CODE GREEN | Decision 2706789

Date Published: Sep 24, 2017

OPPOSITION No B 2 706 789

La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Investment Hub Gayrimenkul Yatırım Danışmanlık İnşaat Sanayi ve Ticaret Limited Şirketi, Küçükçamlıca Cumhuriyet Mah. Libadiye Cad. No:37 İç Kapı No:3 Üsküdar, Istanbul, Turkey (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto 41, 20052 Monza (MI), Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 789 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 091 309 (word mark ‘CODE GREEN’), namely against all the goods in Class 32. The opposition is based on Spanish trade mark registration No 1 674 949 (word mark ‘AMBAR-GREEN’). 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:        Beers.

The contested goods are the following:

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other 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 32

Beers are identically contained in both lists of goods.

The contested mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices are highly similar to the opponent’s beers. This is because the contested goods, all being non-alcoholic beverages, have the same purpose, namely to quench one’s thirst, and the same method of use as the opponent’s goods. They often have the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested syrups and other preparations for making beverages and the opponent’s beers are similar. This is because they have similar purposes; they have the same end users and distribution channels. Furthermore, they can be in competition.

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 are directed at the public at large.

The degree of attention is considered average.

3. The signs

AMBAR-GREEN	CODE GREEN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 coinciding element ‘GREEN’ will be associated with certain characteristics of the goods. This is because the relevant goods are beers, non-alcoholic beverages and preparations for making beverages, and in the current language of the food market and marketing in general the word ‘green’ relates to organic, ecological products. This is well known throughout Europe, including Spain, where the word is used for this purpose more frequently than the local equivalent ‘verde’ (21/05/2015, T-197/14, GREEN’S, EU:T:2015:313, § 42-45). Therefore, this element is non-distinctive for all the relevant goods.

The element ‘AMBAR’ of the earlier sign will be understood by the relevant public as referring to ‘amber’, that is, ‘fossilized resin of yellow colour; slightly dark, dull and semi-transparent, very lightweight, hard and brittle, flammable and fragrant’ (information extracted from Dictionary of the Real Academia Española on 25/08/2017). Taking into account that the relevant goods are beers and that in Spanish the word ‘AMBAR’ is not widely used to describe beer, it is deemed that ‘ambar’ will not be seen as a reference to the colour of beer (21/05/2015, T-197/14, GREEN’S, EU:T:2015:313, § 54-55). Therefore, this element is deemed to be distinctive.

The element ‘CODE’ of the contested sign, contrary to the opponent’s argument, has no meaning for the relevant public and is, therefore, distinctive.

Contrary to the opponent’s argument, the marks, being word marks, have no elements that could be considered more dominant than other elements.

Visually, the signs coincide in the non-distinctive verbal element ‘GREEN’. The other, differing, elements, ‘CODE’ and ‘AMBAR-’, are distinctive and positioned at the beginning of the contested and earlier signs, respectively; therefore, their impact on the consumer is greater.

Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in one syllable, ‛GREEN’, present identically in both signs. The pronunciation differs in the syllables ‛AM-BAR’ of the earlier sign, which have no counterparts in the contested mark, and in the syllables ‘CO-DE’ of the contested mark, which have no counterparts in the earlier mark. The coincidence is limited to the last part of both signs, a non-distinctive element. The differences concern distinctive elements that will be pronounced before the coinciding element.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding word ‘GREEN’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the goods. The attention of the relevant public will be attracted by the additional distinctive verbal elements, namely ‘AMBAR’ and ‘CODE’. Although the public in the relevant territory will perceive the meaning of the element ‘AMBAR’ of the earlier mark, as explained above, the element ‘CODE’ of the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

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 mark ‘AMBAR’ is ‘well-known’ within the relevant territory. When assessing whether the earlier mark has acquired enhanced distinctiveness, the whole mark as registered must be taken into account. The opponent, however, did not claim that the earlier mark as such, namely ‘AMBAR-GREEN’, would be particularly distinctive by virtue of intensive use or reputation. Even if the Opposition Division considered the claim as such, the opponent did not submit any evidence in support thereof.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (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).

In the present case, the goods are partly identical and partly similar to various degrees, and the signs are visually and aurally similar to a very low degree, and conceptually not similar.

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).

Although the signs have been found similar in two aspects, the differences overall are sufficient to exclude any likelihood of confusion between the marks. This is because the visual and aural similarities are of a very low degree, the signs are conceptually not similar, and the differing elements, ‘AMBAR-’ and ‘CODE’, are clearly perceptible and distinctive. The only coinciding element is non-distinctive.

Account is 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. In the present case, the differing elements are at the beginning of each mark, thus further diminishing the similarity between the signs.

The opponent claims that the element ‘AMBAR’ of the earlier mark is its house mark and is followed by the element ‘GREEN’ to designate a sub-brand, and provides 10 printouts from its website as evidence to support its argument. The opponent further claims that, for the above reason, the element ‘AMBAR’ would be associated with the producer and the element ‘GREEN’ would be perceived as referring directly to the goods themselves.

The Opposition Division finds that the element ‘AMBAR’ might be perceived as a house mark by the relevant public. This would mean that the consumers, taking into account that the element ‘GREEN’ is descriptive for the relevant goods, would perceive the mark as referring to an ecological line of ‘AMBAR’ products. Contrary to the opponent’s arguments, it does not mean that ‘GREEN’ would be the prime element enabling consumers to identify the commercial origin of goods marketed under the sign ‘AMBAR-GREEN’.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decisions cited by the opponent are the following: No B 341 216 of the Opposition Division regarding contested mark No 1 500 321 (figurative mark: ) and earlier Spanish trade mark No 1 687 460 (word mark: ‘WILLIAMS’); No B 1 362 591 of the Second Board of Appeal regarding contested mark No 5 997 044 (figurative mark: ) and earlier European Union trade mark No 3 788 361 (figurative mark: ) and earlier Spanish trade mark No 2 223 906 (figurative mark: ); No B 1 467 267 of the Opposition Division regarding contested mark No 7 229 602 (word mark: ‘CELLULIGHT’) and earlier European Union trade mark No 6 499 511 (word mark: ‘ELMIPLANT CELLULIGHT’); and No B 1 153 701 of the Opposition Division regarding contested mark No 5 181 367 (figurative mark: ) and earlier German trade marks No 30 213 291 (word mark: ‘Ferrero Garden’) and No 30 605 496 (word mark: ‘Ferrero’).

These decisions are, however, not relevant to the present proceedings. This is because several differing aspects substantially affected the analysis of the signs in these decisions, such as the presence of dominant elements or other visual aspects considered in relation to the figurative elements of the marks. Furthermore, the coinciding elements in all the abovementioned cases were found to be distinctive. In the present case, however, the coinciding element is non-distinctive, and as such it cannot play an independent distinctive role as a sub-brand.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHOVA

Martin EBERL

Sigrid DICKMANNS

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.