BRUX ENERGY ELIXIR | Decision 2727298
Date Published: Oct 1, 2017
OPPOSITION No B 2 727 298
S.A. Bru-Chevron N.V., Les Bruyères 151, 4987 Stoumont (Lorcé), Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Adam Zakowicz, Vinkelveien 20, 3300 Hokksund, Norway (applicant), represented by Kancelaria Patentowa Wojciech Lech, ul. Architektów 1/8A, 85-804 Bydgoszcz, Poland (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 298 is upheld for all the contested goods.
2. European Union trade mark application No 15 206 253 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 206 253 . The opposition is based on, inter alia, European Union trade mark registration No 149 161 for the word mark ‘BRU’. In relation to this earlier right, the opponent invoked Article 8(1)(b) EUTMR. As regards the other earlier right on which the opposition is based, 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 European Union trade mark registration No 149 161.
- The goods
The goods on which the opposition is based are the following:
Class 32: Spring, natural, mineral, aerated and non-aerated, magnesian, bicarbonated, ferruginous waters, table waters in general, lemonade, drinks for refreshment and drinks included in this class.
The contested goods are the following:
Class 32: Energy drinks.
The contested energy drinks are included in the broad category of the opponent’s drinks included in this class. 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 are directed at the public at large. The degree of attention is considered average.
- The signs
BRU | |
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). This applies by analogy to international registrations designating the European Union. 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 part of the public for which the elements ‘BRU’ and ‘BRUX’ do not have any meaning, such as the Portuguese- and Spanish-speaking parts of the relevant public.
The earlier mark is a word mark. It consists of the word ‘BRU’. As this word has no meaning for the relevant public, it is distinctive. Word marks are protected as such, independent of the typeface used, and by definition they have no elements that could be regarded as more dominant than others.
The contested sign is a figurative mark consisting of the meaningless and therefore distinctive word ‘BRUX’, in stylised red upper case letters, as well as the expression ‘ENERGY ELIXIR’, depicted in much smaller red letters underneath. The word ‘ENERGY’ is likely to be understood by the relevant general public, since it is very similar to the equivalent words in their languages in the relevant territory (namely ‘energía’ in Spanish and ‘energia’ in Portuguese), which mean the ‘strength and vitality required for sustained physical or mental activity’ (30/05/2016, R 478/2015-2, MONSTERS UNIVERSITY / MONSTER ENERGY (fig.) et al., § 58). The word ‘ELIXIR’ exists as such in the relevant territories and will be understood as referring to ‘liquor composed of different medicinal substances or like a medicament or wonderful remedy’. The element ‘ENERGY ELIXIR’ will be understood as indicating that a certain beverage provides mental and physical stimulation. Bearing in mind that the relevant goods are energy drinks, it is considered that this element is non-distinctive for these goods. The public will understand the meaning of the element and will not pay as much attention to this as to the other, more distinctive, element of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.
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). Therefore, in the present case, the stylisation of the verbal elements of the contested sign does not have much trade mark significance either.
The word ‘BRUX’ in the contested sign is the most dominant and eye-caching element because of its size and central position.
Visually, the signs coincide in ‘BRU’, which constitutes the entire earlier mark and three of the four letters of the element ‘BRUX’ of the contested sign. This latter word constitutes the most distinctive element of the contested sign and, at the same time, it is the most dominant (visually eye-catching) element.
However, the signs differ in the stylisation and the final letter, ‘X’, of the word ‘BRUX’ of the contested sign. The stylisation is not particularly striking and the earlier mark, as a word mark, is protected as such, independently of the typeface used. With regard to the additional letter, ‘X’, this difference is at the end of the word ‘BRUX’. 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 one that first catches the attention of the reader.
The signs also differ in the verbal element ‘ENERGY DRINK’. This differing element is considered non-distinctive and as such its weighting in determining the degree of similarity is significantly reduced.
Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it must be concluded that the signs are visually similar to at least an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, regarding the distinctive elements, the pronunciation of the signs coincides in the sound of the letters ‘BRU’, present identically in both signs. The pronunciation differs in the sound of the letter ‘X’ of the word ‘BRUX’ of the contested sign, and in the additional, non-distinctive verbal element ‘ENERGY ELIXIR’, which has no counterpart in the earlier mark.
It cannot be disregarded that at least part of the public will refer to the contested sign as ‘BRUX’, without pronouncing the non-distinctive element ‘ENERGY ELIXIR’, since this is not capable of helping consumers identify the commercial origin of the goods. Therefore, considering also that, for this part of the public, the differing letter, ‘X’, is at the end of the contested sign, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs.
The additional concept conveyed by the element ‘ENERGY ELIXIR’ in the contested sign is not particularly relevant, since this element contains words that are non-distinctive in relation to the relevant goods and services and cannot indicate the commercial origin.
Neither of the distinctive elements of the signs (‘BRU’ nor ‘BRUX’) 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 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).
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).
The contested goods are identical to the opponent’s goods. They target the public at large, and the degree of attention is average. Moreover, the distinctiveness of the earlier mark must be seen as normal.
The similarities lie in the distinctive, and only, element forming the earlier mark, ‘BRU’, and in the distinctive element, ‘BRUX’, of the contested sign, which is visually clearly perceptible as the dominant element. They differ in the last letter of the word ‘BRUX’ and its stylisation. All the remaining verbal elements of the contested sign are considered descriptive and less eye-catching.
In view of the foregoing, as the differences between the signs are confined to non-distinctive and secondary elements and aspects, the signs are visually similar to at least an average degree and aurally similar to a high degree.
Furthermore, account is 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).
Considering all the above, there is a likelihood of confusion on the part of the Portuguese- and Spanish-speaking parts 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 well founded on the basis of the opponent’s European Union trade mark registration No 149 161. It follows that the contested sign must be rejected for all the contested goods.
As European Union trade mark registration No 149 161 leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, there is no need to further examine the other ground of the other earlier right, namely Article 8(5) EUTMR.
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 applicant is the losing party, he 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
Andrea VALISA | Birgit FILTENBORG | María Clara IBÁÑEZ FIORILLO |
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.