EQUINOX KOMBUCHA | Decision 2646449

Date Published: Sep 24, 2017

OPPOSITION No B 2 646 449

Staatlich Bad Meinberger Mineralbrunnen GmbH & Co. KG, Am Waldstadion 1, 32805 Horn-Bad Meinberg, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Flower of Life Ltd, Unit 2a, Orchard Business Park, Scout Road, Hebden Bridge, West Yorkshire HX7 5HZ, United Kingdom (applicant), represented by Ward Trade Marks Limited, St John's Innovation Centre, Cowley Road, Cambridge CB4 0WS, United Kingdom (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 449 is partially upheld, namely for the following contested goods and services:

Class 30:        Kombucha; tea for infusions; green tea; beverages based on tea; beverages made of tea; teas; chai tea; fruit teas; fruit-flavoured tea (other than medicinal); flavourings of tea; herbal teas (infusions); herb teas, other than for medicinal purposes; tea essences; tea extracts; flowers or leaves for use as tea substitutes.

Class 32:        Non-alcoholic beverages; non-alcoholic beverages flavoured with tea; flavoured carbonated beverages; fruit-based soft drinks flavored with tea; waters; beverages containing vitamins; energy drinks; syrups for beverages; essences for making beverages; concentrates used in the preparation of soft drinks; cordials; squashes (non-alcoholic beverages).

Class 35:        Retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages.

2.        European Union trade mark application No 14 884 308 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 884 308, namely against all the goods and services in Classes 30, 32 and 35. The opposition is based on Germany trade mark registration No 306 24 687. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/01/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 07/01/2011 to 06/01/2016 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 32:        Beers, mineral waters and aerated waters and other soft drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages (except beers).

Class 43:        Providing food and drink, temporary accommodation for guests.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 28/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/12/2016 to submit evidence of use of the earlier trade mark. On 22/12/2016 and 28/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Document 1: agreement between the opponent and the company Getränke Krietemeyer GmbH (in German, with partial translation into English), indicating that, as from May 2009, the opponent will bottle mineral water with the trade mark ‘Equinox’ for the other party.

• Document 2: a table with sale figures from 2009 to 2014 of ‘EQUINOX’ drinks, sizes 0.25 and 0.75 l.

• Document 3: 9 invoices to the abovementioned client (Getränke Krietemeyer GmbH), dated 2011-2015. The invoices show the sale of ‘EQUINOX Classic’ 0.25 or 0.75 l.

• Document 4: 2 invoices showing sales to 2 clients of ‘Equinox Classic Mineralwasser 0.25 Mineralwasser’, dated March and July 2015.

• Document 5: 2 pictures of mineral water bottles bearing the figurative mark

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The agreement and the invoices together with the sale figures show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

The evidence submitted as Documents 3 and 4 and most of the evidence submitted as Document 2 is dated within the relevant period.

According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent or before the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period (from 07/01/2011 to 06/01/2016) corresponds to part of the table with sales figures, dated 2009 and 2010 (document 2), and the agreement (document 1) which was signed 18/03/2009 before the relevant period but was valid until 18/03/2015 including most of the relevant period. However, these merely confirm the use of the opponent’s mark within the relevant period, since the use that they demonstrate is quite close in time to the relevant period and shows an earlier use when considered in connection with the other sale figures and the invoices, whose dates match the table with sale figures.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It has been demonstrated that ‘EQUINOX’ mineral waters were sold for the period between 2011-2015 (invoices submitted as Documents 3 and 4), which were confirmed by the table with sale figures (Document 2).

Although some invoices (Documents 3 and 4), in particular the one dated 24/03/2015, indicate a low commercial volume and frequency of use, when assessed in connection with the other evidence submitted they provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark, and it can be seen that that the owner has tried to acquire a commercial position in the relevant market by using its mark for ‘EQUINOX’ mineral waters within the relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in Germany.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence submitted as Documents 3 and 4 shows that the earlier sign was used in such a way as to establish a clear link between the goods and the person responsible for their marketing.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

The evidence submitted by the opponent shows that the mark ‘EQUINOX’ has been used as a trade mark for mineral waters in the form in which it is registered, namely as a word mark in the Documents 1, 2, 3 and 4 and as the figurative marks  and  (Document 5). However, the figurative marks contains additional figurative elements and a different word stylisation, that are of a rather decorative nature, and one of the marks contains the additional and much smaller element ‘Classic’ that refers to something that serves as a standard or model of its kind, something of the highest class and something that is characterised by ageless, timeless or eternal quality. In German its equivalents are ‘Klassisch’ (adjective) and ‘Klassiker’ (noun). This element is considered as a weak element in relation to the goods at issue.

The Opposition Division considers that differences in these elements do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

When looking at the evidence the opponent has successfully proven use for mineral waters. Indeed, the agreement, the table with sale figures, the invoices and the pictures all refer to these goods. Moreover, in the observations the opponent acknowledges the use of the earlier trademark for mineral waters.

However, the evidence does not show genuine use of the trade mark for the remaining goods and services covered by the earlier trade mark namely beers, aerated waters and other soft drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages in Class 32, alcoholic beverages (except beers) in Class 33 and providing food and drink, temporary accommodation for guests in Class 43.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence only shows genuine use of the trade mark for the following goods:

Class 32:        Mineral waters.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and services

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

Class 32:        Mineral waters.

