OPPOSITION No B 2 663 576

Vitagermine, Parc d'activités du Courneau, Rue du Pré Meunier, CS 60003 Lieu-dit Canéjan, 33612 Cestas Cedex, France (opponent), represented by Ipside, 7-9 Allées Haussmann, 33300 Bordeaux, France (professional representative)

a g a i n s t

Acqua Minerale San Benedetto S.p.A., Viale Kennedy 65, 30037 Scorzè (VE), Italy (applicant), represented by Studio Torta S.p.A., Via Viotti 9, 10121 Turin, Italy (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 663 576 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 691 299. The opposition is based on, inter alia, European Union trade mark registration No 7 070 949. 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 7 070 949.

1. The goods

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

Class 29:         Preserved, frozen, dried and cooked fruits and vegetables; compotes; milk and milk products.

Class 30:        Preparations made from cereals, pastry.

Class 32:        Fruit drinks and fruit juices.

The contested goods are the following:

Class 30:        Tea; iced tea; tea-based beverages; tea essences; tea mixtures; flavored tea; fruit teas; tea-based beverages with fruit flavoring; flavourings for beverages.

Class 32:        Mineral water carbonated and non-carbonated; flavoured mineral water; mineral water flavoured with tea; water-based vitamin drinks; energy and sports drinks; carbonated and non-carbonated soft drinks; aerated and non-aerated non-alcoholic drinks flavoured with tea; soft drink colas; fruit beverages and fruit juices; vegetable juices (beverages); syrups and other preparations for making beverages; essences for making beverages; sherbet beverages; tea sorbets (beverages).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 30

The contested tea; iced tea; tea-based beverages; tea essences; tea mixtures; flavored tea; fruit teas; tea-based beverages with fruit flavoring are similar to the opponent’s fruit drinks and fruit juices in Class 32, as they can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested flavourings for beverages consist of sweetening ingredients used in the preparation of various products, specific powders, binding agents and flavourings used in the manufacture of beverages. These goods have nothing relevant in common with the opponent’s goods in Classes 29, 30 and 32. The fact that the contested flavourings may be used as ingredients in the production of some of the opponent’s finished products, such as fruit drinks and fruit juices, is not sufficient to find similarity. The goods under comparison have different natures and purposes. Furthermore, they satisfy different consumer needs and do not normally originate from the same undertakings. In addition, they are neither complementary nor in competition. Therefore, they are considered dissimilar.

Contested goods in Class 32

The contested fruit beverages (and their synonym fruit drinks) and fruit juices are identically contained in both lists of goods.

The contested mineral water carbonated and non-carbonated; flavoured mineral water; mineral water flavoured with tea; water-based vitamin drinks; energy and sports drinks carbonated and non-carbonated soft drinks; aerated and non-aerated non-alcoholic drinks flavoured with tea; soft drink colas; vegetable juices (beverages); sherbet beverages; tea sorbets (beverages) are similar to a high degree the opponent’s fruit drinks and fruit juices in Class 32. The goods under comparison are all beverages of a non-alcoholic nature, which may be in competition with one another, may be consumed on the same occasions and can be served together in the same establishments. They can have the same purpose, producers, relevant public and distribution channels.

The contested syrups and other preparations for making beverages; essences for making beverages are similar to a high degree to the opponent’s fruit drinks and fruit

juices as they have the same purpose. They can 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 level 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 various degrees are mainly directed at the public at large, but also at a more specialised public, with specific professional knowledge or expertise (manufacturers of foodstuffs). The degree of attention will vary from average to low, depending on the nature, price and/or frequency of purchase of the goods in question.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

BABYBIO
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark composed of the single verbal element, made up of seven letters, ‘BABYBIO’.

The contested sign is a composite, figurative mark composed of the verbal elements ‘SAN BENEDETTO’ (in blue colour, with the letters ‘S’ and ‘B’ in a slightly bigger size), ‘Baby’ (in red) and Bio‘ (in green) depicted in a slightly stylised type face, in upper case letters, on a blue, green and white, roundish background, that will be perceived as a label. In the upper part of the label there is a slightly stylised representation of a bird, in darker blue, against the background of a lighter blue device that might be recognised as a stylised depiction of a fountain.

The common element ‘Baby’ is a very basic English word commonly understood throughout the Union (even where English is not commonly spoken) by a great majority of the consumers as ‘a newborn or recently born child’. Therefore, it is considered that the relevant public will understand this element as related to infants, children and that it will be perceived as a description of at whom the products (in particular, foodstuffs and beverages), are directed, or alternatively, referring to a smaller size or packaging. Consequently, this element is non-distinctive in relation to the relevant goods.

The common element ‘Bio’ is a commonly used abbreviation for the word ‘biological’ throughout the European Union and will be seen by the relevant public in relation to all the goods at issue as a mere description of the organic or biological nature of the products at hand. Therefore, this element is non-distinctive for all the relevant goods.

Despite the fact that the earlier mark is composed of two verbal elements that per se are non-distinctive, nevertheless, the earlier mark as a whole enjoys a minimum degree of distinctiveness.

The verbal component ‘SAN BENEDETTO’ in the contested mark will be understood by part of the public, as referring to a Christian saint,  patron saint of Europe, which in the case of Italy is also used as a toponym; for the rest of the relevant public these elements will have no meaning. Either way, this verbal component is distinctive, as it is not descriptive, allusive or otherwise weak in relation to the goods. As regards the figurative aspects in the contested sign, they enjoy distinctiveness too, although the green colour could evoke the biological nature of the goods, the image of the bird and the blue colour could evoke the image of nature or the natural ingredients of the goods, while the image of a fountain, should it be perceived, could be allusive of part of the goods (such as mineral waters). Where this is the case, these figurative elements will be less distinctive than the verbal component ‘SAN BENEDETTO’, which is also the initial verbal element in the contested sign (on which consumers generally tend to focus when they encounter a trade mark). In addition, the other figurative aspects (the stylisation of the letters and the coloured roundish background will be perceived as being of a purely decorative nature.

