OPPOSITION No B 2 350 232

 

Ali Housein, Denisstraße 75, 90429 Nürnberg, Germany (opponent), represented by Hafner & Kohl, Schleiermacherstr. 25, 90491 Nürnberg, Germany (professional representative)

 

a g a i n s t

 

Energy Beverages LLC, 2390 Anselmo Drive, Corona California 92879, United States of America (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, City of London, EC4A 1JP, United Kingdom (professional representative).

 

On 25/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 350 232 is upheld for all the contested goods.

 

2.        European Union trade mark application No 12 494 357 is rejected in its entirety.

 

3.        The applicant bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponent filed an opposition against all the goods of European Union trade mark application No 12 494 357. The opposition is based on international trade mark registration No 1 057 814 designating the European Union. 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.

 

 

1. The goods

 

The goods 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, energy drinks.

 

The contested goods are the following:

 

Class 32:        Beer and brewery products; Beer; Beer-based cocktails; Beers enriched with minerals; Coffee-flavored beer; Kvass [non-alcoholic beverage]; Lagers; Low alcohol beer; Malt beer; Non-alcoholic beer; Porter; Shandy; Stout; Non-alcoholic beverages; Flavoured carbonated beverages; Juices; Non-dairy milk; Waters; Alcohol free wine; Aloe vera drinks, non-alcoholic; Aperitifs, non-alcoholic; Beverages containing vitamins; Beverages enriched with added minerals; Beverages enriched with added minerals [not for medical purposes]; Beverages enriched with added trace elements; Beverages enriched with added trace elements [not for medical purposes]; Beverages enriched with added vitamins; Beverages enriched with added vitamins [not for medical purposes]; Cider, non-alcoholic; Cocktails, non-alcoholic; Energy drinks; Energy drinks [not for medical purposes]; Energy drinks containing caffeine; Guarana drinks; Isotonic beverages [not for medical purposes]; Isotonic drinks; Lemon barley water; Non-alcoholic honey-based beverages; Non-alcoholic malt free beverages [other than for medical use]; Bitter lemon; Carbonated non-alcoholic drinks; Fruit flavored soft drinks; Ginger ale; Lemonades; Low-calorie soft drinks; Root beer; Tonic water [non-medicated beverages]; Aerated juices; Aloe vera juices; Beverages consisting principally of fruit juices; Fruit drinks; Fruit juice beverages; Fruit juice beverages (non-alcoholic -); Fruit juice for use as a beverages; Fruit nectars, non-alcoholic; Fruit-based beverages; Fruit-flavoured beverages; Grape juice; Grape juice beverages; Iced fruit beverages; Must; Non-alcoholic fruit extracts; Orange juice; Smoothies; Pineapple juice beverages; Tomato juice [beverage]; Vegetable drinks; Vegetable juices [beverages]; Almonds (milk of -) [beverage]; Milk (peanut -) [non-alcoholic beverage]; Bottled drinking water; Bottled water; Flavoured waters; Lithia water; Mineral water (non-medicated -); Mineral water [beverages]; Seltzer water; Soda water; Sparkling water; Still water; Table waters; Waters [beverages]; Preparations for making beverages; Aerated water (preparations for making -); Beer wort; Concentrates for use in the preparation of soft drinks; Cordials; Essences for making beverages; Extracts for making beverages; Grape must, unfermented; Hop extracts for use in the preparation of beverages; Hops (extracts of -) for making beer; Lemon squash; Lime juice cordial; Liqueurs (preparations for making -); Malt syrup for beverages; Malt wort; Mineral water (preparations for making -); Orange squash; Orgeat; Other preparations for making beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Squashes [non-alcoholic beverages]; Syrups for beverages; Syrups for lemonade; Syrups for making fruit-flavored drinks; Syrups for making non-alcoholic beverages.

 

 

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.

 

Non-alcoholic beverages, Mineral water [beverages], Fruit drinks;, Preparations for making beverages; and Energy drinks are identically contained in both lists of goods (including synonyms).

 

The contested Kvass [non-alcoholic beverage]; Non-alcoholic beer; Flavoured carbonated beverages; Juices; Non-dairy milk; Waters; Alcohol free wine; Aloe vera drinks, non-alcoholic; Aperitifs, non-alcoholic; Beverages containing vitamins; Beverages enriched with added minerals; Beverages enriched with added minerals [not for medical purposes]; Beverages enriched with added trace elements; Beverages enriched with added trace elements [not for medical purposes]; Beverages enriched with added vitamins; Beverages enriched with added vitamins [not for medical purposes]; Cider, non-alcoholic; Cocktails, non-alcoholic; Energy drinks [not for medical purposes]; Energy drinks containing caffeine; Guarana drinks; Isotonic beverages [not for medical purposes]; Isotonic drinks; Lemon barley water; Non-alcoholic honey-based beverages; Non-alcoholic malt free beverages [other than for medical use]; Bitter lemon; Carbonated non-alcoholic drinks; Fruit flavored soft drinks; Ginger ale; Lemonades; Low-calorie soft drinks; Root beer; Tonic water [non-medicated beverages]; Aerated juices; Aloe vera juices; Beverages consisting principally of fruit juices; Fruit juice beverages; Fruit juice beverages (non-alcoholic -); Fruit juice for use as a beverages; Fruit nectars, non-alcoholic; Fruit-based beverages; Fruit-flavoured beverages; Grape juice; Grape juice beverages; Iced fruit beverages; Must; Orange juice; Smoothies; Pineapple juice beverages; Tomato juice [beverage]; Vegetable drinks; Vegetable juices [beverages]; Almonds (milk of -) [beverage]; Milk (peanut -) [non-alcoholic beverage]; Bottled drinking water; Bottled water; Flavoured waters; Lithia water; Mineral water (non-medicated -); Seltzer water; Soda water; Sparkling water; Still water; Table waters; Waters [beverages], Grape must, unfermented; are included in the broad category of or overlap with the opponent’s non-alcoholic drinks. Therefore, they are identical.

