Fital | Decision 2740119
Date Published: Sep 28, 2017
OPPOSITION No B 2 740 119
Eckes-Granini Group GmbH, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (opponent), represented by Heinrich Prinz Reuss, director legal, Ludwig-Eckes-Platz 1, 55268 Nieder-Olm, Germany (employee representative)
a g a i n s t
SANTE A. Kowalski Sp.j., ul. Jagiellońska 55A, 03-301 Warszawa, Poland (applicant).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 740 119 is upheld for all the contested goods, namely:
Class 30: Teas.
Class 32: Preparations for making beverages.
2. European Union trade mark application No 15 290 224 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 290 224, namely against some of the goods in Classes 30 and 32. The opposition is based on Lithuanian trade mark registration No 67191. 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.
- The goods
The goods on which the opposition is based are the following:
Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages.
The contested goods are the following:
Class 30: Teas.
Class 32: 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 30
The contested teas in Class 30 are similar to other non-alcoholic beverages for which the earlier mark is registered in Class 32. The goods at issue target the same public in the sense that they aim to refresh consumers and quench their thirst. Teas and non-alcoholic beverages are also in competition with each other, as both offer alcohol-free refreshment for consumers. Furthermore, these goods are produced in many cases by the same companies and offered for sale through the same distribution channels.
Contested goods in Class 32
The contested preparations for making beverages in Class 32 are included in the opponent’s syrups and other preparations for making beverages in Class 32. Therefore, these goods are considered 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 or similar are directed at the public at large.
The degree of attention is considered average.
- The signs
VITAL | |
Earlier trade mark | Contested sign |
The relevant territory is Lithuania.
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 earlier mark is a word mark consisting of the word ‘VITAL’. Although this word may be perceived as a root of some words in Lithuanian in connection with ‘vitality’ (such as the vitality of a person in Lithuanian is ‘vitališkas’ [vitaliʃkas]), the use of this root is not very common, and it does not have any individual meaning in Lithuanian.
The word element ‘FITAL’ of the contested mark will be perceived by the Lithuanian-speaking public as a fanciful term without any meaning.
Therefore, the earlier sign, ‘VITAL’, is composed solely of a distinctive verbal element. The contested sign is composed of the distinctive verbal element ‘FITAL’ and less distinctive graphical elements of a purely decorative nature, namely a slight stylisation of the bold italic letters and a bold arched line underlining the word element.
Visually, the verbal elements of the signs coincide in four letters out of five, namely in the letters ‘ITAL’, which are in the same order in both signs. However, the verbal elements differ in their initial letters: ‘V’ in the earlier mark and ‘F’ in the contested sign.
The signs also differ in the less distinctive figurative elements in the contested mark, namely the slightly stylised bold letters and the bold arched line under the verbal element. The stylisation of the letters in the contested mark is not striking or unusual; it resembles some of the standard fonts available in text editing software. The single line under the word element ‘FITAL’ is a common way of giving emphasis to a word and will therefore be neglected in most cases.
Although the first parts of signs, including their initial letters, are generally the ones that primarily catch the consumer’s attention and, therefore, will be remembered more clearly than the rest of the signs, the fact that in the present case the rest of the signs, namely four letters of the five of their verbal elements, are identical will lead to a high degree of visual similarity between the marks.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ITAL’, present identically in both signs. The length (five letters, two syllables) and the rhythm of the verbal elements are identical. The pronunciation differs only in the sound of the initial letters, ‛V’ and ‘F’, of the marks, which are pronounced similarly, both being fricative consonants.
Therefore, the signs are aurally highly similar.
Conceptually, since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible, and 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
Some of the relevant goods are considered identical, and some of them are similar.
As follows from the nature of the goods and the target consumers, the degree of attention of the relevant public is average. The distinctiveness of the earlier mark is normal.
The signs are, overall, similar to a high degree. Both marks contain a distinctive word element and, even though the word element of the contested mark is slightly stylised, it is without doubt the word element in both marks that primarily catches consumers’ attention and will be remembered by them. Since there is only one letter that is different between the word elements of the marks under comparison (their initial letters ‘V’ and ‘F’), there is a high level of visual and phonetic similarity between the signs. In addition, as the signs do not refer to any meaning in the relevant territory, there are no clear conceptual differences between them either which would help consumers to differentiate between them.
Considering all the above, there is a likelihood of confusion on the part of the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s Lithuanian trade mark registration No 67191. It follows that the contested trade mark must be rejected for the contested goods.
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, it 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Martin EBERL | Alexandra APOSTOLAKIS | Denitza STOYANOVA-VALCHANOVA |
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.