OPPOSITION No B 2 742 164
Netto ApS & Co. KG, Preetzer Str. 22, 17153 Stavenhagen, Germany (opponent), represented by Maikowski & Ninnemann Patentanwälte Partnerschaft mbB, Kurfürstendamm 54-55, 10707 Berlin, Germany (professional representative)
a g a i n s t
Inversiones Melke 55, S.L., C/ Ortembach, 13-J, 03570 Calpe (Alicante), Spain (applicant), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative).
On 19/06/2017, the Opposition Division takes the following
1. Opposition No B 2 742 164 is upheld for all the contested goods.
2. European Union trade mark application No 15 209 653 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 209 653, namely against some of the goods in Classes 29 and 30 and all the goods in Class 32. The opposition is based on German trade mark registration No 1 175 161. 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 goods
The goods on which the opposition is based are the following:
Class 5: Mineral water, spring water, table water and other soft drinks; fruit juices, nectars and fruit syrups; vegetable juices and vegetable drinks; refreshing drinks, in particular fruit juice drinks, lemonades and fizzy drinks as well as isotonic mineral drinks, all the aforementioned goods as dietetic food.
Class 32: Mineral water, spring water, table water and other soft drinks; fruit juices, nectars and fruit syrups; vegetable juices and vegetable drinks; refreshing drinks, in particular fruit juice drinks, lemonades and fizzy drinks as well as isotonic mineral drinks.
However, in the evidence submitted for substantiation purposes, the translation of the list of goods provided by the opponent has a slightly different wording from that used in the notice of opposition. The Opposition Division will rely on the list of goods and services as included in the notice of opposition of 27/07/2016 and in the opponent’s arguments of 15/12/2016.
The contested goods are the following:
Class 29: Milk and milk products; ice cream shakes; milk shakes.
Class 30: Coffee; tea; cocoa; artificial coffee.
Class 32: Beer; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; smoothies.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 29
The contested milk products; ice cream shakes; milk shakes are related to the opponent’s fruit juices in Class 32, as they have similar purposes (to quench one’s thirst or for enjoyment). These goods can have the same relevant public and distribution channels and they are in competition. Therefore, they are similar.
Similarly, the contested milk is related to the opponent’s fruit juices. These goods are in competition and are often processed to be offered as a mixed milk/fruit drink final product. They are provided through the same distribution channels and target the same relevant public. Therefore, they are similar to a low degree.
Contested goods in Class 30
The contested coffee is a brewed drink with a distinct aroma and flavour, prepared from roasted coffee beans. The contested tea, cocoa are beverages to be drunk hot or cold. The contested artificial coffee is a product, usually without caffeine, that is used as a substitute for coffee. These goods are similar to the opponent’s fruit juices. As all of these goods are non-alcoholic beverages, they can have the same producers, relevant public and distribution channels. Furthermore, they are in competition.
Contested goods in Class 32
Mineral water, fruits juices are identically contained in both lists of goods.
The contested fruit beverages and the opponent’s fruit juices refer to the same goods. Therefore, they are identical.
The contested aerated waters overlap with the opponent’s table water, that is, water suitable for drinking at the table. Therefore, they are identical.
The contested non-alcoholic beverages include, as a broader category, the opponent’s 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 syrups for making beverages include, as a broader category, the opponent’s fruit syrups. 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 beer is related to the opponent’s mineral water. These goods have the same purpose, since they are drinks purchased and used to, inter alia, quench thirst. They are often sold through the same distribution channels and in the same restaurants and bars. They can have the same producers and they target the same relevant public. Furthermore, they are in competition. Therefore, they are highly similar.
The contested other preparations for making beverages are powders or concentrated liquids that are mixed with, inter alia, water, milk or juice to make beverages. As such, they are related to the opponent’s fruit syrups, since these goods can have the same purpose and method of use. They can also have the same producers, relevant public and distribution channels. Furthermore, they are in competition. Consequently, these goods are highly similar.
The contested smoothies are drinks of fresh fruit or vegetables puréed with, inter alia, milk, yogurt or ice cream. These goods are highly similar to the opponent’s fruit juices; vegetable juices and vegetable drinks, as they have the same nature and purpose (to quench one’s thirst or for pleasure). They can also have the same producers, relevant public and distribution channels. Furthermore, they are in competition.
