OPPOSITION No B 2 513 508

Radenska, družba za polnitev mineralnih voda in brezalkoholnih pijač, d.o.o., Boračeva 37, 9252 Radenci, Slovenia (opponent), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)

a g a i n s t

Unigrà S.r.l., Via Gardizza, 9/B I- Conselice (RA), Italy (applicant), represented by Premru, Via Aliprandi, 20900 Monza MB, Italy (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 513 508 is upheld for all the contested goods, namely:

Class 29:        Milk drinks containing fruits; Fruit flavoured yoghurts; Fruit juices for cooking.

Class 32:        Whey beverages; Juices; Juices; Fruit drinks; Fruit beverages and fruit juices; Beverages consisting principally of fruit juices; Fruit juice for use as a beverages; Fruit juice beverages; Beverages containing vitamins; Aloe vera drinks, non-alcoholic; Energy drinks; Energy drinks containing caffeine; Energy drinks [not for medical purposes]; Non-alcoholic honey-based beverages; Sports drinks; Smoothies; Smoothies; Smoothies; Sorbets in the nature of beverages; Sherbets [beverages]; Preparations for making beverages; Milk (Peanut -) [non-alcoholic beverage]; Almonds (Milk of -) [beverage]; Fruit-based beverages; Fruit beverages and fruit juices; Smoothies; Smoothies; Fruit-flavoured beverages; Beverages consisting principally of fruit juices; Fruit juice beverages (Non-alcoholic -); Fruit juice beverages (Non-alcoholic -); Fruit juice for use as a beverages; Tomato juice [beverage]; Orange squash.

2.        European Union trade mark application No 13 613 931 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 613 931, namely against some of the goods in Classes 29 and 32. The opposition is based on, inter alia, Slovenian trade mark registration No 200 271 791. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Earlier Slovenian trade mark No 200 271 791

Class 32:        Table water; drinking water; carbonated water; water from the springs; mineral water; aerated waters; lemonade; flavored drinks based on mineral water, drinking water, table water, carbonated water, water from springs, soda and fruit or fruit extracts; fruit drinks, fruit juices; nectars; non-alcoholic beverages; syrups and other preparations for making beverages; beer; a mixture of light and dark beers; non-alcoholic beer; beer with a low calorie diet and alcohol; hop drinks; a mixture of beer with fruit juices, fruit extracts and/ or fruity; a mixture of beer and lemonade or orangeade; a mixture of beer and non-alcoholic beverages.

The contested goods are the following:

Class 29:        Milk drinks containing fruits; Fruit flavoured yoghurts; Fruit juices for cooking.

Class 32:        Whey beverages; Juices; Juices; Fruit drinks; Fruit beverages and fruit juices; Beverages consisting principally of fruit juices; Fruit juice for use as a beverages; Fruit juice beverages; Beverages containing vitamins; Aloe vera drinks, non-alcoholic; Energy drinks; Energy drinks containing caffeine; Energy drinks [not for medical purposes]; Non-alcoholic honey-based beverages; Sports drinks; Smoothies; Smoothies; Smoothies; Sorbets in the nature of beverages; Sherbets [beverages]; Preparations for making beverages; Milk (Peanut -) [non-alcoholic beverage]; Almonds (Milk of -) [beverage]; Fruit-based beverages; Fruit beverages and fruit juices; Smoothies; Smoothies; Fruit-flavoured beverages; Beverages consisting principally of fruit juices; Fruit juice beverages (Non-alcoholic -); Fruit juice beverages (Non-alcoholic -); Fruit juice for use as a beverages; Tomato juice [beverage]; Orange squash.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 29

The contested milk drinks containing fruits; fruit flavoured yoghurts; fruit juices for cooking are similar to the opponent’s fruit drinks, fruit juices, as they can have the same nature, distribution channels, purpose and relevant public.

Contested goods in Class 32

The contested preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested whey beverages; juices; fruit drinks; fruit beverages and fruit juices; beverages consisting principally of fruit juices; fruit juice for use as a beverages; fruit juice beverages; beverages containing vitamins; aloe vera drinks, non-alcoholic; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; non-alcoholic honey-based beverages; sports drinks; smoothies; smoothies; smoothies; sorbets in the nature of beverages; sherbets [beverages]; milk (peanut -) [non-alcoholic beverage]; almonds (milk of -) [beverage]; fruit-based beverages; fruit beverages and fruit juices; smoothies; smoothies; fruit-flavoured beverages; beverages consisting principally of fruit juices; fruit juice beverages (non-alcoholic -); fruit juice beverages (non-alcoholic -); fruit juice for use as a beverages; tomato juice [beverage]; orange squash are included in the broad category of the opponent’s goods non-alcoholic beverages. Therefore, they are identical.

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 are directed at the public at large. The degree of attention may vary from average to lower than average, since these are cheap goods for daily consumption, purchased frequently.

3. The signs

ORA
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 sign is a word mark, consisting of the verbal element ‘ORA’ in upper case characters. In the case of word marks, it is the word that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters. The word ‘ORA’ has no meaning in the relevant territory and, therefore, the sign has a normal degree of distinctiveness.

The contested sign is a figurative mark consisting of the conjoined words ‘Ora’ and ‘Si’ and an additional verbal element, ‘vegetable pleasure’, in a handwriting-style typeface. These verbal elements are on an irregularly shaped background. The element ‘Si’ of the contested sign will be associated with the Slovenian country code ‘SI’. Therefore, this element has a low degree of distinctiveness, as it indicates the origin of the goods. The verbal element ‘vegetable pleasure’ is underneath the verbal element ‘OraSi’ in a much smaller typeface and, because of its size, it is barely perceptible. Therefore, the verbal element ‘OraSi’ is the dominant, most visually eye-catching element in the contested sign.

Visually, the signs are similar to the extent that they coincide in their dominant element, ‘Ora’. However, they differ in the verbal element ‘Si’, which has a low degree of distinctiveness, and in the barely perceptible verbal element ‘vegetable pleasure’ of the contested sign. The contested sign contains a figurative element, as described above. Although this figurative element will not be overlooked, it has less impact than the coinciding dominant and distinctive verbal element ‘ORA’ and, therefore, has a limited impact on the overall visual perception of the signs. 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). Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛Ora’, present identically in both signs. The pronunciation differs in the less distinctive verbal element ‘Si’ in the contested sign. The earlier sign contains the barely perceptible verbal element ‘vegetable pleasure’, which, because of its size, will not be pronounced. Therefore the signs are aurally highly similar.

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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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 highly similar. Furthermore, the goods are identical or similar and target a public whose degree of attention is average or lower than average. As stated above, the contested sign and the earlier sign coincide in the dominant and distinctive verbal element ‘ORA’. The earlier mark’s verbal element is fully included in the beginning of the contested sign. Consequently, the identical verbal elements of the marks at issue have to be taken into account when assessing the likelihood of confusion. 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. Bearing in mind the foregoing, it is considered that a certain degree of visual and aural similarity between the signs, arising from the identical element ‘ORA’, which the marks have in common, safely outweighs the differences between them, as described above.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Slovenian trade mark registration No 200 271 791 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 right 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(1)(5) EUTMR.

Therefore, the opposition is well founded on the basis of the opponent’s Slovenian trade mark registration No 200 271 791. 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

Michaela SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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.