VIWA vitaminwater | Decision 2750100

Date Published: Sep 24, 2017

OPPOSITION No B 2 750 100

Drustvo za proizvodstvo, promet i uslugi VIVAKS Risto i drugi DOO uvoz-izvoz Skopje, ul Treta Makedonska Brigada bb, Skopje 1000, The former Yugoslav Republic of Macedonia (opponent), represented by Ivan Nikolov Ivanov, IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

Viwa Product Europa Kft., Budapest, Szondi u. 51, 1064, Hungary (applicant), represented by SBGK Ügyvédi Iroda, Budapest, Andrássy út 113, 1062, Hungary (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 100 is upheld for all the contested goods.

2.        European Union trade mark application No 15 404 536 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 404 536  (figurative). The opposition is based on international trade mark registration No 1 144 675  (figurative), designating, inter alia, Croatia and Romania. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

It should be noted that with a letter dated 28/02/2017 the Office sent to the applicant copies of the additional documents concerning facts, evidence and arguments presented by the opponent in support of its opposition and provided to it a term by 12/05/2017 to present its observations in reply to the opposition. The applicant submitted observations in reply on 19/05/2017, i.e. after expiry of the given term. Accordingly, the observations of the applicant, including among others its request to give it an opportunity to file additional observations, may not be taken into account, since they were filed late.

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 opposition is based on an international trade mark registration, designating a number of territories, including among others Croatia and Romania. Given that the notice of opposition, as filed by the opponent, indicates a number of designated territories, among which Croatia and Romania, where the trade mark has been granted protection, the Opposition Division does not find there are any procedural or other obstacles to proceed to review of the opposition on the basis of the earlier international trade mark No 1 144 675 claiming protection in any of these two countries.

Since protection of an international trade mark in a designated territory has an effect equivalent to protection as a national trade mark, a finding that the opposition is well founded with respect to one of the territories, will have as a result rejection of the contested mark. Therefore, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration, designating the territory of Croatia and only if necessary, to proceed to review of the opposition on the basis of the protection of the international trade mark in other designated member states.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Non-alcoholic beverages; aloe vera drinks, non-alcoholic; mineral water [beverages]; isotonic beverages; lemonades; waters.

Contested goods in Class 32

The contested non-alcoholic beverages and mineral and aerated waters and other non-alcoholic drinks of the earlier mark include the same scope of goods, namely non-alcoholic beverages (drinks) and are hence identical.

The rest of the contested goods, namely aloe vera drinks, non-alcoholic; mineral water [beverages]; isotonic beverages; lemonades; waters, all being essentially non-alcoholic beverages, are contained in the broad category of the earlier mark’s mineral and aerated waters and other non-alcoholic drinks. Therefore, they are identical.

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 identical are directed mostly at the public at large. These are mass-consumption goods, frequently purchased and used by the relevant consumer. Therefore, the attention of consumers upon purchase of such goods is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Croatia.

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 figurative mark, composed of the word element ‘VIVA’ in orange and considerably standard font, in which the dot in the letter ‘I’ is represented as a stylised image of a leaf or part of a flower in green. The word ‘VIVA’ does not exist in the Croatian language and it is likely that the majority of the relevant public sees it as meaningless. It is not excluded however that the wide-spread use of ‘VIVA’ as an exclamation for appraisal or support of a person (coming from Italian, where ‘viva’ means ‘live’) is known to part of the public, which therefore links the word with such a meaning. Irrespective of whether ‘VIVA’ evokes a concept to the relevant public or not, it has a normal degree of distinctiveness with respect to the goods at issue. The device element of the earlier mark is not especially imaginative and if at all remembered by consumers, it will likely evoke the idea of fruit and vegetables. In view of the goods at issue, the device element might be seen as allusive to characteristics of the goods (e.g. beverages containing fruit and/or vegetables, beverages with such flavour, etc.). Therefore, this element has a lower degree of distinctiveness.

In the light of the foregoing, and upon taking into account that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign has a stronger impact on the consumer than the figurative component (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), the word element of the earlier mark will have stronger impact on the overall impression of the sign.

Given the size of ‘VIVA’ in the overall composition of the earlier mark, its bright colour and the fact that the stylized image of a leaf or flower is likely to be seen as a decorative element and will not specifically attract the attention, it is ‘VIVA’ that is also the dominant (visually eye-catching) element in the sign.

