St. Nikolaus Quelle | Decision 2462144 - ST. NICOLAUS a.s. v. Hans-Walter Frühauf

OPPOSITION No B 2 462 144
St. Nicolaus a.s., Ul. 1. mája 113, 031 28 Liptovský Mikuláš, Slovakia (opponent),
represented by G. Lehnert, K.S., Budova Orbis, Rajská 7, 811 08 Bratislava,
Slovakia (professional representative)
a g a i n s t
Hans-Walter Frühauf, Am Sauerbrunnen 21-23, 55767 Schwollen, Germany
(applicant), represented by Jörg Wagner, Monaiser Str. 21, 54294 Trier, Germany
(professional representative).
On 20/10/2017, the Opposition Division takes the following
1. Opposition No B 2 462 144 is upheld for all the contested goods.
2. European Union trade mark application No 13 303 649 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 303 649 for the word mark, ’St. Nikolaus Quelle’. The opposition is
based on, inter alia, Slovak trade mark registration No 233 732 for the word mark,
’ST. NICOLAUS‘. The opponent invoked Article 8(1)(b) EUTMR.
1- As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No
2868/95 have been repealed and replaced by Regulation (EU) 2017/1001
(codification), Delegated Regulation (EU) 2017/1430 and Implementing
Regulation (EU) 2017/1431, subject to certain transitional provisions. All the
references in this decision to the EUTMR, EUTMDR and EUTMIR shall be
understood as references to the Regulations currently in force, except where
expressly indicated otherwise.
2- In its observations of 24/08/2016 and 18/04/2017, the applicant argues that
the earlier marks are not substantiated in as much as the certificates
submitted by the opponent do not contain the translation of the goods and
services. In this sense, the Opposition Division refers to its Guidelines for
Examination in the Office, Part C, Opposition, page 47 where it is clearly state
that when the entire original document is in the language of the proceedings
except for the list of goods and services, there will be no need to provide a
complete translation following the structure of the original document. In this
case, it is acceptable if only the goods and services on which the opposition
is based have been translated separately in the notice of opposition, or in
Decision on Opposition No B 2 462 144 page: 2 of 5
documents attached thereto or submitted later within the time limit to
substantiate the opposition. In the present case, the opponent’s goods and
services were indicated in the language of the opposition in the notice of
opposition. The earlier rights are therefore duly substantiated.
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 more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Slovak trade mark registration No 233 732 for the word mark, ’ST.
NICOLAUS‘ which is not subject to the proof of use requirement.
a) The goods
The goods on which the opposition is based are, inter alia, the following:
Class 32: Non-alcoholic beverages.
The contested goods are the following:
Class 32: Flavoured carbonated beverages; juices; waters; isotonic drinks.
The contested flavoured carbonated beverages; juices; waters; isotonic drinks are
included in the broad category of the opponent’s non-alcoholic beverages. Therefore,
they are identical.
b) 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 at the public at
large. The degree of attention is considered to be average.
Decision on Opposition No B 2 462 144 page: 3 of 5
c) The signs
St. Nikolaus Quelle
Earlier trade mark Contested sign
The relevant territory is Slovakia.
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 coinciding element ’ST.’ is the English abbreviation for saint’ that could be
understood by part of the relevant public whose level of English is average. For the
rest of the public, it would not have any meaning. In any case, the letters are
distinctive, as they do not refer to the contested goods.
The elements ’Nicolaus’ of the earlier sign and ’Nikolaus’ of the contested sign refer
to the name ’Nicholas’. Depending on the public, whether they see ’ST. as an
abbreviation of Saint or not, the elements ’ST. NICOLAUS (earlier sign) and ’St.
Nikolaus’ (contested sign) will refer to the Saint Nicholas or simply to the name
Nicholas. However, these elements are normally distinctive for the goods at stake.
The element ‘QUELLE of the contested sign has no meaning in Slovak. It is also of a
normal distinctiveness for all the contested goods.
Visually, and given that the signs are word marks, which means that differences in
the use of lower or upper case letters are immaterial, they are similar to a high
degree as they coincide in their first element ‘St.’ and in a very similar element
’Nicolaus’ vs ’Nikolaus’ (one letter difference). They only differ in the last word ‘Quelle’
present only in the contested sign.
Consumers generally tend to focus on the beginning of a sign when they encounter a
trade mark. This is because 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.
Aurally, the pronunciation of the signs coincides in the sound of the words ‘St.
Nicolaus‘ (earlier sign) and ’St. Nikolaus‘ (contested sign), as the letters ’c’ and ’k’ are
pronounced identically. The pronunciation differs in the sound of the last word ‘quelle
of the contested sign. Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived, by part of the public,
as referring to the same concept, while the word ‘quelle’, and for part of the relevant
public also ‘ST’ is meaningless, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 462 144 page: 4 of 5
d) 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.
Although the opponent argued that it is the largest and best known producer of
alcoholic beverages in the Slovak Republic, it 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
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The contested goods are identical to the opponent’s goods, the level of attention is
considered average and the distinctiveness of the earlier mark is normal.
The signs are visually, aurally and conceptually similar to a high degree.
In addition, account should also be taken of the fact that the average consumer only
rarely has the chance to make a direct comparison between the different marks and
must place his trust in the imperfect picture of them that he has kept in his mind
(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The applicant argued that there are a number of European trade marks using the
word ‘Nicholas’ and it submitted a list of marks that use this word for goods in Class
32. In this respect, the Opposition Division notes that the existence of several trade
mark registrations is not per se particularly conclusive, as it does not necessarily
reflect the situation in the market. In other words, on the basis of data concerning a
register only, it cannot be assumed that all such trademarks have been effectively
used. It follows that the evidence filed does not demonstrate that consumers have
been exposed to widespread use of, and have become accustomed to trade marks
which include ‘St. Nicholas’. Under these circumstances, the applicant’s claim must
be set aside.
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 Slovak trade
mark registration No 233 732 for the word mark, ’ST. NICOLAUS. It follows that the
contested trade mark must be rejected for all the contested goods.
As this earlier right 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 nor the
Decision on Opposition No B 2 462 144 page: 5 of 5
prove of use requested for the other earlier rights (16/09/2004, T-342/02, Moser
Grupo Media, S.L., EU:T:2004:268).
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.

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