TRENDER | Decision 2433947 - HANSA-HEEMANN AG v. AlcorDistillery OÜ

Date Published: Sep 22, 2017

OPPOSITION No B 2 433 947

Hansa-Heemann AG, Halstenbeker Weg 98, 25 462 Rellingen, Germany (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

a g a i n s t

OÜ NordiumCorp, Paldiski mnt 169-38, 13518 Tallinn, Estonia (applicant), represented by Koppel Patendibüroo OÜ, Oja tee 22-2, Tiskre, Harku vald, 76916 Harjumaa, Estonia (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 433 947 is partially upheld, namely for the following contested goods and services:

Class 32: Non-alcoholic beverages; Preparations for making beverages; Beer and brewery products; Juices; Flavoured carbonated beverages; Non-dairy milk; Waters; Non-alcoholic malt free beverages [other than for medical use]; Alcohol free wine; Non-alcoholic honey-based beverages; Aloe vera drinks, non-alcoholic; Orange barley water; Aperitifs, non-alcoholic; Energy drinks; Energy drinks [not for medical purposes]; Guarana drinks; Quinine water; Isotonic drinks; Isotonic beverages [not for medical purposes]; Energy drinks containing caffeine; Cocktails, non-alcoholic; Part frozen slush drinks; Sarsaparilla [non-alcoholic beverage]; Lemon barley water; Cider, non-alcoholic; Sorbets in the nature of beverages; Sherbets [beverages]; Non-alcoholic fruit extracts; Fruit juice beverages (Non-alcoholic -); Aloe vera juices; Pineapple juice beverages; Orange juice; Aerated juices; Fruit juice for use as a beverages; Iced fruit beverages; Vegetable drinks; Vegetable juices [beverages]; Beverages consisting principally of fruit juices; Fruit drinks; Fruit beverages and fruit juices; Fruit-flavoured beverages; Fruit nectars, non-alcoholic; Fruit-based beverages; Smoothies; Tomato juice [beverage]; Must; Grape juice; Grape juice beverages; Carbonated non-alcoholic drinks; Bitter lemon; Ginger ale; Lemonades; Low-calorie soft drinks; Fruit flavored soft drinks; Root beer; Tonic water [non-medicated beverages]; Milk (Peanut -) [non-alcoholic beverage]; Almonds (Milk of -) [beverage]; Still water; Sparkling water; Table waters; Lithia water; Flavoured waters; Mineral water (Non-medicated -); Mineral water [beverages]; Bottled drinking water; Bottled water; Seltzer water; Soda water; Waters [beverages]; Orange squash; Extracts for making beverages; Essences for making beverages; Aerated water (Preparations for making -); Powders for effervescing beverages; Pastilles for effervescing beverages; Hop extracts for use in the preparation of beverages; Hops (Extracts of -) for making beer; Concentrates for use in the preparation of soft drinks; Lime juice cordial; Liqueurs (Preparations for making -); Malt syrup for beverages; Malt wort; Squashes [non-alcoholic beverages]; Mineral water (Preparations for making -); Cordials; Orgeat; Lemon squash; Syrups for beverages; Syrups for lemonade; Syrups for making non-alcoholic beverages; Syrups for making fruit-flavored drinks; Grape must, unfermented; Beer wort; Non-alcoholic beer; Kvass [non-alcoholic beverage]; Coffee-flavored beer; Lagers; Malt beer; Beers enriched with minerals; Porter; Stout; Low alcohol beer; Beer-based cocktails; Beers; Shandy.

Class 33: Preparations for making alcoholic beverages; Spirits and liquors; Pre-mixed beverages; Wine; Aperitifs; Vodka; Alcoholic beverages (except beer); Anisette [liqueur]; Arak [arrack]; Brandy; Bourbon whiskey; Cachaca; Distilled beverages; Digesters [liqueurs and spirits]; Gin; Grappa; Calvados; Schnapps; Kirsch; Cream liqueurs; Fermented spirit; Curacao; Liqueurs; Malt whisky; Agave spirits; Spirits [beverages]; Peppermint liqueurs; Rum; Blended whisky; Scotch whisky; Scotch whisky based liqueurs; Alcopops; Alcoholic energy drinks; Alcoholic beverages of fruit; Alcoholic punches; Fruit (Alcoholic beverages containing -); Cocktails; Alcoholic fruit extracts; Rum punch; Pre-mixed alcoholic beverages, other than beer-based; Wine coolers [drinks]; Wine punch; Fortified wines; Mulled wines; Piquette; Red wine; Sangria; Cooking wine; Baijiu [Chinese distilled alcoholic beverage]; Bitters; Mead [hydromel]; Nira [sugarcane-based alcoholic beverage]; Perry; Rice alcohol; Sake; Cider; Low alcoholic drinks.

