COCA COLA MARIANI | Decision 2627530

Date Published: Oct 1, 2017

OPPOSITION No B 2 627 530

The Coca-Cola Company, One Coca-Cola Plaza, Atlanta, Georgia 30313, United States of America (opponent), represented by Hoyng Rokh Monegier Spain LLP, Calle Ruiz de Alarcón, 7-2º Dcha, 28014 Madrid, Spain (professional representative)

a g a i n s t

Christophe Mariani, Chemin Ranuchietto bp5286, 20167 Mezzavia, France (applicant).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 627 530 is upheld for all the contested goods.

2.        European Union trade mark application No 14 547 541 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 547 541. The opposition is based on European Union trade mark registration No 2 091 569. The opponent invoked Article 8(1)(b) and 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.

1. The goods

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

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; dietary supplements for animals; nutritional additives to foodstuffs for animals, for medical purposes; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical use; food for diabetics; food for infants; albuminous foodstuffs for medical purposes; starch for dietetic use; dietetic beverages adapted for medical purposes; vitamin drinks; calcium fortified candy; food supplements; anti-oxidant food supplements; albumin dietary supplements; alginate dietary supplements; enzyme dietary supplements; glucose dietary supplements; pollen dietary supplements; propolis dietary supplements; health food supplements made principally of minerals; health food supplements made principally of vitamins; dietary supplements for infants; protein dietary supplements; herbal dietary supplements for persons special dietary requirements; cereals prepared for use as invalids’ foods; dietary supplemental drinks; soy protein dietary supplements; protein supplements for animals; zinc supplement lozenges; health food supplements for persons with special dietary requirements; wheat dietary supplements; mineral dietary supplements for humans; nutritional supplements; dietary and nutritional supplements; probiotic supplements; vitamin supplements; powdered fruit-flavored dietary supplement drink mix; diabetic bread adapted for medical use; vitamin enriched bread for therapeutic purposes; bee pollen for use as a dietary food supplement; albuminous preparations for medical purposes; dietetic food preparations adapted for medical use; mixed vitamin preparations; vitamin B preparations; vitamin d preparations; lipotropic factor preparations; artificial sweeteners adapted for diabetics; dietetic substances adapted for medical use; food for medically restricted diets; bread products for diabetics; nutraceuticals for use as a dietary supplement; vitamin preparations in the nature of food supplements; vitamin A preparations; vitamin C preparations; vitamin preparations; dietetic preparations adapted for medical use; multi-vitamin preparations; preparations for use as additives to food for human consumption [medicated]; lysine preparations; infant formula; by-products of the processing of cereals for dietetic or medical purposes; dietetic substances for babies; meal replacement powders; nutritional supplement meal replacement bars for boosting energy; dietetic sugar substitutes for medical use; sugar substitutes for diabetics; dietetic sugar for medical use; mineral food supplements; asthmatic tea; artificial tea [for medicinal use]; vitamin tablets; vitamin drops; vitamins and vitamin preparations; prenatal vitamins; effervescent vitamin tablets; cocaine; coca alkaloid preparations for medical use; beverages for infants; medicinal drinks.

Class 32: Beer and brewery products; preparations for making beverages; coffee-flavored beer; malt beer; non-alcoholic beer; low alcohol beer; beer; lagers; flavored beers; black beer [toasted-malt beer]; beers enriched with minerals; wheat beer; non-alcoholic beer flavored beverages; beer-based beverages; beer-based cocktails; processed hops for use in making beer; imitation beer; kvass [non-alcoholic beverage]; shandy; porter; stout; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; essences for making non-alcoholic drinks, not in the nature of essential oils; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; non-alcoholic fruit extracts used in the preparation of beverages; hop extracts for use in the preparation of beverages; extracts of hops for making beer; extracts of unfermented must; extracts for making beverages; unfermented preserved must; beer wort; orgeat; grape must, unfermented; malt wort; pastilles for effervescing beverages; powders for effervescing beverages; powders used in the preparation of fruit-based beverages; powders used in the preparation of soft drinks; preparations for making liqueurs; malt syrup for beverages; lime juice cordial; squashes [non-alcoholic beverages]; cordials; syrups for beverages; syrups for making fruit-flavored drinks; syrups for making non-alcoholic beverages; syrups for making beverages; syrups for making soft drinks; syrups for making whey-based beverages; syrups for lemonade; syrups for making flavoured mineral waters; soda water; cola drinks; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; beverages containing vitamins; waters [beverages]; isotonic beverages; sherbets [beverages]; mineral water [beverages]; sports drinks; non-alcoholic beverages; vegetable juices [beverages]; fruit drinks; iced fruit beverages; sorbets in the nature of beverages; guarana drinks; non-alcoholic fruit juice beverages; vegetable drinks; aerated juices; fruit flavored soft drinks; non-alcoholic beverages with tea flavor; grape juice beverages; non-alcoholic honey-based beverages; low-calorie soft drinks; red ginseng juice beverages; aloe juice beverages; smoothies; fruit juice beverages; non-alcoholic grape juice beverages; non-alcoholic vegetable juice drinks; rice-based beverages, other than milk substitutes; cola; colas [soft drinks].

