FRUTTIA KIDS | Decision 2506700 - FRUCTAL Živilska industrija d.o.o. v. S.C. Intermark s.r.l.
Date Published: Oct 11, 2017
OPPOSITION No B 2 506 700
Fructal Živilska industrija d.o.o., Tovarniška cesta 7, 5270 Ajdovščina, Slovenia (opponent), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)
a g a i n s t
SC Intermark SRL, Lucian Blaga nr. 8, Stei Rumania (applicant), represented by Cabinet Beau de Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative).
On 29/03/2017, the Opposition Division takes the following
1. Opposition No B 2 506 700 is upheld for all the contested goods, namely
Class 32: Beer and brewery products; preparations for making beverages; non-alcoholic beverages.
2. European Union trade mark application No 13 763 701 is rejected for all the contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 763 701 namely against all the goods in Class 32. The opposition is based on, inter alia, Slovenian trade mark registration No 9 870 298. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
In the notice opposition the opponent indicated that the opposition was directed against all the goods and services in Classes 32 and 35 of European Union trade mark application No 13 763 701. However, in its submissions of 13/04/2015, the opponent explicitly limited the extent of the opposition to goods in Class 32.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of some of the trade marks on which the opposition is based, inter alia, Slovenian trade mark registration No 9 870 298.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 06/03/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Slovenia from 06/03/2010 to 05/03/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 1: Alcohol, especially ethyl alcohol.
Class 5: Dietetic products in particular for children and patients; dietetic substances with medical use; food for babies.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; fresh fruits and vegetables; seeds, natural plants; malt.
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; beer; non-alcoholic drinks of fruits or with addition of fruits; drinks with the fruit taste; vegetable drinks and juices; non-alcoholic vegetable drinks or drinks with vegetables; non-alcoholic fermented drinks.
Class 33: Alcoholic beverages (except beers); brandy; brandy; fruit brandy; pear brandy, in particular William pear brandy; plum brandy; herb brandy; bitter herb brandy, not included in other classes; grape brandy, herb brandy; liqueurs and brandy with fruit juices, vegetables, herbs, fruit, vegetable and herb extracts, and fruit; alcoholic fermented drinks.
Class 35: Advertising, business management, provisioning, managing, organizing consultations, exhibitions, lectures, courses, symposiums and other events for commercial or advertising purposes; economic services to third parties and advice in this area, the administrative databases; simple data processing (simple office work).
Class 39: Transportation; packing of goods; storage of goods; car rental.
Class 40: Processing of fruit, grapes, and cereals; processing of alcoholic and non-alcoholic beverages; processing materials; preserving of fruit and vegetables; processing of cocoa, chocolate and sugar confectionery; dietetic food processing.
Class 42: Orchard, vineyard and agricultural services; catering services; dispensing of alcoholic and non-alcoholic drinks and beverages; canteen services; computer data processing; scientific and industrial research; database management system not included in other classes.
However, for reasons of procedural economy, the Opposition Division will proceed to analyse the use of the earlier mark only in relation to part of the goods on which the opposition is based, namely those in Class 32.
According to Rule 22(3) EUTMIR, the evidence of use shall 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 05/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/03/2016 to submit evidence of use of the earlier trade mark. This deadline was extended until 10/05/2016. On 07/04/2016, within the time limit, the opponent submitted evidence of use.
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, inter alia, the following:
1. Catalogues written in Slovenian with pictures of juices and fruit beverages packages bearing the sign ‘FRUCTAL’.
2. Leaflet dated 2005 with pictures of different products, such as ‘FRUCTAL’ juices and syrups.
3. Advertisement leaflets dated between 1998 and 2014 written in Slovenian, where word and figurative signs ‘FRUCTAL’ are displayed, some of them in connection with fruit drinks.
4. Business reports dated 1995, 1997 and 1998, written in Slovenian and partially translated into English with information on the opponent’s business activity and profit and loss account and pictures of products such as ‘FRUCTAL’ juices, syrups, water or marmalades.
