OPPOSITION No B 2 662 214

Voranun Thaveesangpanich, 2529/163 Rama III Rd., Bangklo, Bangholaem, Bangkok 10120, Thailand (opponent), represented by Cabinet Pascale Lambert & Associés, 18, avenue de l’Opera, 75001 Paris, France (professional representative)

a g a i n s t

Productes Alimentaris la Perla, SL, Calle Goya, 6, 08400 Barcelona, Spain (applicant), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 662 214 is partially upheld, namely for the following contested goods:

Class 29:        Milk; milk products.

Class 30:        Coffee; tea; cocoa; artificial coffee.

Class 32:        Beer; mineral water (beverages); aerated water; non-alcoholic beverages; fruit juice beverages (non-alcoholic -); vegetable drinks and juices; syrups for beverages; preparations for making beverages.

2.        European Union trade mark application No 14 690 168 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 690 168. The opposition is based on European Union trade mark registration No 9 137 597. 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 beverages; syrups and other preparation for making beverages, non-alcoholic fruit extract, fruit nectars, coconut juice.

The contested goods are the following:

Class 29:        Meat extracts; preserved, frozen, dried and cooked fruits and vegetables; edible oils and fats; meat; fish; poultry, not live; game; meat extracts; vegetable preserves; jams; fruit, stewed; eggs; milk; milk products.

Class 30:        Spices; ice; coffee; tea; cocoa; artificial coffee; rice; tapioca; sago; flour; cereals; bread; sugar; honey; syrups and treacles; yeast; baking powder; salt; mustard; vinegar; herb-sauces; pastries; sweetmeats [candy]; ices.

Class 32:        Beer; mineral water (beverages); aerated water; non-alcoholic beverages; fruit juice beverages (non-alcoholic -); vegetable drinks and juices; syrups for beverages; preparations for making 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.

Contested goods in Class 29

The contested milk products have the same purpose or include products that have the same purpose as the opponent’s other non-alcoholic drinks in Class 32, namely to quench one’s thirst and/or to be served as a refreshing drink. Therefore, these goods will be in competition and target the same consumers. Moreover, they can be found close to one another in supermarkets and have the same distribution channels. Therefore, they are considered similar.

The contested milk targets the same public and is often distributed through the same channels as the opponent’s other non-alcoholic drinks in Class 32. Furthermore, these goods can be in competition. Therefore, they are considered similar to a low degree.

The contested preserved, frozen, dried and cooked fruits and vegetables; vegetable preserves; jams; fruit, stewed are dissimilar to the opponent’s goods in Class 32. Although the opponent’s goods are non-alcoholic drinks, including fruit drinks and fruit juices beverages; syrups and other preparation for making beverages, non-alcoholic fruit extract, fruit nectars, coconut juice, which are or can be made of fruits, they have a different purpose from the abovementioned contested goods and they are not in competition with each other. Moreover, they cannot be found in the same section of a supermarket. The mere fact that the abovementioned contested goods and the opponent’s goods can be made of the same raw material (fruits) does not make these goods similar.

The remaining contested meat extracts (indicated twice); edible oils and fats; meat; fish; poultry, not live; game; eggs are all foodstuffs or goods generally belonging to the food industry and they differ in both nature and purpose from the opponent’s goods in Class 32, which are various non-alcoholic drinks and preparations for making beverages. They do not usually have the same commercial origin and they have different methods of use. Furthermore, they are not usually in competition or complementary. For these reasons, these goods are dissimilar.

Contested goods in Class 30

The contested coffee; tea; cocoa; artificial coffee are all used for the preparation of drinks that are generally served hot. These goods can be in competition with the opponent’s other non-alcoholic drinks in Class 32. Moreover, they can coincide in their producers, target consumers and distribution channels. Therefore, they are similar.

The remaining contested spices; ice; rice; tapioca; sago; flour; cereals; bread; sugar; honey; syrups and treacles; yeast; baking powder; salt; mustard; vinegar; herb-sauces; pastries; sweetmeats [candy]; ices are various products belonging to the food sector or, in the case of ice, used for cooling. These goods differ from the opponent’s goods in Class 32 in their natures, purposes and methods of use. Moreover, they are neither complementary to nor in competition with each other and are usually not manufactured by the same undertakings. Therefore, they are dissimilar.