Class 33: Alcoholic energy drinks; distilled beverages; alcoholic beverages of fruit; beverages containing wine [spritzers]; alcoholic beverages containing fruit; alcoholic beverages (except beer); liquor-based aperitifs; wine-based aperitifs; alcoholic aperitif bitters; wine coolers [drinks]; pre-mixed alcoholic beverages, other than beer-based; alcoholic coffee-based beverage; alcoholic tea-based beverage; rum-based beverages; cocktails; alcoholic cocktails containing milk; prepared alcoholic cocktails; alcoholic cocktails in the form of chilled gelatins; alcoholic fruit cocktail drinks; prepared wine cocktails; fruit extracts, alcoholic; Japanese sweet rice-based mixed liquor (shiro-zake); alcoholic cocktail mixes; alcopops; rum punch; wine punch; alcoholic punches; cider; sweet cider; dry cider; spirits and liquors; absinthe; Japanese liquor flavored with pine needle extracts; Japanese liquor flavored with Japanese plum extracts; Japanese liquor containing herb extracts; peppermint liqueurs; anise [liqueur]; arrack [arak]; blended whisky; bourbon whiskey; cooking brandy; cachaca; calvados; curacao; digesters [liqueurs and spirits]; brandy; extracts of spiritous liquors; grappa; gin; kirsch; alcoholic egg nog; Chinese white liquor (baiganr); Chinese brewed liquor (laojiou); Chinese mixed liquor (wujiapie-jiou); blackcurrant liqueur; rum infused with vitamins; sugar cane juice rum; schnapps; shochu (spirits); spirits [beverages]; sorghum-based Chinese spirits; Chinese spirit of sorghum (gaolian-jiou); Korean distilled spirits (soju); fermented spirit; distilled spirits of rice (awamori); vodka; whisky; malt whisky; scotch whisky; wine; sparkling wines; fortified wines; aperitifs with a distilled alcoholic liquor base; wine-based drinks; piquette; sangria; white wine; mulled wines; acanthopanax wine (ogapiju); cooking wine; strawberry wine; black raspberry wine (bokbunjaju); fruit wine; sparkling fruit wine; grape wine; sparkling grape wine; Korean traditional rice wine (makgeoli); red wine; yellow rice wine; low-alcoholic wine; Japanese sweet grape wine containing extracts of ginseng and cinchona bark; table wines; still wine; natural sparkling wines; rose wines; sweet wines; sparkling white wines; sparkling red wines; amontillado; vermouth; sherry; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; alcoholic carbonated beverages, except beer; low alcoholic drinks; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake.

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

Food for infants; dietetic substances adapted for medical use and dietetic preparations adapted for medical use are identically contained in both lists of goods (including synonyms).