5. Script in Slovenian which includes the figurative sign .
6. Advertisement of ‘FRUCTAL’ beverages dated 2008.
7. Several documents written in Slovenian with pictures of ‘FRUCTAL’ stands and fruit juices.
8. Invoices dated between 2011 and 2016 addressed by the opponent to different clients in Slovenia. All of them are written in Slovenian. The description of goods contains references to ‘FRUCTAL’ beverages (fruit juices, ice tea and syrups).
The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices and pictures of packaging for instance, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The documents filed by the opponent clearly show that the place of use is Slovenia. This can be inferred from the language of the documents (Slovenian), and the currency and addresses included in the invoices for instance. Moreover, most of the evidence is dated within the relevant period. Therefore, the evidence relates to the relevant territory and period.
The documents filed, namely the numerous invoices and advertisements as well part of the data contained in the business reports provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
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.
In the description of goods included in the invoices issued by the opponent there are references to ‘FRUCTAL’. Moreover, images of products included in the evidence display the figurative sign . The Opposition Division considers that the use of this sign does not alter the distinctive character of the earlier word mark. This figurative sign reproduced in the evidence of use contains the distinctive element ‘FRUCTAL’ which is clearly visible. The figurative element placed on the top in form of a tree with fruits is a weak element as it alludes to the nature of the goods. Therefore, the use of the figurative elements must be regarded as an acceptable variation of the earlier mark. Moreover, the additional word element included in this sign, which compose a slogan that could be translated into English as ‘in collaboration with nature’, does not alter its distinctive character of the earlier mark because of its non-distinctive nature and since it is positioned below the mark ‘FRUCTAL’ and is of such a size that it is not predominant in that sign.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods In Class 32 covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case, the evidence proves use of the earlier mark ‘FRUCTAL’ in relation to the following goods:
Class 32: Fruit drinks and fruit juices; syrups non-alcoholic drinks of fruits or with addition of fruits; drinks with the fruit taste; vegetable drinks and juices; non-alcoholic vegetable drinks or drinks with vegetables; non-alcoholic fermented drinks.
As regards the remaining goods in Class 32, the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time. The evidence does not show that the earlier mark ‘FRUCTAL’ have been used in connection with water or beer.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
The applicant argues that since the sign ‘FRUCTAL’ does not appear directly on products, the evidence does not show use of the sign ‘FRUCTAL’ as a trade mark, but as a company name. However, the Opposition Division considers that since part of the documents submitted by the opponent show the use of the sign with a clear reference to specific goods, as in the description of goods included in the invoices, or in the pictures of products, the evidence does show use of the sign as a trade mark. These arguments of the applicant must therefore be rejected.
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 at least for part of the goods on which the opposition is based.
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.
As mentioned above, 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 Slovenian trade mark registration No 9 870 298.
- The goods
The goods on which the opposition is based are, among other goods and services, the following:
Class 32: Fruit drinks and fruit juices; syrups; non-alcoholic drinks of fruits or with addition of fruits; drinks with the fruit taste; vegetable drinks and juices; non-alcoholic vegetable drinks or drinks with vegetables; non-alcoholic fermented drinks.
The contested goods are the following:
Class 32: Beer and brewery products; preparations for making beverages; 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.
The contested preparations for making beverages includes, as a broader category, the opponent’s syrups. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods. Likewise, the contested broader category non-alcoholic beverages includes the opponent’s fruit drinks and fruit juices and therefore, they are deemed identical.
The contested beer and brewery products are similar to the opponent’s fruit drinks and fruit juices since, despite their different nature as alcoholic and non-alcoholic products, all are beverages with a similar purpose, directed at the same consumers and distributed through the same channels. Moreover, they are in competition with each other.
- 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 are directed at the public at large with an average degree of attention.
- The signs
Earlier trade mark
The relevant territory is Slovenia.
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 the seven letter word mark ‘FRUCTAL’ whereas the contested sign is a figurative mark composed of the word ‘FRUTTIA’ in white capital letters, depicted within a red label with a green leaf on the right corner, and underneath the word ‘KIDS’ in capital letters rimmed in black.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The earlier mark ‘FRUCTAL’ lacks any meaning for the relevant public. For the relevant Slovenian public, it has no elements that could be considered clearly more distinctive than others. Neither ‘FRU’ nor ‘FRUCT’ will be associated by the relevant public with ‘fruit’ as the Slovenian term is completely different, i.e. sadje.
