OPPOSITION No B 2 652 686

Soyyigit Gida Sanayi ve Ticaret Anonim Sirketi, Kiraç Beldesi, Çakmakli Mahallesi, 3. Cadde, 110. Sokak, No. 3, Büyükçekmece, Istanbul, Turkey (opponent), represented by Silex IP, Calle Velázquez 109, 2º D, 28006, Madrid, Spain (professional representative)

a g a i n s t

Konditori Malenčić d.o.o., Nikole Tesle 5, RS-23300 Kikinda, Serbia (holder), represented by Jadek & Pensa D.N.O. – O.P., Tavčarjeva 6, 1000 Ljubljana, Slovenia (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 652 686 is partially upheld, namely for the following contested goods:

Class 32: Coffee; tea; cocoa; artificial coffee.

2.        International registration No 1 254 619 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 254 619. The opposition is based on UK trade mark registration No 2 557 800 and international trade mark registration No 895 762 designating the European Union. The opponent invoked Article 8(1)(b) and Article 8(5) 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 UK trade mark registration No 2 557 800.

1. The goods

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

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; pastry; confectionery; edible ices; honey; golden syrup; yeast, baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice for refreshment.

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.

Coffee; tea; cocoa; artificial coffee are similar to other non-alcoholic drinks in Class 32, as they can have the same producers, end users and distribution channels. Furthermore, they are in competition.

The remaining contested goods, sugar; rice; tapioca; sago; flour and preparations made from cereals; bread; pastry; confectionery; edible ices; honey; golden syrup; yeast, baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice for refreshment, 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.

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 similar 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 United Kingdom.

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).

Both signs are figurative marks, containing the verbal elements ‘TRIX’ (in the earlier mark) and ‘TRIK’ (in the contested sign). In the earlier mark, above ‘TRIX’, appears a rectangle containing the verbal elements ‘KENT BORINGER’ in much smaller letters. In the contested sign, the third letter is formed of an exclamation mark (‘!’) and the fourth letter, ‘K’, is reversed.

In the earlier mark, the word ‘TRIX’ occupies a central position and its typeface is larger than those of the other verbal elements. The other verbal components, ‘KENT BORINGER’, are written in much smaller letters and are shifted to the left and towards the edge of the sign. ‘TRIX’ is therefore dominant (visually outstanding) in the overall impression of the mark.

Neither ‘TRIX’ nor ‘TRIK’ has a meaning in English. However, ‘TRIX’ is likely to be seen as a misspelling of the plural of ‘trick’, which is a ‘clever or skilful action that someone does in order to entertain people’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/trick). ‘TRIK’ could be seen as a misspelling of ‘trick’.

In the earlier mark, ‘KENT’ will be understood as referring to a county in England (https://www.collinsdictionary.com/dictionary/english/kent) and ‘BORINGER’ is meaningless.

Visually, the signs coincide in the string of letters ‘TRI*’. The stylisation is not the same but there are some similarities as regards the blue colours and the overall impressions created by the marks. There are some differences regarding the letter ‘I’: in the earlier mark the dot is a star and in the contested sign the ‘I’ is an exclamation mark. The fourth letters ‘X’ versus ‘K’ also differ, and the additional element ‘KENT BORINGER’ is present in only the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TRI’, present in both signs. Each sign will be pronounced as one syllable. The pronunciation differs in the sound of the fourth letters ‛X’ versus ‘K’. As already mentioned, in the earlier mark, the word ‘TRIX’ dominates the visual impression and therefore is more likely to be pronounced than the other verbal elements, ‘KENT BORINGER’.

Therefore, the signs are aurally highly similar.

Conceptually, the signs as a whole do not have any meaning for the public in the relevant territory. However, both marks refer to the concept of a ‘trick’ or ‘tricks’ (see above). They differ in the concept of ‘KENT’, designating a place in England, present in only the earlier mark.

To that extent, the signs are conceptually highly 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The goods, which target the public at large, are partly similar and partly dissimilar.

The differences between the signs consist of the inclusion of some wording in a secondary position in the earlier trade mark and the use of differing but nonetheless similar styles of typeface; consequently, the marks create similar overall impressions. The overall similarity is reinforced by the use of similar blue colours in both marks.

The figurative and additional elements of the marks do not counteract the similarity arising from the verbal elements of the marks: ‘TRIX’ versus ‘TRIK’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

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.

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

• International registration No 895 762  designating the EU.

The above sign is protected for the following goods:

Class 32:  Fruit and vegetable juices and syrups; fruit and vegetable juices; non-alcoholic fruit extracts used in the preparation of beverages; non-alcoholic beverages containing fruit and vegetable extracts; non-alcoholic beverages made of fruit in the form of powder and granules; tomato juice; non-alcoholic beverages made with cola extract; isotonic beverages.

This mark covers the same scope of goods as, or a narrower scope of goods than, the opponent’s UK trade mark registration No 2 557 800. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

Moreover, IR No 895 762 is not similar to the contested mark. The earlier mark contains additional verbal elements that will be pronounced and which are not present in the contested sign, so they are clearly different aurally. Visually, there is a clear difference in the signs’ structures. The overall impression created by the conflicting signs is that they are clearly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Consequently, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as regards this earlier right.

The Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 26/04/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. It expired on 08/09/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Rhys MORGAN

José Antonio GARRIDO OTALOA

Erkki MÜNTER

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.