The contested dietary supplements and dietetic preparations; dietary supplements for animals; nutritional additives to foodstuffs for animals, for medical purposes; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical use; food for diabetics; albuminous foodstuffs for medical purposes; starch for dietetic use; dietetic beverages adapted for medical purposes; vitamin drinks; calcium fortified candy; food supplements; anti-oxidant food supplements; albumin dietary supplements; alginate dietary supplements; enzyme dietary supplements; glucose dietary supplements; pollen dietary supplements; propolis dietary supplements; health food supplements made principally of minerals; health food supplements made principally of vitamins; dietary supplements for infants; protein dietary supplements; herbal dietary supplements for persons special dietary requirements; cereals prepared for use as invalids’ foods; dietary supplemental drinks; soy protein dietary supplements; protein supplements for animals; zinc supplement lozenges; health food supplements for persons with special dietary requirements; wheat dietary supplements; mineral dietary supplements for humans; nutritional supplements; dietary and nutritional supplements; probiotic supplements; vitamin supplements; powdered fruit-flavored dietary supplement drink mix; diabetic bread adapted for medical use; vitamin enriched bread for therapeutic purposes; bee pollen for use as a dietary food supplement; albuminous preparations for medical purposes; dietetic food preparations adapted for medical use; mixed vitamin preparations; vitamin B preparations; vitamin D preparations; lipotropic factor preparations; artificial sweeteners adapted for diabetics; food for medically restricted diets; bread products for diabetics; nutraceuticals for use as a dietary supplement; vitamin preparations in the nature of food supplements; vitamin A preparations; vitamin C preparations; vitamin preparations; multi-vitamin preparations; preparations for use as additives to food for human consumption [medicated]; lysine preparations; by-products of the processing of cereals for dietetic or medical purposes; dietetic substances for babies; meal replacement powders; nutritional supplement meal replacement bars for boosting energy; dietetic sugar substitutes for medical use; sugar substitutes for diabetics; dietetic sugar for medical use; mineral food supplements; asthmatic tea; artificial tea [for medicinal use]; vitamin tablets; vitamin drops; vitamins and vitamin preparations; prenatal vitamins; effervescent vitamin tablets; medicinal drinks are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested infant formula and beverages for infants are included in the broad category of the opponent’s food for babies. Therefore, they are identical.

The contested cocaine and coca alkaloid preparations for medical use are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

Contested goods in Class 32

Beer (listed twice); preparations for making beverages; syrups for beverages; syrups for making beverages and mineral water [beverages] are identically contained in both lists of goods (including synonyms).

The contested brewery products; coffee-flavored beer; malt beer; non-alcoholic beer; low alcohol beer; beer; lagers; flavored beers; black beer [toasted-malt beer]; beers enriched with minerals; wheat beer; non-alcoholic beer flavored beverages; beer-based beverages; beer-based cocktails; processed hops for use in making beer; imitation beer; kvass [non-alcoholic beverage]; shandy; porter; stout; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; essences for making non-alcoholic drinks, not in the nature of essential oils; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; non-alcoholic fruit extracts used in the preparation of beverages; hop extracts for use in the preparation of beverages; extracts of hops for making beer; extracts of unfermented must; extracts for making beverages; unfermented preserved must; beer wort; orgeat; grape must, unfermented; malt wort; pastilles for effervescing beverages; powders for effervescing beverages; powders used in the preparation of fruit-based beverages; powders used in the preparation of soft drinks; preparations for making liqueurs; malt syrup for beverages; lime juice cordial; squashes [non-alcoholic beverages]; cordials; syrups for making fruit-flavored drinks; syrups for making non-alcoholic beverages; syrups for making soft drinks; syrups for making whey-based beverages; syrups for lemonade; syrups for making flavoured mineral waters; soda water; cola drinks; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; beverages containing vitamins; waters [beverages]; isotonic beverages; sherbets [beverages]; sports drinks; non-alcoholic beverages; vegetable juices [beverages]; fruit drinks; iced fruit beverages; sorbets in the nature of beverages; guarana drinks; non-alcoholic fruit juice beverages; vegetable drinks; aerated juices; fruit flavored soft drinks; non-alcoholic beverages with tea flavor; grape juice beverages; non-alcoholic honey-based beverages; low-calorie soft drinks; red ginseng juice beverages; aloe juice beverages; smoothies; fruit juice beverages; non-alcoholic grape juice beverages; non-alcoholic vegetable juice drinks; rice-based beverages, other than milk substitutes; cola; colas [soft drinks] are included in the broad categories of, or overlap with, the opponent’s beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Therefore, they are identical.

Contested goods in Class 33

Alcoholic beverages (except beer) are identically contained in both lists of goods.