The word ‘FRUTTIA’ of the contested mark has no meaning in relation to the relevant goods. Contrarily to the applicant’s arguments, neither this term as a whole nor any of its components such as ‘FRUT’ will be associated with ‘fruit’ by at least a significant part of the relevant public. Therefore, ‘FRUTTIA’ has a normal degree of distinctiveness for at least for this part of the public.
The word element ‘KIDS’ lacks any meaning for the majority of the relevant Slovenian public. However, it cannot be excluded that a part of the public with English knowledge may perceive it as the English term for children. Bearing in mind that the relevant goods are beverages and preparations for making beverages, this element is, for this part of the public, non-distinctive as it describes the target public. Moreover, the red label and the green leaf have a degree of distinctiveness lower than average because the former has a decorative nature and the latter alludes to the vegetal origin of the products.
The examination of the opposition will continue in relation to that part of the relevant Slovenian public with no English knowledge, for which none of the word elements of the signs will be associated with a meaning. For this part of the public, ‘KIDS’ has a normal degree of distinctiveness as it will be perceived as a fanciful term.
As a word mark, the earlier sign has no elements that could be considered more dominant (visually eye-catching) than others. In the case of the contested sign, the word element ‘KIDS’ is because of its secondary position and colours used in its representation, the visually less dominant element when comparing it with the rest of the elements that compose the sign.
Visually, the earlier sign and the first term of the contested sign coincide in the letters ‘FRU-T-A’. The first parts of the conflicting marks where consumers generally tend to focus when being confronted with a trade mark are therefore visually similar. The signs differ in the rest of the letters which compose these terms, namely ‘C-L’ in the earlier sign and ‘TI’ in the contested sign as well as in the additional word element ‘KIDS’ of the contested sign, which, as indicated above, is visually of less dominance.
Moreover, the signs also differ visually in the figurative elements of the contested signs. However, these elements have a low distinctive character. Additionally, it has to be borne in mind that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually similar to an average degree.
Aurally, the earlier sign and the first and more visually dominant element of the contested sign coincide in the sound of the letters ‘FRU-T-A’. The first parts of the conflicting marks where consumers generally tend to focus when being confronted with a trade mark are therefore aurally identical. The signs differ in the sound of the rest of the letters which compose these terms, namely ‘C-L’ in the earlier sign and ‘TI’ in the contested sign.
As to the word element ‘KIDS’ only present in the contested sign, it might not be pronounced by at least part of the relevant public because of its secondary position in the sign.
With this in mind, and bearing in mind that the pronunciation of the signs has a similar rhythm and intonation, the signs are considered aurally similar to a high degree.
Conceptually, while the public in the relevant territory will perceive the contested mark as including representation of a leaf, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, since this diverging element of the contested sign has a low distinctive character, it has a limited impact.
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.
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.
- Global assessment, other arguments and conclusion
The signs were found to be visually similar to an average degree and aurally similar to a high degree. Conceptually, the differences existing between the signs are due to the presence of a figurative element in the contested sign of low distinctive character with a reduced impact on the global perception of the trade mark. Also taking into account the fact that the similarities between the signs are found at the beginning of the signs, which will first capture the consumer’s attention, as well as the average degree of distinctiveness of the earlier mark, it is concluded that the differences between the signs are not sufficient to counteract the similarities between them for goods deemed to be identical or similar.
Furthermore, it should be borne in mind that part of 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 (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
In the light of the above considerations and taking into account 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, the Opposition Division 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 Slovenian trade mark registration No 9 870 298. 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 and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. The same is applicable as regards the opponent’s arguments about the existence of a family of marks.
As the earlier Slovenian trade mark No 9 870 298 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 (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Fabian GARCÍA QUINTO
Ana MUÑIZ RODRIGUEZ
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.