Class 35: Wholesale and retail of non-alcoholic beverages.

2. European Union trade mark application No 12 953 279 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 953 279, ‘TRENDER’. The opposition is based on European Union trade mark registration No 12 588 844, ‘TRENDIC’. 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 and services

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

Class 30: Tea; Non-medicated infusions; Tea-based beverages; Soft drinks with a base of tea; Soft drinks containing tea extracts; Iced tea, Flavourings for beverages; Other than essential oils.

Class 32: Mineral water [beverages], Spring waters, Table waters and Aerated waters and Other non-alcoholic drinks; Soft drinks, including effervescing and fruit beverages (non-alcoholic) and lemonades; Mineral drinks; Flavoured mineral waters; Mineral waters mixed with fruit juice; Apple juice and sparkling mineral water; Non-alcoholic fruit beverages and fruit juices; Non-alcoholic dietetic beverages, not for medical purposes; Syrups and other preparations for making beverages.

Class 43: Services for providing food and drink.

The contested goods and services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Retailing and wholesaling of alcoholic beverages; Retail and wholesale of food goods; Wholesale and retail of non-alcoholic 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

Non-alcoholic beverages; preparations for making beverages; fruit juice beverages (non-alcoholic -); fruit beverages and fruit juices; syrups for beverages; mineral water [beverages] are identically contained in both lists of goods (including synonyms).

The contested fruit juice for use as a beverages; beverages consisting principally of fruit juices; fruit drinks; fruit-based beverages are included in the broad category of the opponent’s non-alcoholic fruit beverages and fruit juices. Therefore, they are identical.

The contested still water; sparkling water; table waters; flavoured waters; mineral water (non-medicated -); bottled drinking water; bottled water; seltzer water; soda water; waters [beverages] are included in the broad category of the opponent’s table waters and aerated waters and other non-alcoholic drinks. Therefore, they are identical.

The contested lithia water is included in the broad category of the opponent’s mineral water [beverages]. Therefore, they are identical.

The contested aloe vera drinks, non-alcoholic; aloe vera juices; pineapple juice beverages; orange juice; aerated juices; iced fruit beverages; fruit-flavoured beverages; fruit nectars, non-alcoholic; grape juice; grape juice beverages; bitter lemon; lemonades; fruit flavored soft drinks; lime juice cordial; sherbets [beverages] are included in the broad categories of, or overlap with, the opponent’s non-alcoholic fruit beverages and fruit juices. Therefore, they are identical.

The contested flavoured carbonated beverages; non-dairy milk; non-alcoholic malt free beverages [other than for medical use]; alcohol free wine; non-alcoholic honey-based beverages; orange barley water; aperitifs, non-alcoholic; energy drinks; energy drinks [not for medical purposes]; guarana drinks; quinine water; isotonic drinks; isotonic beverages [not for medical purposes]; energy drinks containing caffeine; cocktails, non-alcoholic; part frozen slush drinks; sarsaparilla [non-alcoholic beverage]; lemon barley water; cider, non-alcoholic; sorbets in the nature of beverages; vegetable drinks; vegetable juices [beverages]; smoothies; tomato juice [beverage]; carbonated non-alcoholic drinks; ginger ale; low-calorie soft drinks; root beer; tonic water [non-medicated beverages]; milk (peanut -) [non-alcoholic beverage]; almonds (milk of -) [beverage]; non-alcoholic beer; kvass [non-alcoholic beverage] are included in the broad category of, or overlap with, the opponent’s other non-alcoholic drinks. Therefore, they are identical.

The contested non-alcoholic fruit extracts; extracts for making beverages; essences for making beverages; aerated water (preparations for making -); hop extracts for use in the preparation of beverages; hops (extracts of -) for making beer; concentrates for use in the preparation of soft drinks; liqueurs (preparations for making -); malt syrup for beverages; malt wort; mineral water (preparations for making -); syrups for lemonade; syrups for making non-alcoholic beverages; syrups for making fruit-flavored drinks; grape must, unfermented; must; orange squash; squashes [non-alcoholic beverages]; cordials; orgeat; lemon squash; powders for effervescing beverages; pastilles for effervescing beverages are included in the broad categories of the opponent’s Syrups and other preparations for making beverages. Therefore, they are identical.