The contested mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. Nevertheless, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the marks only coincide in the descriptive elements ‘Baby’ and ‘Bio’, that however are written in two separate words, one above the other, in the contested sign. In addition, the signs significantly differ in the remaining elements of the contested sign: namely, the initial verbal (and longer) component ‘SAN BENEDETTO’ and the figurative aspects (the figurative elements and stylisation), which have no counterpart in the earlier mark.

Therefore, to the extent that they have the non-distinctive words ‘Baby’ and ‘Bio’ in common, the earlier mark and the contested sign are, at most, only similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark and the contested sign are similar to the extent that they coincide in the pronunciation of the terms ‘Baby Bio’, which constitutes the entirety of the earlier mark. The signs differ in the sound of the initial verbal elements, i.e. ‘SAN BENEDETTO’, of the contested sign, which have no respective counterpart in the earlier mark. The signs also differ aurally in their length.

Therefore, the signs are, at most, aurally only similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The non-distinctive elements ‘Baby’ and ‘Bio’ included in both signs, will be associated with the meaning explained above and to that extent, the signs are conceptually at most similar to a very low degree; however, to the extent that the contested signs will be associated with a dissimilar meaning, 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.

Although the opponent did not explicitly claim in the notice of opposition nor in its subsequent submissions of 12/07/2016, that its mark is particularly distinctive, on 02/12/2016 – in reply to the applicant’s observations – the opponent asserted that the earlier mark enjoys a high distinctiveness in the European Union in connection with all the goods for which it is registered and submitted evidence supporting its claim of enhanced distinctiveness.

The time limit set by the Office to substantiate the opponent’s earlier rights or any other aspect affecting the scope of protection of its earlier rights, including enhanced distinctiveness, expired on 12/07/2016.

Consequently, in accordance with the Office’s practice, the Opposition Division cannot take into account the material filed. This is because the moment in time to claim enhanced distinctiveness is the deadline for substantiation and this cannot be proven once the applicant alleged a low distinctive character of the earlier mark.

In spite of the above and for the sake of completeness the evidence submitted by the opponent, show a figurative use of the mark  and therefore any alleged enhanced distinctiveness would refer to the figurative version of it, and not to the word mark.  

Therefore, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods concerned.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods are partly identical, partly similar (to various degrees) and partly dissimilar, and the signs are at most visually, aurally and conceptually similar to a low degree. The signs have in common the non-distinctive terms ‘Baby’ and ‘Bio’; however, the marks also have striking visual and aural differences, in addition to some – more or less, depending on the territory, as detailed above – conceptual differences.

It is true that the earlier mark is entirely included in the contested sign. On the other hand, it has to be taken into account that the mark has a low degree of distinctiveness in relation to the goods at stake and that the separate terms ‘Baby’ and ‘Bio’ in the contested sign will be perceived as non-distinctive indications. The public will, therefore, pay attention to the other elements of the contested mark, namely in primis ‘SAN BENEDETTO’, which is capable of distinguishing the goods and is also the first element of the contested sign, in addition to the various differing figurative aspects in the contested sign. The public will easily notice the differences.  In addition, the structure and length of the verbal elements of the signs that – as seen above – will have a bigger impact on the consumers, are very different. The earlier mark consists of one verbal component and seven letters whereas the contested sign has four verbal elements and nineteen letters in total.

When assessing the marks as a whole, it is considered that the coincidence in the  above terms that are devoid of distinctiveness for the goods at issue, is not sufficient for finding that there is a likelihood of confusion, not even in relation to the goods for which consumers’ level of attention will be low.

Account must also be taken of the market reality of purchasing the relevant goods. The goods themselves are mainly fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional different verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

Taking into account all the above factors cumulatively, and in the absence of any evidence of enhanced distinctiveness of the earlier mark, the Opposition Division considers that the differences between the signs outweigh their similarities, even considering that some of the goods are identical or similar and that for part of the goods the degree of attention will be low.

Therefore, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 13 237 433 for the word mark ‘BABYBIO PRIMEA’, covering goods in Classes 3, 5, 29, 30 and 32;

• French trade mark registration No 92421937 for the word mark ‘BABYBIO’, covering goods in Classes 5, 29, 30 and 32.

Since the French trade mark registration No 92 421 937 is identical to the earlier mark that has already been compared and for which no likelihood of confusion could be established, not even in relation to identical goods for which the level of attention is average, the outcome cannot be different with respect to any of the goods covered by this earlier mark in Class 5, nor, for that matter, with respect to any of the goods covered in Classes 29, 30 and 32, for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to this mark.

The other earlier right invoked by the opponent, European Union trade mark registration No 13 237 433 for the word mark BABYBIO PRIMEA, is less similar to the contested mark, because it contains the additional verbal element ‘PRIMEA’ which is not present in the contested trade mark. Moreover, the same reasoning as above with respect to French trade mark registration No 92 421 937 applies: the outcome cannot be different with respect to any of the goods covered by this earlier mark in Classes 3, 5, nor, for that matter, with respect to the goods covered in Classes 29, 30 and 32, for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to this mark.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.