OPPOSITION No B 2 741 117
Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172, Neckarsulm, Germany, (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354, Hamburg, Germany (professional representative)
a g a i n s t
Noble Enterprise SL, AV. De Los Arces, 7 4ª, 28042, Madrid, Spain (applicant), represented by Segura & Maclean S.L., Calle Linaje, 2 – 3º Izquierda, 29001, Málaga, Spain (professional representative).
On 04/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 117 is partially upheld, namely for the following contested goods:
Class 5: Milk powders [foodstuff for babies]; Food for infants; Powdered milk foods for infants.
Class 32: Waters, Bottled drinking water; Vegetable and fruit juices for babies and small children; Fruit juice concentrates for babies and small children.
2. European Union trade mark application No 15 352 024 is rejected for all the above goods. It may proceed for the remaining goods, namely:
Class 5: Goulard water.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 352 024, for the word mark SOLEVITA. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
The application was filed for a broader range of goods in Classes 5 and 32. The applicant subsequently applied to limit the list of goods. In light of the limitation to the list of goods, the Office wrote to the opponent on 25 October 2016 asking whether they wished to maintain the opposition. On 5 January 2017 the opponent confirmed its intention to proceed with the opposition against all of the remaining goods.
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 goods
The goods on which the opposition is based are the following:
Class 29: Milk drinks containing fruits; Yogurt drinks; Soya milk [milk substitute]; Whey.
Class 30: Iced tea.
Class 32: Lemonades; Vegetable juices [beverages]; Soya-based beverages, other than milk substitutes; Syrups for making fruit-flavored drinks; Non-alcoholic beverages; Fruit juice beverages; Smoothies; Flavoured waters.
The contested goods are the following:
Class 5: Milk powders [foodstuff for babies]; Food for infants; Powdered milk foods for infants; Goulard water.
Class 32: Waters, Bottled drinking water; Vegetable and fruit juices for babies and small children; Fruit juice concentrates for babies and small children.
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 5
The contested milk powders [foodstuff for babies]; Food for infants; Powdered milk foods for infants are considered to be similar to a low degree to the earlier Class 29 milk. They have the same purpose and nature plus they can coincide in method of use.
The contested goulard water is a mixture of spirit and water aimed at easing irritable skin. It has no dietary benefit and so it is different in nature to the opponent’s goods. Further, they differ in nature to all of the earlier goods are not in competition, complementary or sold via the same distribution channels. They are dissimilar.
Contested goods in Class 32
The contested Waters, Bottled drinking water; Vegetable and fruit juices for babies and small children; Fruit juice concentrates for babies and small children are included in the broad category of the opponent’s non-alcoholic beverages. 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 or similar to a low degree are directed at the public at large. The degree of attention is considered to be normal.
- The signs
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SOLEVITA
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SOLVIDA
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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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is an invented word mark. It has no identifiable components and since it has no meaning in relation to the goods, it is considered to be of average distinctive character.
The contested sign is also an invented word without any identifiable components. Its distinctiveness resides in the mark as a whole.
Visually, the earlier trade mark consists of eight letters and the contested sign consists of seven letters. The signs coincide in the letters ‘SOL’, ‘VI’ and ‘A’. However, they differ insofar the letter ‘E’ is present after the ‘L’ in the earlier trade mark but it is not present in the contested sign. They also differ in the penultimate letter being ‘T’ in the earlier trade mark and ‘D’ in the contested sign. In view of the visual coincidences the marks are considered to be visually similar to a high degree.
Aurally, the earlier trade mark contains four syllables, namely SOL-E-VI-TA. The contested sign has three syllables, namely SOL-VI-DA. Both marks would be pronounced as one word. The respective marks coincide in the identical sounds of ‘SOL’ and ‘VI’. The respective ‘TA’ and ‘DA’ have a similar sound. The marks differ in the ‘E’ in the earlier mark though this is in the middle of the signs. In view of the aforementioned, the marks are considered to be aurally similar to a high degree.
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.
- 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.
- Global assessment, other arguments and conclusion
The relevant goods are partly identical, partly similar to a low degree and partly dissimilar. They target the public at large, whose level of attention is normal. The distinctiveness of the earlier mark is considered to be normal.
The signs at issue are visually and aurally similar to a high degree. There are no conceptual aspects to be compared.
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). This is known as the interdependency principle.
Account must also be 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).
Taking into account the abovementioned similarities between the signs, the Opposition Division considers that those similarities might lead the relevant public, even for goods where there is a low degree of similarities, to believe that the contested goods and those of the opponent come from the same undertaking.
Taking into account the abovementioned similarities between the signs, the Opposition Division considers that there is a likelihood of confusion between the marks in question for the identical and similar goods and that those similarities might lead the relevant public to believe that the contested goods and those of the opponent come from the same undertaking. Applying the interdependence principle the above conclusion is applicable even for goods found to be similar only to a low degree.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to any degree) to those of the earlier trade mark.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 14 745 665. 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.
The rest of the contested goods 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 goods cannot be successful.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Ioana MOISESCU |
Mark KING |
Julie GOUTARD
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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.