 

The contested Non-alcoholic fruit extracts; Aerated water (preparations for making -); Beer wort; Concentrates for use in the preparation of soft drinks; Cordials; Essences for making beverages; Extracts for making beverages; Hop extracts for use in the preparation of beverages; Hops (extracts of -) for making beer; Lemon squash; Lime juice cordial; Liqueurs (preparations for making -); Malt syrup for beverages; Malt wort; Mineral water (preparations for making -); Orange squash; Orgeat; Other preparations for making beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Squashes [non-alcoholic beverages]; Syrups for beverages; Syrups for lemonade; Syrups for making fruit-flavored drinks; Syrups for making non-alcoholic beverages are included in the broader categories of or overlap with the opponent’s syrups and other preparations for making beverages. Therefore, they are identical.

 

The contested Beer and brewery products; Beer; Beer-based cocktails; Beers enriched with minerals; Coffee-flavored beer; Lagers; Low alcohol beer; Malt beer; Porter; Shandy; Stout are similar to a high degree to the opponent’s non-alcoholic beverages. This is because they have the same purpose, they usually coincide in producer, end user and distribution channels. Furthermore they are in competition.

 

 

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 found to be identical and similar to a high degree are directed at the public at large and at business customers.

 

The degree of attention is considered to be average.

 

3. The signs

 

 

 

N.O.S.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

In the present case, the Opposition Division finds it appropriate, to focus the comparison of the signs first on the German-speaking part of the relevant public, for which the verbal elements ‘N.O.S.’ and ‘NOS’ of the signs will have no meaning.

 

The earlier sign is a word mark consisting of the single element ‘N.O.S.’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. The element ‘N.O.S.’ has no meaning for the relevant part of the public. It is, therefore, distinctive.

 

The element ‘N.O.S.’ of the earlier mark, even though its letters are separated by dots, is likely to be seen as a whole word and not merely as an acronym. Such a perception is easier for the consumer, who is prone to reading sequences of letters as words rather than as abbreviations, especially when the word is easier to pronounce than the abbreviation. The sequence at issue is most likely to be pronounced as a word, as it is not a combination of sequential consonants but a sequence that is easily pronounced.

 

The contested sign consists of the verbal element ‘NOS’ depicted in bold white, bordered in black, letters against a simple rectangular orange background. A part of the letter ‘N’ is stretched in the form of an arrow above the letters ‘O’ and ‘S’ and will be perceived as such. The verbal element ‘NOS’ has no meaning for the relevant part of the public. It is, therefore, distinctive. The simple geometrical orange shape is considered less distinctive than the sign’s verbal element. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

 

It is also noted that, when signs consist of both verbal and figurative components (which is true of the contested sign), 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).

 

Visually, the signs coincide in the sequence of letters ‘NOS’, albeit separated by dots in the earlier mark, forming the element ‘N.O.S.’ in the earlier mark and ‘NOS’ in the contested sign. The signs differ in the dots of the earlier mark and the figurative elements and colours of the contested sign, while the orange geometrical shape is considered less distinctive than the letters the signs are coinciding in.

 

Bearing in mind what has been stated above regarding the coincidences between the signs, the signs are considered visually similar to an average degree.

 

Aurally, reference is made to what has been stated above regarding the sequence of letters ‘NOS’ in the earlier sign, namely that, although the letters are separated by dots, it is likely to be pronounced as one word. It follows that the pronunciation of the signs coincides in the sequence of letters ‘NOS’. Therefore, the signs are considered aurally identical.

 

Conceptually, although the public in the relevant territory will perceive the concept of the arrow in the contested sign, as explained above, the earlier sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

As the signs have been found similar (and even identical) 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 relevant part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

 

5. Global assessment, other arguments and conclusion

 

The contested goods are identical or highly similar to the opponent’s goods. The degree of attention is average.

 

It must be taken into account that 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 covered are from the same or economically linked undertakings.

 

The signs are visually similar to an average degree and aurally identical due to the coinciding sequence of letters ‘NOS’, despite the fact that these letters are separated by dots in the earlier mark, while they constitute an undivided word in the contested sign and its figurative elements.

 

Moreover, as explained above, when signs consist of both verbal and figurative components (which is true for the contested sign), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Therefore, the public, when encountering the contested sign, will focus on the sequence of letters ‘NOS’. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It follows that the relevant public is likely to perceive the contested sign as a new line of beverages or preparations for making beverages, covered by the earlier sign.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s international registration designating the European Union. 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 international trade mark registration No 1 057 814 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

 

 

COSTS

 

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

 

 

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

 

 

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.