The contested sign comprises of the word ‘VIWA’ in upper case and the word ‘vitaminwater’ in lower case and significantly smaller lettering below it, both represented in dark blue and considerably standard font. ‘VIWA’ does not have a meaning for the relevant public. The letter ‘W’ does not exist in the Croatian alphabet and, to the extent it is present in foreign words, ‘W’ is pronounced as the sound [v], i.e. identically to ‘V’. Therefore, even though ‘VIWA’ is not visually identical to ‘VIVA’, it is not excluded that it creates the same connotations as ‘VIVA’ for part of the consumers. Irrespective of whether the word is seen as meaningless or not, it has a normal degree of distinctiveness with respect to the goods at issue. As for ‘vitaminwater’, it is true that even though trade marks are generally seen as a whole, consumers tend to split their elements into words that are known to them or suggest a concrete meaning. In the case at hand, it is apparent that this element is composed of the words ‘vitamin’ and ‘water’ and consumers are likely to divide it into these words when perceiving it. ‘Vitamin’ in Croatian has the meaning of a vitamin and ‘water’, even though not present in the Croatian language, since this is a basic English word, it is likely that its meaning is known to the majority of the consumers in Croatia. Upon taking into account that the goods at question are different types of non-alcoholic beverages, ‘vitaminwater’ taken as a whole is descriptive of the type and/or characteristics of the goods and therefore it is deemed a weak element.

In addition to being the most distinctive element in the sign, ‘VIWA’ is also the most visually eye-catching element, given its position, bold typeface used and its size in the overall composition of the mark. Consequently, it is the dominant element of the sign.

Visually, the signs coincide in ‘VI*A’, in the most distinctive and the dominant element in the contested sign and the only word element in the earlier mark, which is also the most eye-catching component. It is to be noted that the visual difference between ‘V’ and ‘W’ as found in ‘VIVA’ vs. ‘VIWA’ is not specifically eye-catching. The shape of these letters is very similar (basically ‘W’ contains a double ‘V’) and moreover in Croatian language both letters are pronounced identically (upon taking into account the principle of imperfect recollection, the aural perception of the sign may also influence the way the signs are visually remembered by consumers).

The signs also differ in the colours used, in the word element ‘vitaminwater’ in the contested sign, the device element in the earlier sign and the font of the word elements. The identified differences are not considered sufficient to outweigh the similarities between the signs. These are mainly differences in weak elements (e.g. ‘vitaminwater’ and the leaf/flower device element) or other decorative elements (e.g. font, colours), which will not have a significant impact on the visual perception of the signs as a whole.

In view of the foregoing, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of ‘VIVA’, given that the relevant public will pronounce the letter ‘W’ in ‘VIWA’ in the contested sign as [v], for reasons explained above. Accordingly, the elements ‘VIVA’ and ‘VIWA’ are identically pronounced as [VIVA]. The signs will differ in the pronunciation of the element ‘vitaminwater’ of the contested sign, which has no counterpart in the earlier mark.

Upon taking into account that the differences in pronunciation of the marks stem from the presence of a weak element, which will therefore have a minor impact in the perception of the signs, they are considered aurally similar at least to an average degree.

Conceptually, for those who do not see a meaning in ‘VIVA’ and/or ‘VIWA’, the signs will not be conceptually similar, given the different concepts that ‘vitaminwater’ in the contested sign and the image of a leaf/flower in the earlier mark, allude. For the public who sees a meaning in ‘VIVA’ and ‘VIWA’, as described above, the degree of conceptual similarity between the signs is considered to be average.

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

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).

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).

In the case at hand it has been established that the goods in question are identical, that the relevant public is the general public showing an average degree of attention and that the earlier mark has a normal degree of distinctiveness. The signs have been found to be aurally similar at least to an average degree, visually similar to an average degree and conceptually similar to an average degree for part of the public and not similar for another part.

According to settled case-law, in the context of the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate then to examine the objective conditions under which the marks may be present on the market. In this context, it should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning). Accordingly, the found at least average degree of aural similarity between the signs is attributed greater weight.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 144 675, designating the territory of Croatia. It follows that the contested trade mark must be rejected for all 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.

The Opposition Division

Martin MITURA

Teodora TSENOVA-PETROVA

Vít MAHELKA

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.