AQUA HERO | Decision 2578857
Date Published: May 1, 2018
OPPOSITION No B 2 578 857
Hero, AG, 5600 Lenzburg, Switzerland (opponent), represented by Raffay & Fleck, Grosse Bleichen 8, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Fal Healthy Beverages Pty Ltd, SE7.02, 247 Coward Street, Mascot NSW 2020 Australia (holder), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).
On 11/01/2017, the Opposition Division takes the following
1. Opposition No B 2 578 857 is upheld for all the contested goods.
2. International registration No 1 238 377 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration No 1 238 377 designating the European Union. The opposition is based on European Union trade mark registration No 125 765. 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: Non-alcoholic drinks; fruit drinks and fruit juices.
The contested goods are the following:
Class 32: Beverages consisting of a blend of fruit and vegetable juices; bottled coconut water; coconut milk (beverages); fruit drinks and fruit juices; mineral and aerated waters and other non-alcoholic drinks; energy drinks; sports drinks (non-medicated); isotonic drinks (not for medical purposes); electrolyte replacement beverages for general and sports purposes; whey beverages; syrups and other 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 32
Fruit drinks and fruit juices are identically contained in both lists of goods.
The contested beverages consisting of a blend of fruit and vegetable juices; bottled coconut water; coconut milk (beverages); mineral and aerated waters and other non-alcoholic drinks; energy drinks; sports drinks (non-medicated); isotonic drinks (not for medical purposes); electrolyte replacement beverages for general and sports purposes; whey beverages are included in the broad category of the opponent’s non-alcoholic drinks. Therefore, they are identical.
The contested syrups and other preparations for making beverages have the same purpose as the opponent’s non-alcoholic drinks. These products target the same relevant public, they may have the same producers and they are often sold through the same distribution channels, namely supermarkets and grocery shops, where they are normally displayed in close proximity to each other. Moreover, they may be in competition. Therefore, they are similar to a high degree.
- 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 to a high degree are directed at the public at large. The degree of attention is average.
- The signs
Earlier trade mark
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 earlier mark is a figurative mark consisting of the verbal element ‘Hero’, written in slightly stylised letters in a bold white font against a black oval background. Moreover, the first letter, ‘H’, is upper case, while the remaining letters, ‘ero’, are lower case.
The English word ‘Hero’ means ‘a man distinguished by exceptional courage, nobility, fortitude, etc’ (information extracted from Collins Dictionary on 19/12/2016 at https://www.collinsdictionary.com/dictionary/english/hero). This word will be perceived with the same meaning even by part of the non-English speaking public due to its similarity to the equivalent words in other languages, such as French (‘héros’), Portuguese (‘herói’) and Spanish (‘héroe’). The remaining public will perceive the word ‘Hero’ as meaningless.
Irrespective of whether it is understood or not, the word ‘Hero’ is considered a distinctive element since it is neither descriptive nor allusive of the relevant goods to an extent that would materially affect its degree of distinctiveness.
The oval background of the earlier mark has a purely decorative nature and is therefore considered less distinctive than the verbal element ‘Hero’.
The contested sign is also a figurative mark consisting of the words ‘AQUA HERO’, written in slightly slanted bold upper case letters; the word ‘AQUA’ is placed above the word ‘HERO’. The word ‘AQUA’ is in turquoise, while ‘HERO’ is in dark blue. Below the word ‘AQUA’ and in front of the word ‘HERO’, there is a figurative element depicting a turquoise water droplet within a dark-blue circle. The word and figurative elements are framed by a line in different shades of yellow and green.
The same considerations stated above regarding the meaning and distinctive character of the verbal element of the earlier mark apply equally to the word ‘HERO’ in the contested sign.
The word ‘AQUA’, also included in the contested sign, will be understood by Portuguese-, Spanish- and Italian-speaking consumers to mean ‘water’ because of its similarity to the equivalent words, namely ‘água’, ‘agua’ and ‘acqua’. Moreover, account should be taken of the fact that the element ‘aqua’ is a common Latin term ‘which the European Union consumer may be assumed to know’ (28/01/2015, AquaPerfect, T-123/14, EU:T:2015:52, § 34). In addition, many words in the relevant languages contain the prefix ‘aqua’ which means ‘water’ or ‘water-related’, such as ‘aquarium’, ‘aquaculture’, ‘aqua planer’, ‘aqua park’ and ‘aquarelle’.