The contested alcoholic energy drinks; distilled beverages; alcoholic beverages of fruit; beverages containing wine [spritzers]; alcoholic beverages containing fruit; liquor-based aperitifs; wine-based aperitifs; alcoholic aperitif bitters; wine coolers [drinks]; pre-mixed alcoholic beverages, other than beer-based; alcoholic coffee-based beverage; alcoholic tea-based beverage; rum-based beverages; cocktails; alcoholic cocktails containing milk; prepared alcoholic cocktails; alcoholic cocktails in the form of chilled gelatins; alcoholic fruit cocktail drinks; prepared wine cocktails; Japanese sweet rice-based mixed liquor (shiro-zake); alcoholic cocktail mixes; alcopops; rum punch; wine punch; alcoholic punches; cider; sweet cider; dry cider; spirits and liquors; absinthe; Japanese liquor flavored with pine needle extracts; Japanese liquor flavored with Japanese plum extracts; Japanese liquor containing herb extracts; peppermint liqueurs; anise [liqueur]; arrack [arak]; blended whisky; bourbon whiskey; cooking brandy; cachaca; calvados; curacao; digesters [liqueurs and spirits]; brandy; grappa; gin; kirsch; alcoholic egg nog; Chinese white liquor (baiganr); Chinese brewed liquor (laojiou); Chinese mixed liquor (wujiapie-jiou); blackcurrant liqueur; rum infused with vitamins; sugar cane juice rum; schnapps; shochu (spirits); spirits [beverages]; sorghum-based Chinese spirits; Chinese spirit of sorghum (gaolian-jiou); Korean distilled spirits (soju); fermented spirit; distilled spirits of rice (awamori); vodka; whisky; malt whisky; scotch whisky; wine; sparkling wines; fortified wines; aperitifs with a distilled alcoholic liquor base; wine-based drinks; piquette; sangria; white wine; mulled wines; acanthopanax wine (ogapiju); cooking wine; strawberry wine; black raspberry wine (bokbunjaju); fruit wine; sparkling fruit wine; grape wine; sparkling grape wine; Korean traditional rice wine (makgeoli); red wine; yellow rice wine; low-alcoholic wine; Japanese sweet grape wine containing extracts of ginseng and cinchona bark; table wines; still wine; natural sparkling wines; rose wines; sweet wines; sparkling white wines; sparkling red wines; amontillado; vermouth; sherry; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; alcoholic carbonated beverages, except beer; low alcoholic drinks; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake are included in the broad category of, or overlap with, the opponent’s alcoholic beverages (except beer). Therefore, they are identical.

The contested fruit extracts, alcoholic and extracts of spiritous liquors are goods for making the opponent’s alcoholic beverages (except beers). Although the target public for these contested goods includes business customers, it is very likely that these goods will also be used by the general public for preparing alcoholic beverages (except beers) at home or as flavourings/cooking ingredients. The goods are distributed through the same sales channels and may originate from the same producers. Therefore, they are similar to a low degree.

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 varying degrees are directed at the public at large.

The degree of attention is average to high, the latter for cocaine; coca alkaloid preparations for medical use in Class 5 and Chinese drinks in Class 33.

3. The signs

Coca-Cola	COCA COLA MARIANI
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 element ‘COCA’ of both marks will be understood by the relevant public as ‘a plant which contains cocaine’ (information extracted from Collins Dictionary on 24/03/2017 at https://www.collinsdictionary.com/dictionary/english/coca). Since some of the contested goods are cocaine, coca alkaloid preparations for medical use and non-alcoholic beverages that may contain extracts of coca, the distinctive character of this element is therefore inherently weak. This element has a normal distinctive character in relation to the rest of the goods in Class 5 and alcoholic beverages in Class 33.

The element ‘COLA’ of both marks will be understood as ‘a sweet brown non-alcoholic fizzy drink’ (information extracted from Collins Dictionary on 24/03/2017 at https://www.collinsdictionary.com/dictionary/english/cola). Taking into account the fact that some of the relevant goods are alcoholic and non-alcoholic beverages, this element is considered non-distinctive for some of these goods, namely non-alcoholic beverages.

The element ‘MARIANI’ of the contested mark will be perceived as a family name.

Neither of the marks has any elements that could be considered clearly more dominant than other elements, considering that both signs are word marks.

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.

Visually, the signs coincide in the words ‘COCA COLA’. However, they differ in the word ‘MARIANI’ of the contested mark and the hyphen that joins the elements of the earlier sign.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /CO/CA/CO/LA/, present identically in both signs. The pronunciation differs in the sound of the word /MARIANI/ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, the signs are conceptually similar to 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with some of the goods for which it is registered, namely non-alcoholic drinks. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Exhibit 1: reports from the last 11 years on the ‘World’s Best Brands’, prepared by the consultant Interbrand, listing the opponent’s trade mark as one of the most valuable marks year after year.

• Exhibit 2: ranking of the ‘World’s Most Valuable Brands’ by the magazine Forbes (www.forbes.com), in which ‘COCA-COLA’ is ranked in fourth position in 2015.

