Kissa | Decision 2515222 - FONTI DI POSINA S.P.A. v. Yamato Tea GmbH

Date Published: Oct 1, 2017

OPPOSITION No B 2 515 222

Fonti di Posina S.p.A., Località Montagna, 2, 36010 Posina (Vicenza), Italy (opponent), represented by Studio Tecnico Ing. Pietro Bettello, Via Col d'Echele, 25, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Yamato Tea GmbH, Dufourstrasse 101, 8008 Zürich, Switzerland (applicant), represented by Fechner Rechtsanwälte PartmbB, Poststraße 37, 20354 Hamburg, Germany (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 515 222 is upheld for all the contested goods, namely 

Class 30:        Coffee, tea, cocoa and substitutes therefor, in particular non-alcoholic tea-based, cocoa-based and cereal-based beverages, soya milk, beverages based on tea.

Class 32:        Soya-based beverages, other than milk substitutes.

2.        European Union trade mark application No 13 347 398 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 347 398, namely against some of the goods in Class 30 and all the goods in Class 32. The opposition is based on, inter alia, Italian trade mark registration No 1 591 994. The opponent invoked Article 8(1)(b) EUTMR.

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 Italian trade mark registration No 1 591 994.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 29/04/2015, within the time limit to present the facts, evidence and arguments in support of the opposition, the opponent filed a renewal certificate and a copy of the trade mark application (‘declaration of protection’) for the earlier Italian trade mark No 1 591 994, both accompanied by an English translation.

The applicant repeatedly argues that these documents are insufficient to substantiate the earlier trade mark because the renewal certificate does not contain the list of goods and the ‘declaration of protection’ is merely a copy of the trade mark application signed by the representative which does not originate from an official database. Furthermore, the numbers and dates mentioned in those documents do not match with the numbers and dates mentioned in the opposition notice.

The opponent repeatedly responds that the renewal certificate proves the registration and renewal of the trade mark and that the ‘declaration of protection’ contains the officially stamped application number and an official stamp of the Chamber of Commerce in Vicenza where the mark was filed. This proves, according to the opponent, that the ‘declaration of protection’ is a copy of an official document. The opponent further explains that these documents follow the practice of the Italian Trade Mark Office whereby upon renewal, each trade mark obtains a new registration number.

The Opposition Division considers that the evidence submitted by the opponent is sufficient to substantiate the earlier Italian trade mark No 1 591 994. The ‘declaration of protection’ is indeed a copy of the official trade mark application where the application number (VI2004C 000371) and the application date (21/06/2004) were stamped by the Italian authorities. The document also contains a revenue stamp and two official stamps of the Chamber of Commerce in Vicenza which is the authority with which the application was filed. The ‘declaration of protection’ contains all the necessary information concerning the trade mark, with the obvious exception of the registration date. The renewal certificate proves that the trade mark with the application number VI2004C 000371 and application date of 21/06/2004 was registered on 13/08/2004 under No 935 767, that a request for renewal of this trade mark was filed on 24/04/2014 under No 000253 and that this mark was renewed on 06/05/2014 under the new registration number 1 591 994.

The numbers and data mentioned in the renewal certificate make clear that the certificate refers to the same trade mark that was applied for through the ‘declaration of protection’. The details of the trade mark mentioned in the notice of opposition as earlier trade mark #2 coincide with the numbers and data on the renewal certificate. The renewal certificate and the ‘declaration of protection’ taken together contain all the information needed for the substantiation of the earlier mark. The list of goods is contained in the ‘declaration of protection’ and this document is of an official character (i.e. emanates from the relevant administration that stamped it). The renewal certificate proves that the mark was indeed registered and, later on, renewed.

Consequently, the applicant’s arguments must be dismissed and the earlier Italian trade mark No 1 591 994 is considered to be duly substantiated.

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 earlier Italian trade mark No 1 591 994.

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 30/01/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Italy from 30/01/2010 to 29/01/2015 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:        Natural and sparkling mineral water; peach, lemon and green tea; fruits drinks namely citrus fruit, tropical, multifruit, wild berry, blood orange, pineapple, blackcurrant, apple, peach, pear and apricot drinks.

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 10/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/07/2016 to submit evidence of use of the earlier trade mark.

On 14/09/2015, 17/02/2016 and 12/07/2016, within the relevant time limit, the opponent submitted evidence of use of the mark.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

Evidence of 14/09/2015:

• Annex 1: documents concerning the opponent’s official licence to exploit the ‘Lissa’ water spring in Posina, Italy, dated 1996;
• Annex 2: document from the Ministry of Health concerning the characteristics of the natural mineral water ‘LISSA’, dated 1998;
• Annex 3: photographs of bottled water, soft drinks and tea-based beverages under the mark ‘LISSA‘;
• Annex 4: internal report of the opponent’s company showing high numbers of bottles of various tea-based beverages sold in 2010-2014;
• Annex 5-6: internal report of the opponent’s company showing the sales of very high quantities of bottled water in 2010-2014;
• Annex 7-9: documents concerning the opponent’s participation at the ‘Biofach’ trade fair in Nuremberg, Germany, in 2011, 2012 and 2013;
• Annex 10: letter of Mr Marco Mueller, director of the 68th Venice Film Festival, dated 21/09/2011, attesting to the use of the ‘LISSA’ water during the festival.