The contested goods and services are the following:

Class 30:        Kombucha; yeast and leavening agents; yeast extracts; yeast powder; ginger (powdered spice); tea for infusions; green tea; beverages based on tea; beverages made of tea; teas; chai tea; fruit teas; fruit-flavoured tea (other than medicinal); flavourings of tea; herbal teas (infusions); herb teas, other than for medicinal purposes; tea essences; tea extracts; flowers or leaves for use as tea substitutes; flavouring syrups.

Class 32:        Non-alcoholic beverages; non-alcoholic beverages flavoured with tea; flavoured carbonated beverages; fruit-based soft drinks flavored with tea; waters; beverages containing vitamins; energy drinks; syrups for beverages; essences for making beverages; concentrates used in the preparation of soft drinks; cordials; squashes (non-alcoholic beverages).

Class 35:        Retail services in relation to non-alcoholic beverages; retail services in relation to teas; retail services in relation to preparations for making beverages; retail services in relation to dietetic preparations; retail services connected with the sale of clothing and clothing accessories; retail services in relation to headgear; retail services in relation to footwear; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to teas; wholesale services in relation to preparations for making beverages; wholesale services in relation to dietetic preparations; wholesale services connected with the sale of clothing and clothing accessories; wholesale services in relation to headgear; wholesale services in relation to footwear.

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 30

The contested kombucha; tea for infusions; green tea; beverages based on tea; beverages made of tea; teas; chai tea; fruit teas; fruit-flavoured tea (other than medicinal); flavourings of tea; herbal teas (infusions); herb teas, other than for medicinal purposes; tea essences; tea extracts; flowers or leaves for use as tea substitutes are similar to the opponent's mineral waters as these are non-alcoholic beverages. The goods may coincide in the same producer, end user and distribution channels. Moreover, they are in competition.  

The remaining contested yeast and leavening agents; yeast extracts; yeast powder; ginger (powdered spice); flavouring syrups are various products belonging to the food sector, including syrups for food such as topping syrup, chocolate syrup, pancake syrup, etc., and have no relevant points in common with the opponent goods. The goods are sold in different sections in supermarkets and normally they do not share the same commercial origin. Furthermore, they are neither in competition nor are they complementary. Therefore, these goods are dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages; waters include, as broader categories the opponent’s mineral waters. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested non-alcoholic beverages flavoured with tea; flavoured carbonated beverages; beverages containing vitamins overlap with the opponent’s mineral waters. Therefore, they are identical.

The contested fruit-based soft drinks flavored with tea; energy drinks; syrups for beverages; essences for making beverages; concentrates used in the preparation of soft drinks; cordials; squashes (non-alcoholic beverages) are similar to the opponent’s mineral waters because they have the same nature (both are non-alcoholic drinks), purpose and method of use, they are in competition and they can have the same distribution channels and relevant consumers.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Similarity between retail and whole services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail and whole services and the specific goods covered by the other mark are identical.

The contested goods non-alcoholic beverages are identical to mineral waters of the earlier mark, as explained above.

Therefore, the contested retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages are similar to a low degree to the opponent’s mineral waters in Class 32.

Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as the retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that, in this case, the relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02, Praktiker, EU:C:2005:425). The contested retail services in relation to teas; retail services in relation to preparations for making beverages; retail services in relation to dietetic preparations; retail services connected with the sale of clothing and clothing accessories; retail services in relation to headgear; retail services in relation to footwear; wholesale services in relation to teas; wholesale services in relation to preparations for making beverages; wholesale services in relation to dietetic preparations; wholesale services connected with the sale of clothing and clothing accessories; wholesale services in relation to headgear; wholesale services in relation to footwear and the opponent’s mineral waters in Class 32 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 and services found to be identical or similar are directed at the public at large. The degree of attention is average, as the goods and services in question are fairly inexpensive and purchased or provided on a daily basis.

3. The signs

EQUINOX	EQUINOX KOMBUCHA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 that the signs have in common, ‘EQUINOX’, has no meaning for the relevant German public. Therefore, it is distinctive in relation to the goods and services in question.

The word ‘KOMBUCHA’ of the contested sign will be perceived as a fermented tea drink. Bearing in mind that the relevant goods and services are non-alcoholic beverages and retail services in relation to non-alcoholic beverages, this element is weak for all the relevant goods and services in Classes 30, 32 and 35.

Visually and aurally, the signs coincide in the letters and the sequence of sounds of the distinctive word ‘EQUINOX’ which constitutes the entire earlier mark and is the first element of the contested sign. However, they differ in the additional less distinctive word contained in the contested sign, ‘KOMBUCHA’. Furthermore, the word that the signs have in common, ‘EQUINOX’, is placed at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader. Therefore, and bearing in mind the impact of the differentiating element as detailed above, the marks are visually and aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘KOMBUCHA’ of contested sign, as explained above, 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 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

As concluded above, the contested goods and services are partly identical or similar (to varying degrees) and partly dissimilar to the opponent’s goods.

The signs in conflict are visually and aurally similar to an above average degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since the differences are confined to a weak word element placed in a secondary position, which has a limited impact on the perception of the signs, as explained above. The earlier mark is considered to enjoy a normal degree of distinctiveness.

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. Furthermore, contrary to the applicant’s observations, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by adding verbal elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

Moreover, 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.

Consequently, the relevant public, when encountering the signs in relation to the goods and services at issue, is likely to confuse the trade marks or make a connection between the conflicting signs and assume that the goods and services (including 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, 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 German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn BURTCHAELL

Carlos MATEO PÉREZ

Judit NÉMETH

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.