• Exhibit 3: news featured on the websites www.timrubber.com, www.emarketing.fr and www.usinenouvelle.com referring to the reports mentioned in Exhibit 1 above and stating that in 2011 ‘COCA-COLA’ appeared for the eighth consecutive year as the most valued mark.

• Exhibit 4: an interview in the digital edition of the Spanish newspaper El Mundo, dated 22/01/2009, with Gonzalo Brujó, Chief Executive of the consultant Interbrand. In the interview, when asked the question ‘Which is the most valued mark in the world?’, Mr Brujó mentioned the opponent’s trade mark, with an approximate value of EUR 66 667 million.

• Exhibit 5: articles in the digital editions of the newspapers El País, Cinco Días and El Mundo and the website www.marketingdirecto.com, dated 2006-2014, which state that the opponent’s trade mark ‘COCA-COLA’ is recognised as the most valued sign worldwide.

• Exhibit 6: articles in the digital editions of the newspapers The Guardian, The Daily Mail and MKWeb, dated 2013 and 2014, reporting on the fame of the opponent’s mark.

• Exhibit 7: an article from the website www.cma-cgm.com, which reads as follows: ‘As the world’s best-known brand, “Coca-Cola” is the second most widely-understood word, after “OK” across the five continents. Coca-Cola is the world’s no. 1 producer of non-alcoholic beverages and one of the international economy’s main giants’.

• Exhibit 8: an article from the website www.bbc.com, dated 11/09/2012, stating that ‘These days Coca-Cola Is regularly ranked as one of the top, if not the top, global brands’.

• Exhibit 9: the decision of 19/12/2007, B 1 009 671, recognising the reputation of the  trade mark in relation to soft drinks.

• Exhibit 10: the decision of 10/03/2011, B 1 576 357, recognising the reputation of the ‘COCA-COLA’ trade mark in relation to soft drinks.

• Exhibit 11: the decision of 10/01/2012, B 1 808 529, stating the following: ‘Taking into account that in most of the documents submitted with this brief, the COCA-COLA mark is recognized as the most well-known mark in the world, it cannot be denied that it enjoys an indisputable renown which implies that it deserves a special protection’.

• Exhibit 12: the decision of 17/04/2012, B 1 931 141, confirmed by the decision of the Board of Appeal of 06/05/2013, which states the following: ‘There can be no dispute as to the fame and reputation of the earlier mark “COCA-COLA” for soft drinks’.

• Exhibit 13: the decision of 25/06/2015, B 2 405 374, stating the following: ‘It is clear from the evidence that the trade mark COCA-COLA has been subject to long standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by independent and diverse sources ... all unequivocally show that the mark COCA-COLA enjoys a high degree of recognition among the relevant public in connection with soft drinks in class 32’.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for non-alcoholic drinks in Class 32.

This high degree of distinctive character more than offsets the weakness of the components of the ‘COCA-COLA’ trade mark taken individually and having a meaning in relation to non-alcoholic beverages. It is therefore concluded that the earlier trade mark has a high degree of distinctive character in relation to non-alcoholic beverages, and a normal degree of distinctive character for other goods in Classes 5 and 33.

5. Global assessment, other arguments and conclusion

The goods are identical or similar to varying degrees, and are directed at the public at large.

The Opposition Division has concluded that there are visual, aural and conceptual similarities between the signs under comparison to the extent that they both contain the verbal elements ‘COCA COLA’, which are the only verbal elements of the earlier mark and the first two words of the contested mark. They differ in the word ‘MARIANI’ of the contested mark and the hyphen that joins the elements of the earlier sign.

The earlier mark has enhanced distinctiveness for some of the relevant goods, namely non-alcoholic drinks in Class 32, and normal distinctiveness for the rest of the goods.

As mentioned above, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. Therefore, the identity between the verbal elements at the beginnings of the marks at issue, ‘COCA COLA’, should be taken into account when assessing the likelihood of confusion between the marks.

In addition, account should 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). The fact that the verbal elements of the earlier mark are entirely included in the contested sign may lead the public to believe that the goods at issue derive, at the very least, from companies that are economically linked.

It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

Moreover, the Court has set out the essential principle that 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 the 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).

In the present case, the identity or similarity between the goods offsets any lesser degree of similarity between the signs, even for the public with a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 091 569. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, 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

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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.