Contested goods in Class 32

Mineral water (beverages); aerated water; non-alcoholic beverages; fruit juice beverages (non-alcoholic -); syrups for beverages; preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested vegetable drinks and juices are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

The contested beer is highly similar to the opponent’s other non-alcoholic drinks, since they serve the same purpose and can coincide in their producers, consumers and distribution channels. Moreover, they are in competition with each other.

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 or similar to different degrees are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 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 signs under comparison feature the words ‘The Elements’, understood by the English-speaking consumers as referring to, inter alia, ‘an essential or characteristic part of something abstract’ or ‘strong winds, heavy rain, or other kinds of bad weather’ (see Oxford Dictionaries), and a figurative element composed of small circles of slightly different sizes, which may be perceived by at least part of the relevant public as a stylised symbol for infinity. The earlier mark further includes a rectangle framing its verbal and figurative components, while the contested sign contains the phrase ‘Pure Coconut Water’ depicted in smaller white letters on a black stripe background.

Considering the subordinate role of the definite article ‘The’ in combination with the word ‘Elements’ and the fact that the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element made of small circles, the component ‘Elements’ will be attributed more trade mark significance in both signs. The expression ‘Pure Coconut Water’ of the contested sign will be understood as referring to the type of the drink, to the fact that the product  includes pure coconut water as an ingredient or that it can be mixed with it. It cannot function as a badge of origin for some of the relevant goods, such as those in Class 32 or milk products in Class 29. The rectangle in the earlier mark and the black stripe in the contested sign are of a purely decorative nature.

Due to its size, depiction and position in the overall composition of the earlier mark, the word ‘Elements’ is considered more dominant (visually eye-catching) than the other elements. By virtue of its size and location, ‘Pure Coconut Water’ is clearly in a subordinate position in the contested sign. As regards the remaining components of the contested sign, even though ‘ELEMENTS’ is larger than the word ‘THE’ and the figurative element, the difference in size is not considered sufficient to result in a clear dominance of one element.

 

Visually, the signs coincide in ‘The ELEMENTS’ and the figurative element made up of small circles. They differ in their remaining components, as explained above. Even though there are some differences in the size, shape and stylisation of the coinciding word and figurative elements, the fact remains that they are all arranged in the same manner in the contested sign as in the earlier mark, which makes the overall graphic depiction of both marks highly similar. Consequently, the differences in their decorative figurative elements and the addition of the subordinate and (where applicable) descriptive expression ‘Pure Coconut Water’ in the contested sign are not capable of distracting consumers’ attention from the fact that the contested sign reproduces three elements (including the distinctive and most dominant element) of the earlier mark in the same positions. Therefore, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘THE ELEMENTS’, present identically in both signs and differs in the sound of the letters forming the expression ‘Pure Coconut Water’ of the contested sign. The coinciding figurative element is not a subject to an aural assessment, since it will not be referred to aurally by the relevant public. Considering that ‘Pure Coconut Water’ in the contested sign will be attributed less attention (for the reasons noted above), the probability that the relevant consumers will pronounce it when referring aurally to the mark (at least for the goods in Class 32, indicated above) is very low. All in all, it is considered that the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are therefore similar to the extent of ‘THE ELEMENTS’ and, where applicable, of the figurative element made up of small circles. Bearing in mind the weight attributed to the expression ‘Pure Coconut Water’ (as explained above), overall the signs are considered conceptually similar to at least an average degree.

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.

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.

5. Global assessment, other arguments and conclusion

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).

As concluded above, the contested goods are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods, and they target the public at large with an average degree of attention.

The signs are considered visually similar to a high degree and aurally and conceptually similar to at least an average degree on account of the coinciding distinctive (and dominant in the earlier mark) component ‘ELEMENTS’, the word ‘THE’, the figurative element made up of small circles and the overall layout of these elements in both signs.

Taking into account that the differences between the signs arise from secondary and/or less (or even non-) distinctive elements, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question (even those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above and taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 9 137 597. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to a various degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, in relation to the dissimilar goods, there is no need to proceed to the comparison of the signs for the remaining part of the relevant public, as the outcome of the present decision would be the same.

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 shall 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

Biruté SATAITE-GONZALEZ

Rasa BARAKAUSKIENE

Oana-Alina STURZA

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.