The contested waters include, as a broader category, the opponent’s mineral water [beverages]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested juices include, as a broader category, the opponent’s Apple juice. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested beer and brewery products; coffee-flavored beer; lagers; malt beer; beers enriched with minerals; porter; stout; low alcohol beer; beer-based cocktails; beers; shandy are similar to a high degree to the opponent’s other non-alcoholic drinks as they have the same purpose. Furthermore, they can coincide in producer, end user and distribution channels. Moreover they are in competition.

The contested beer wort is similar to the opponent’s other preparations for making beverages as they have the same nature. Furthermore, they can coincide in producer, end user, distribution channels and method of use.

Contested goods in Class 33

The contested preparations for making alcoholic beverages are similar to the opponent’s other preparations for making beverages as they have the same nature. Furthermore, they can coincide in producer, end user, distribution channels and method of use.

The rest of the contested goods in Class 33, spirits and liquors; pre-mixed beverages; wine; aperitifs; vodka; alcoholic beverages (except beer); anisette [liqueur]; arak [arrack]; brandy; bourbon whiskey; cachaca; distilled beverages; digesters [liqueurs and spirits]; gin; grappa; calvados; schnapps; kirsch; cream liqueurs; fermented spirit; curacao; liqueurs; malt whisky; agave spirits; spirits [beverages]; peppermint liqueurs; rum; blended whisky; scotch whisky; scotch whisky based liqueurs; alcopops; alcoholic energy drinks; alcoholic beverages of fruit; alcoholic punches; fruit (alcoholic beverages containing -); cocktails; alcoholic fruit extracts; rum punch; pre-mixed alcoholic beverages, other than beer-based; wine coolers [drinks]; wine punch; fortified wines; mulled wines; piquette; red wine; sangria; cooking wine; baijiu [chinese distilled alcoholic beverage]; bitters; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; rice alcohol; sake; cider; low alcoholic drinks, are all alcoholic beverages. these goods are similar to a low degree to the opponent’s other non-alcoholic drinks as they are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition.

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.

Therefore, the contested wholesale and retail of non-alcoholic beverages are similar to a low degree to the opponent’s other non-alcoholic drinks.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the opponent’s goods in Class 30 and 32 or services in Class 43 that could potentially be advertised.

Retailing and wholesaling of alcoholic beverages; retail and wholesale of food goods and all the opponent’s goods in Class 30 and 32 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesaling 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.

Similarity between retail 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 services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar to a low degree or dissimilar.

Retailing and wholesaling of alcoholic beverages; retail and wholesale of food goods are also dissimilar to the opponent’s services in Class 43, services for providing food and drink. These services differ in their distribution channels, provider and purpose.

The rest of the contested services in Class 35, business management; business administration; office functions are also dissimilar to all the opponent’s goods and services in Class 30, 32 and 43. They differ in nature, purpose and distribution channels. Furthermore, they are not in competition or complementary and do not share the relevant public.

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 and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

The signs

TRENDIC

TRENDER

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57).. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign has a meaning in Swedish and the common element ‘TREND’ (first five letters in both signs) also has a meaning in certain territories, for example, in those countries where English are spoken. However, the common element has no meaning in the countries where English is not spoken nor does the contested sign have a meaning outside of Sweden. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non English-speaking part of the public such as in for example Greece, Spain and Bulgaria.

Visually and aurally, the signs coincide in the sequence of letters ‘TREND**’. However, they differ in the signs respective last two letters, namely ‘IC’ in the earlier mark and ‘ER’ in the contested sign. Consumers generally tend to focus on the beginning 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 left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, since the signs have their first five letters in common and only differ in their two final letters, they are both visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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 and services 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

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 of art. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods and services are partly identical, partly similar to various degrees and partly dissimilar. The goods and services are directed at the public at large and business customers with specific professional knowledge or expertise with a degree of attention that is considered to be average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to an average degree and a conceptual comparison is not possible.

The differences between the signs are limited to their last two letters, namely ‘IC’ in the earlier mark and ‘ER’ in the contested sign. However, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar visual and aural impressions given by the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that do not associate the marks with any meaning and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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 those of the earlier trade mark. Considering the similarities between the signs the contested mark is also rejected for the goods and services found to be similar only to a low degree.

The rest of the contested 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 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

Adriana VAN ROODEN

Benjamin Erik WINSNER

Begoña URIARTE VALIENTE

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.

TRENDER | Decision 2433947 - HANSA-HEEMANN AG v. AlcorDistillery OÜ

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