Evidence of 17/02/2016:

• Exhibit 1: brochure showing the trade mark ‘LISSA’ in the form as used in the past;
• Exhibit 2: catalogue of the ‘LISSA’ water, undated;
• Exhibit 3: price list of the ‘LISSA’ tea-based drinks from September 2012;
• Exhibit 4: catalogues of ‘Cuorebio – biological shops’ offering ‘LISSA’ tea-based drinks, dated 2011-2015;
• Exhibit 5: magazines of ‘Cuorebio – biological shops’ with information and advertisements on the ‘LISSA’ products, dated 2012, 2013 and 2015;
• Exhibit 6: ‘Informarsi’ magazine with information and advertisements on the ‘LISSA’ products, dated 2013 and 2014;
• Exhibit 7: a leaflet of ‘Naturasi’, a retailer of biological goods, with the offer of ‘LISSA’ tea-based drinks, dated 2015, and a print-out from the on-line shop of  ‘Naturasi’;
• Exhibit 8: documents concerning the offer of the ‘LISSA’ products at the Expo in Milan in 2015;
• Exhibit 9: brochure presenting the whole range of ‘LISSA’ products, namely mineral water, tea-based drinks and soft drinks, and providing information on the high production capacity of the opponent and its history dating back to 1970s;
• Exhibit 10: labels for ‘LISSA’ water;
• Exhibits 11-23, 25, 26: a large number of invoices showing the sales of very high number of ‘LISSA’ products in Italy and abroad in 2010-2015;
• Exhibit 24: catalogue showing the trade mark ‘LISSA’ in the form as used in the past;
• Exhibit 27: copies of pages from the catalogue of ‘Biofach’ trade fair in 2012;
• Exhibit 28: labels for ‘LISSA’ water, tea-based drinks and soft drinks.

Evidence of 12/07/2016:

• Exhibit A: several invoices showing the sales of high number of ‘LISSA’ products in Italy in 2011-2014.

Most of the documents show that the place of use is Italy or that goods have been exported from Italy. This can be inferred from the language of the documents (Italian) and some addresses in Italy. Therefore, the evidence relates to the relevant territory.

Although some of the documents are either undated or are dated outside the relevant period, there is still enough evidence on file that is dated within the relevant period.

The documents filed, namely invoices, the brochure in Exhibit 9 and the report in annexes 4-6, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence shows the sales of sufficiently high numbers of goods and also proves that the goods were sold constantly and regularly throughout the whole relevant period.

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.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark as registered is the following:

The mark appears in the evidence essentially in the following forms:

1.    B.        C.   LISSA

The Opposition Division considers that the distinctive character of the earlier trade mark is concentrated to a large extent in the dominant and distinctive stylised word ‘LISSA’ placed in the centre of the mark. The small inscriptions around and under the word ‘LISSA’ are barely legible and have a very limited impact on the overall distinctive character of the mark. Since the mark as used under A. and B. in essence reproduces the stylised word ‘LISSA’ and, in the case of the variant A., also reproduces the inscriptions around that word, they are considered to be acceptable variations of the mark which do not alter its distinctive character (despite the arguments of the applicant to the contrary).

As there is enough evidence of use of the mark in the variants A. and B., it is not necessary to further examine whether the use of the variant C. is also an acceptable variation or not.

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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

There is clearly enough evidence on file to prove genuine use for natural and sparkling mineral water; peach, lemon and green tea in Class 32. For reasons of procedural economy, the Opposition Division will proceed on the basis of these opponent’s goods only and will refrain from further analysing the proof of use in relation to the remaining earlier goods.

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:        Natural and sparkling mineral water; peach, lemon and green tea.

The contested goods are, after the limitation by the applicant, the following:

Class 30:        Coffee, tea, cocoa and substitutes therefor, in particular non-alcoholic tea-based, cocoa-based and cereal-based beverages, soya milk, beverages based on tea.

Class 32:        Soya-based beverages, other than milk substitutes.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 coffee, tea, cocoa and substitutes therefor, in particular non-alcoholic tea-based, cocoa-based and cereal-based beverages are similar to the opponent’s peach, lemon and green tea in Class 32 as they can coincide in producer, relevant consumer and distribution channels. Furthermore, they can also be in competition.

By the same token, the contested soya milk, beverages based on tea are similar to the opponent’s peach, lemon and green tea in Class 32 as well.

Contested goods in Class 32

The contested soya-based beverages, other than milk substitutes are similar to the opponent’s peach, lemon and green tea in Class 32 as they have a similar nature and the same purpose of use, relevant consumer and distribution channels. Furthermore, they can also 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 similar are directed at the public at large.