- 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 various degrees are directed at the public at large. The degree of attention is average, as the goods in question are fairly inexpensive and purchased on a daily basis.
- The signs
Earlier trade mark
The relevant territory is Germany.
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.
The earlier mark is the word mark ‘SPLISH’ and has no meaning for the relevant public. It is considered distinctive for the relevant goods.
The contested sign is a word mark consisting of the verbal elements ‘SPLASH’ and ‘JUICE’. The first element, ‘SPLASH’, contrary to the opponent’s arguments, has no meaning for the relevant public. The word ‘JUICE’, contained as the second verbal element of the contested sign, will be understood by a substantial part of the German public with its English meaning, namely, inter alia, ‘the liquid that can be obtained from a fruit’ (information extracted form Collins English Dictionary on 19/06/2017 at https://www.collinsdictionary.com/dictionary/english/juice), either because this word exists as such in German (information extracted form Duden.de on 19/06/2017 at http://www.duden.de/suchen/dudenonline/juice) or because this word is commonly used in trade, for instance in advertisements or on menus in restaurants, cafeterias and bars. Insofar as the contested goods are related to beverages, this element is directly descriptive of the kind of some of the contested goods, such as fruit juices, and is somewhat weak for the rest. Therefore, the impact of the element ‘JUICE’ on the overall impression created by the contested sign is limited. However, it cannot be excluded that a small part of the relevant public will not perceive the meaning of the element ‘JUICE’ as explained above, due to the existence of an equivalent word in German, ‘Saft’. That part of the public will perceive the element ‘JUICE’ as a fanciful and distinctive term, and therefore, for that part of the public, the contested sign has no elements that could be considered clearly more distinctive than other elements.
For reasons of procedural economy, the Opposition Division finds it appropriate to focus the analysis below on the part of the German-speaking public that understands the meaning of the word ‘JUICE’, given that this part of the public will be more prone to confusion.
Visually and aurally, the signs coincide in the graphemes/phonemes ‘SPL*SH’. However, they differ in the letters/sounds ‘I’ of the earlier mark and ‘A’ of the contested sign, and in the contested sign’s element ‘JUICE’, the last of which is, however, directly descriptive of the kind of some of the contested goods (e.g. fruit juices) and is somewhat weak for the rest of the goods at issue.
Account should be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Therefore, the fact that the coinciding letters ‘SPL*SH’ constitute all but one of the letters of the earlier mark and of the first part of the contested sign has to be taken into account.
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public. The earlier mark and the first verbal element of the contested sign will not be perceived as having any meaning.
The element ‘JUICE’ of the contested sign will be perceived by the part of the relevant public taken into account as having the meaning defined above. In relation to the goods for which it is considered non-distinctive, the element ‘JUICE’ will be disregarded by the relevant consumers and, thus, will not have any conceptual impact. In relation to the goods for which it is considered weak, the element ‘JUICE’, has a limited conceptual impact.
Since one of the signs (the earlier mark) will not be associated with any meaning, the marks 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.
- 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The goods are partly identical and partly similar to various degrees. They target the public at large and the degree of attention is average. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods.
The signs are visually and aurally similar to a high degree on account of the coinciding letters ‘SPL*SH’, present in the same order in the earlier mark, ‘SPLISH’, and in the first verbal element of the contested sign, ‘SPLASH’. They differ only in one letter, in the middle of these elements, namely the vowel ‘I’ in the earlier mark and the vowel ‘A’ in the contested sign, and in the additional second word of the contested sign, ‘JUICE’, which is, however, non-distinctive or weak for the relevant goods.
It is acknowledged that the word ‘JUICE’ in the contested sign will not go unnoticed by the relevant public. However, the element ‘SPLASH’ of that sign, which is highly similar to the earlier mark, ‘SPLISH’, is present in the contested sign as a separate and distinguishable element, plays an independent role within it and is positioned at the beginning of the mark.
Moreover, for the part of the relevant public taken into consideration, the second word, ‘JUICE’, of the contested sign is meaningful and non-distinctive or weak so the relevant public will either disregarded it or will not pay much attention to it.
All the aforementioned findings lead to the conclusion that the coincidences outweigh the differences in the overall impressions produced by the trade marks, even for goods that are similar to only a low degree.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark, ‘SPLISH’. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, between the marks.
Considering all the above, there is a likelihood of confusion on a significant part of the German-speaking public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 1 175 161. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.