As ‘AQUA’ is a meaningful word for the relevant public and the relevant goods are various non-alcoholic beverages (included water), syrups and other preparations for making beverages, it is considered that ‘AQUA’ is a non-distinctive element in relation to these goods, as it is a direct reference to the type of goods or their characteristics, namely that they are water, contain water or are (to be) mixed with water. Along similar lines of reasoning, the figurative element of a water droplet in the contested sign is also considered weak in relation to all the relevant goods, since it merely reinforces the concept of the word ‘AQUA’ (i.e. that all the relevant goods are water, related to water or made of water). In addition, the circle in which the water droplet is depicted has a low degree of distinctiveness on account of its purely decorative nature. Therefore, the public will not pay as much attention to the non-distinctive word ‘AQUA’ or the weak figurative elements of the contested sign as to the other, distinctive, element ‘HERO’.
For the sake of completeness, it is noted that those consumers who understand the meaning of both ‘AQUA’ and ‘HERO’ will not attribute a meaning to the combination of these words, other than that of the sum of its parts.
Both marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs are similar to the extent that they coincide in the distinctive word ‘HERO’, which is the sole word element of the earlier mark and is fully included in the contested sign. On the other hand, they differ in the oval background of the earlier mark and in the additional word ‘AQUA’ and the figurative elements of the contested sign, as well as in the stylisations and colours of the verbal elements of the marks. It is true that ‘AQUA’ of the contested sign appears above the element ‘HERO’. However, it will not hold consumers’ attention, because it lacks distinctiveness, as mentioned before. The background of the earlier mark is merely decorative, so its impact on consumers is also limited. The figurative elements, namely a water droplet within a circle, in the contested sign are weak and the role they play in the mark is minor. Moreover, the stylisations of the word elements are not very elaborate and are not striking enough to prevent consumers from perceiving the words as such. Moreover, as consumers are well accustomed to the stylisation of verbal elements in marks, they will perceive such stylisation as merely a decorative depiction of the word elements. Therefore, the signs are visually similar to at least an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters /HERO/, present identically in both signs. The pronunciation differs in the sound of the letters /AQUA/ of the contested sign, which have no counterparts in the earlier mark. However, since ‘AQUA’ is non-distinctive, there is a high degree of aural similarity between the signs deriving from the coinciding and distinctive word ‘HERO’.
Conceptually, there is a high degree of conceptual similarity for the part of the public that will understand the words ‘HERO’ and ‘AQUA’, insofar as both marks contain the distinctive word ‘HERO’ and because the word ‘AQUA’, appearing only in the contested mark, lacks distinctiveness. Furthermore, the water droplet (within a circle) which is also contained in the contested mark is a weak element and merely reinforces the concept of the word element ‘AQUA’.
For the remaining part of the public that will not understand the English word ‘HERO’ in both marks but will understand the word ‘AQUA’, the conceptual aspect does not influence the assessment of the similarity of the signs. This is because ‘AQUA’ cannot constitute a conceptual difference between the signs given its lack of distinctiveness and, therefore, inability to indicate commercial origin. The same applies to the water droplet in the contested sign – which does not introduce any concept that would alter the conceptual perception of the sign, since it merely reinforces the concept of the word element ‘AQUA’ – and the other figurative elements of the earlier and contested marks (the oval background and the circle, respectively).
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, despite the presence of a weak figurative element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods at issue are partly identical and partly similar (to a high degree) and the degree of attention is average.
The conflicting signs are visually similar to at least an average degree and aurally and conceptually (where applicable) similar to a high degree, to the extent that they coincide in the distinctive element ‘HERO’, which constitutes the only word element of the earlier mark and is entirely included in the contested sign, where it plays an independent role.
The differences arising from the additional element ‘AQUA’ and the depiction of a water droplet within a circle in the contested sign and the oval background of the earlier sign, as well as the different colours and stylisations of the marks, have a limited impact when assessing the likelihood of confusion, as explained above in section c), on account of their lack of distinctive character and respectively limited distinctiveness.
Therefore, the Opposition Division considers that the additional and differing elements of the signs, given their limited impact, are not sufficient to counteract the similarities between the signs arising from the distinctive element ‘HERO’. Consequently, the relevant public, when encountering the signs in relation to identical or highly similar goods, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that there is a likelihood of confusion on the part of the public.
It follows from the above that the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 125 765. It follows that the contested trade mark must be rejected for all the contested goods.
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 holder 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
Angela DI BLASIO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.