The degree of attention will be average.

3. The signs

	Kissa
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 ‘LISSA’ of the earlier mark will be perceived as having no meaning by a large part of the relevant Italian public. Another part of the public will perceive the element as an allusion to the battle of Lissa from the nineteenth century or as a specialised medical or veterinary term. For reasons of procedural economy, the Opposition Division will further focus only on the part of the public for whom the element ‘LISSA’ has no meaning (and which represents a significant part of the relevant public). For this part of the public, the element is normally distinctive.

The phrase ‘AMORE NELL’ ACQUA THE LOVE OF WATER’ written around the element ‘LISSA’ in the earlier mark means ‘THE LOVE OF WATER’ in Italian and English, respectively. The Italian words will be understood by the entire relevant public and the English words will in principle be understood by a part of the public that speaks some English (although ‘LOVE’ and ‘WATER’ will probably be understood by the entire public as they are basic English words). The phrase ‘GRAZIE AMORE GRAZIE’ at the bottom of the mark means ‘thank you love thank you’. As all these word elements are barely legible, they have a very limited impact on the impression created by the mark despite the fact that they are distinctive to a greater or lesser extent.

The element ‘LISSA’ in the earlier mark is the dominant element as it is the most eye-catching.

The fact that the element ‘LISSA’ of the earlier trade mark is depicted in stylized upper case letters and the contested sign in title case has no bearing on the comparison of the marks, because the contested sign is a word mark. Protection is therefore sought for the word itself, and not for the particular way in which the mark is written.

Visually, the signs coincide in the sequence of letters ‘*ISSA’ and differ in the initial letter ‘L’ vs- ‘K’. They also differ in the visual stylisation of the element ‘LISSA’ and in the barely legible inscriptions around and under the element ‘LISSA’ (having very little impact).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*ISSA’, present identically in both signs. The pronunciation differs in the sound of the letter ‘L’ vs. ‘K’. When pronounced, the words ‘LISSA’ and ‘KISSA’ have the same number of syllables and, therefore, their rhythm and intonation are highly similar. The inscriptions around and under the element ‘LISSA’ in the earlier mark are barely legible and will most probably not be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, the element ‘LISSA’ of the earlier mark has no meaning for the part of the public on which focus is made in this comparison. Although the elements ‘AMORE NELL’ ACQUA THE LOVE OF WATER’ and ‘GRAZIE AMORE GRAZIE’ have the meanings mentioned above, they are barely legible and their conceptual impact is therefore very limited. The element ‘Kissa’ of the contested sign has no meaning for the relevant public. On the whole, 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The goods have been found to be similar. The earlier trade mark’s degree of distinctiveness per se is average and the degree of attention of the relevant public is average as well.

The marks are visually and aurally similar on account of the elements ‘LISSA’ and ‘Kissa’. The latter is the only element of the contested sign and the former is the dominant and distinctive element of the earlier trade mark. Although the element ‘LISSA’ is stylised, it is still clearly perceptible as the word ‘LISSA’. The inscriptions around and under the element ‘LISSA’ are barely legible and, therefore, have a very limited impact on the overall impression created by the earlier mark. The fact that the elements ‘LISSA’ and ‘Kissa’ differ in their first letter ‘L’/’K’ is counteracted by the coincidence in their remaining letters ‘*ISSA’ and by the same length of these elements. On the whole, it is considered that the overall impressions created by the marks are similar.

Considering all the above, there is a likelihood of confusion for a significant part of the relevant Italian public (namely that on which the comparison was focused).

The applicant argues that the element ‘LISSA’ of the earlier trade mark is the indication of the geographical origin of the water spring ‘Lissa’ and is, therefore, non-distinctive. The Opposition Division nevertheless considers that the water spring ‘Lissa’ and its location will not be known to the relevant public in Italy. The consumers will not, therefore, recognise the element ‘LISSA’ as a geographical indication but rather as a distinctive element indicating the commercial origin of the goods. The applicant’s argument must, therefore, be dismissed.

The applicant requested the Office to ask the opponent for an English translation of some of the documents filed together with the opponent’s observations in support of the opposition on 14/09/2015. In connection to this the Opposition Division observes that the documents in support of the opposition must be translated by the opponent on its own motion within the substantiation deadline (see Rule 19(4) EUTMR). The Opposition Division cannot, therefore, ask the opponent to submit a translation. The Opposition Division took the relevant documents into account to the extent they were translated into English or are self-explanatory (and therefore do not require any translation).

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 591 994. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Moreover, since the opposition is successful on the basis of the opponent’s natural and sparkling mineral water; peach, lemon and green tea in Class 32, there is no need to analyse the proof of use in relation to the remaining goods covered by the Italian trade mark registration No 1 591 994.

Finally, as the earlier Italian trade mark registration No 1 591 994 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent, including their proof of use (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

The Opposition Division

Alexandra APOSTOLAKIS

Vít MAHELKA

Lucinda CARNEY

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.