Revives, Replenishes, Restores | Decision 2702549

Date Published: Sep 25, 2017

OPPOSITION No B 2 702 549

Rives Pitman S.A., Aurora, 4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Vedozi Limited T/A Cintronafrica, 7A Katampe Estate, Phase 2, Abuja, Nigeria (applicant), represented by Engin-Deniz Reimitz Hafner Rechtsanwälte KG, Marc-Aurel-Straße 6/5, 1010 Vienna, Austria (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 702 549 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 748 552. The opposition is based on Spanish trade mark registration No 992 562. 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

As a preliminary remark, it can be noted that in the notice of opposition the opponent has based its opposition on part of the goods for which the mark is registered, namely refreshing drinks in Class 32; however, from the documents submitted by the opponent on 23/09/2016, it appears that the earlier mark is registered for beer and soft drinks in Class 32. As refreshing drinks and soft drinks are considered to refer to the same goods the Opposition Division will treat the opposition as it is based on soft drinks in Class 32.

Therefore, the goods on which the opposition is based are the following:

Class 32:         Soft drinks.

The contested goods are the following:

Class 32:        Energy drinks; non-alcoholic cocktail mixes; non-alcoholic drinks, namely energy shots; sports drinks, namely energy drinks.

        

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

REVIVE’S
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 earlier mark is a word mark consisting of the verbal element ‘REVIVE’S’. In the relevant territory the word ‘revive’ means, inter alia, to come back to live or to resurrect (Real Academia Española). The apostrophe and the letter ‘S’ at the end of the earlier mark, will merely be perceived as indicating a foreign word; however the relevant public will immediately perceive the earlier mark in the meaning of ‘revive’. In relation to the goods in question, this element must be seen as weak, as it will be perceived as indicating that the drinks gives you energy.

The contested sign is a figurative sign consisting of a figurative element placed above the verbal elements ‘Revives’, ‘Replenishes’ and ‘Restores’ written in a standard font in title case letters, and separated by commas. The figurative element, albeit resembling a crown or a tiara, is too stylised to convey any clear meaning and has an average degree of distinctiveness in relation to the goods in question. The verbal element ‘Revives’ will be understood as explained above, and will in relation to the goods be weak. The verbal elements ‘Replenishes’ and ‘Restores’ will, for the relevant public, be fanciful elements with no meaning in relation to the goods in question. Therefore, these two verbal elements have an average degree of distinctiveness. In the contested sign the figurative element is clearly the most dominant element due to its size.

Contrary to the opponent’s argument, although the beginning of a word mark is likely to catch the consumer’s attention first, this consideration cannot apply in all cases (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70). In particular, the principle that the consumer pays particular attention to the beginning of a mark cannot be assessed independently of the circumstances of the case and, in particular, of the specific characteristics of the signs under comparison (07/03/2013, T-247/11, FairWild, EU:T:2013:112, § 33). In the present case the first element of the contested sign is weak, and will therefore only have a limited influence on the overall impression of the mark.

Visually, the signs coincide in the element ‘REVIVE*S’ which however is considered weak in both signs. They differ in the apostrophe in the earlier mark, the commas of the contested sign, and in the verbal elements ‘Replenishes’ and ‘Restores’, both being the most distinctive verbal elements in the contested sign. Finally they also differ in the figurative element in the contested sign which has an average degree of distinctiveness and which is considered to be the most dominant element. 

Contrary to the opponent’s argument, in the present case, the figurative element will not be less distinctive than the coinciding verbal element. The figurative element has an average degree of distinctiveness and is dominant, which is why it will have a stronger impact on the overall impression of the contested sign than the weak verbal element ‘Revives’.

As the signs merely coincide in a weak element that is also considered to be non-dominant, they are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REVIVE*S’, which however constitutes a weak element in both signs and only makes up one out of three elements in the contested sign. It can be noted that the apostrophe in the earlier mark will not have a significant influence on the pronunciation of the earlier mark and the first element of the contested sign. However, the pronunciation differs in the sound of the letters ‛Replenishes’ and ‘Restores’ in the contested sign constituting the most distinctive elements of the sign, and making up two out of the signs three verbal elements.

Contrary to the opponent’s argument, the Opposition Division does not find that the relevant consumers will shorten the contested sign and only refer to it aurally by saying ‘Revives’, especially as this element is weak and the remaining verbal elements will have a stronger impact on the overall impression of the sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark and part of the contested sign, namely ‘Revives’ will be perceived as having the same meaning, as explained above, however taking into account the weak character of the elements, the signs are conceptually similar to a low 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The applicant’s goods are assumed identical to the opponent’s goods. The distinctiveness of the earlier mark is weak and the relevant consumers’ degree of attention is average.

The sings are visually, aurally and conceptually similar to a low degree. Although the signs coincide in one element, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The fact that they merely have one element in common is insufficient to conclude that there is a likelihood of confusion between the signs, despite the assumed identity between the relevant goods, especially when taking into account the weak character of that coinciding element. The differences will consequently allow consumers to safely distinguish between the signs. The opposition Division has also taken into consideration that the coinciding element is non-dominant in the contested sign and that all the other elements of the contested sign are more distinctive.

In view of all the foregoing, there is no risk that the public might believe that the goods in question came from the same undertaking or from economically-linked undertakings.

The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods are assumed identical cannot, in the present case, compensate for the differences identified between the signs.

The opponent has referred to 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30, where it is stated that:

‘…in general terms, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects’.

In this regard the Office refers to 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23, where the following acknowledge principle was established:

 

‘That 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 component.’

And the more recent decision of 15/01/2010, C-579/08 P, Ferromix, Inomix, Alumix, EU:C:2010:18, § 71:

‘the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them. In particular, the Court has held that assessment of the similarity between two marks cannot mean merely taking just one component of a composite trade mark and comparing it with another mark. The comparison must be made by examining each of the marks in question as a whole (see Case C-120/04 Medion [2005] ECR I-8551, paragraph 29; OHIM v Shaker, paragraph 41; and Aceites del Sur-Coosur v Koipe and OHIM, paragraph 61)’. 

For the sake of completeness it can be noted that the opponent’s argument, that its mark has been used in the market for many years, will not be treated as a claim of enhanced distinctiveness, as this argument was submitted after the end of the substantiation period.

Considering all the above, even assuming that the goods are identical, 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

Edith Elisabeth VAN DEN EEDE

Cecilie Leth BOCKHOFF

Andrea VALISA

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.