OPPOSITION No B 2 265 612

Vrumona B.V., Vrumonaweg 2, 3981 HT Bunnik, Holland (opponent), represented by Chiever B.V., Barbara Strozzilaan 201, 1083 HN Amsterdam, Netherlands (professional representative)

a g a i n s t

Lp Drinks, 9 Place Kléber, 67000 Strasbourg, France (applicant), represented by Cabinet Laurent & Charras, 1A place Boecler, 67100 Strasbourg, France (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 265 612 is upheld for all the contested goods.

2. European Union trade mark application No 11 886 405 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 886 405. The opposition is based on, inter alia, international trade mark registration designating the European Union No 911 387. 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 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 international trade mark registration designating the European Union No 911 387.

1. The goods

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

Class 30: Beverages made with coffee; beverages made with tea.

Class 32: Non-alcoholic beverages, aerated mineral water and other non-alcoholic beverages containing plant extracts, spices and vitaminized preparations, including fruit drinks and fruit juices.

The contested goods are the following:

Class 32: Aperitifs, non-alcoholic; cocktails, non-alcoholic; non-alcoholic beverages.

Class 33: Wine; alcohol-based apéritifs; brandy; spirits [beverages]; liqueurs; digesters (liqueurs and spirits); cocktails; alcoholic beverages (except beers).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested non-alcoholic beverages are identically contained in both lists of goods.

The contested aperitifs, non-alcoholic; cocktails, non-alcoholic are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

Contested goods in Class 33

Non-alcoholic beverages in Class 32, such as mineral and aerated waters, on the one hand, and alcoholic beverages (except beers) in Class 33, on the other, 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. Therefore, they are similar to a low degree.

Accordingly, the contested wine; alcohol-based apéritifs; brandy; spirits [beverages]; liqueurs; digesters (liqueurs and spirits); cocktails; alcoholic beverages (except beers) are similar to a low degree to the opponent’s non-alcoholic beverages in Class 32.

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 or similar to a low degree are directed at the public at large. The degree of attention may vary from average (in relation to inexpensive, non-alcoholic beverages) to high (in relation to expensive, sophisticated beverages and/or those that are purchased infrequently).

3. The signs

CLIMAX
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public.

The earlier mark is a word mark consisting of the verbal element ‘CLIMAX’.

The contested sign is a figurative mark consisting of the verbal element ‘KLYMAXS’ in upper case letters in a slightly stylised black font. The space between the first and the second letters, ‘K’ and ‘L’, is filled by a grey triangle pointing to the left. The letters ‘L’, ‘M’ and ‘A’ of the contested signs have rounded angles. Moreover, the letter ‘X’ is longer than the other letters.

The conflicting marks have no elements that could be considered clearly more distinctive or dominant than other elements.

The verbal element ‘CLIMAX’ will be perceived by the Italian-speaking part of the relevant public as a ‘rhetorical device by which a series of sentences, clauses, or phrases are arranged in order of increasing intensity’ or, in medicine, as the higher stage of a disease (information extracted from Dizionario Treccani at http://www.treccani.it/vocabolario/climax/ on 15/06/2016). The verbal element ‘KLYMAXS’ has no particular meaning in the relevant territory; however, part of the public may perceive it as a misspelling of ‘CLIMAX’.

The conflicting marks have no particular meaning in relation to the relevant goods; therefore, they have a normal degree of distinctiveness.

Visually, the signs coincide in the letters ‘*L*MAX’. However, they differ in the first letters, ‘C/K’, in the third letters, ‘I/Y’, and in the last letter of the contested sign, ‘S’, which has no counterpart in the earlier mark. Moreover, the signs differ in the figurative elements of the contested sign, that is the slight stylisation and the grey triangle, which have no counterparts in the earlier mark.

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 similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CLI‑MACS’, present identically in both signs, as the pronunciations of the pairs of letters ‘C/K’, ‘I/Y’ and ‘XS/X’ are identical. Therefore, the signs are aurally identical.

Conceptually, the relevant public in the relevant territory will perceive the earlier sign as a ‘rhetorical device by which a series of sentences, clauses, or phrases are arranged in order of increasing intensity’ or, in medicine, as the higher stage of a disease. The contested sign has no particular meaning in the relevant territory; however, part of the public will perceive it as a misspelling of the word ‘CLIMAX’. For this part of the public, the sign are conceptually identical. For the part of the public for which the contested sign does not convey any meaning, the signs are not conceptually similar.

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 is normal.

5. Global assessment, other arguments and conclusion

The signs were found to be visually similar to an average degree, aurally identical and conceptually identical for the part of the public that perceives the contested sign as a misspelling of the word ‘CLIMAX’.

The relevant goods were found to be identical or similar to a low degree.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the Opposition Division considers that it is important to take into account the impact of the method of purchase of the goods. The Court has stated that when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods and the way they are marketed (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

The category of goods involved may increase the importance of one of the aspects of similarity between signs (visual, aural or conceptual) because of the manner in which goods are ordered and/or purchased.

For instance, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T‑40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T‑332/04, Coto d’Arcis, EU:T:2008:69, § 38).

In the present case, the signs are aurally identical, since they are both pronounced as ‘CLI‑MACS’. The relevant goods are often ordered verbally in bars or clubs; therefore, the aural similarity has a stronger impact in evaluating the likelihood of confusion and the visual differences resulting from the differing letters ‘K’, ‘Y’ and ‘S’ of the contested sign would be irrelevant.

Moreover, 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 present case, the presence of three different letters and the slight stylisation of the contested signs are not sufficient to exclude a likelihood of confusion, because consumers generally do not proceed to analyse the various details of a trade mark but usually refer to a mark by its verbal component.

Therefore, on an overall assessment, and in particular against the background of the principle of interdependence mentioned above, the aural and conceptual identity, the latter for at least part of the public, and the visual similarity of the signs suffice to create a likelihood of confusion, within the meaning of Article 8(1)(b) EUTMR, even for those goods found to be similar to a low degree and to which the public will pay a high degree of attention during their purchase.

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

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 911 387. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right international trade mark registration designating the European Union No 911 387 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).

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

Victoria DAFAUCE MENÉNDEZ

Agueda MAS PASTOR

Judit NÉMETH

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.