differ in the additional verbal and figurative elements of the contested sign, as described above. Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it must be concluded that the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the syllables /e-go/. In French and Spanish, the double letter ‘O’ of the word ‘EGOO’ of the contested sign will not be pronounced. The signs differ in the pronunciation of the additional verbal elements of the contested sign, ‘Natural madness’, ‘original’ and ‘energy drink’. However, bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it must be concluded that 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. For at least part of the public, the signs are conceptually similar to an average degree, since they both convey the concept of ‘EGO’. The additional concepts present in the contested sign are not particularly relevant, since they concern elements that are weak in relation to the relevant goods and services (‘Natural’, ‘original’ and ‘energy drinks’). For the part of the public that considers the element ‘EGOO’ of the contested sign meaningless, the signs are not conceptually similar.

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

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).

The goods and services are partly identical, partly similar to a low degree and partly dissimilar. The distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

The signs are visually similar to at least a low degree, aurally similar to an average degree and, for part of the public, conceptually similar to an average degree. The similarities lie in the distinctive element ‘EGOO’ of the contested sign, which is visually clearly perceptible as an independent element. Except for the distinctive element ‘madness’, all the remaining elements of the contested sign are considered weak or secondary. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs, in particular taking into account the fact that the contested goods are identical. This also applies to the services similar to a low degree given the relevant similarities between the signs.

Furthermore, 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 (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, when encountering the marks at issue, the relevant consumer may perceive the contested sign as a brand variation of the earlier sign, used for a new line of goods and for the retail of these goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Spanish-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 9 073 354 for the figurative mark  for pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides in Class 5; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking – powder; salt, mustard; vinegar, sauces (condiments); spices; ice in Class 30; and beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32.

This other trade mark covers goods that are obviously not similar to the remaining contested services in Class 35 for the same reasons as mentioned above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected and no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Frédérique SULPICE

Martina GALLE

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.