OPPOSITION No B 2 472 747

Edeka Zentrale AG & Co. KG, New-York-Ring 6, 22297 Hamburg, Germany (opponent), represented by Tim Christiansen, New-York-Ring 6, 22297 Hamburg, Germany (professional representative)

a g a i n s t

Regis Spólka z ograniczona odpowiedzialnoscia, ul. Walerego Slwka 3ª 30-633 Krakow, Poland (applicant), represented by Aleksandra Kacperska, Ul. Kupa 3/9 31-057 Krakow, Poland (professional representative).

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

DECISION:

1. Opposition No B 2 472 747 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 741 823. The opposition is based on German trade mark registration No 2 016 875. 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.

1. The goods

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

Class 32: Non-alcoholic beverages, beverages including fruit juices and vegetable juices, particularly made with bulk substances and/or minerals.

The contested goods are the following:

Class 5: Dietetic and nutritional preparations for medical purposes; Diet supplements; Vitamin and mineral products; Dietetic food, dietetic food containing energising supplements used in prophylaxis and in convalescence; Energising supplements used in prophylaxis and in convalescence; Nutritional and vitamin beverages; Fortified beverages for medical purposes; All the aforesaid being for humans.

Class 29: High-protein preparations, including concentrates and supplements, enriched with vitamins, mineral salts and amino acids; Meat extracts; Soups; Soup concentrates.

Class 30: Carbohydrate and high-energy preparations, including concentrates and supplements, enriched with vitamins, mineral salts and amino acids; Cereal bars; Energy food bars; High-protein cereal bars.

Class 32: Non-alcoholic beverages enriched with vitamins, mineral salts and amino acids; Whey beverages; Isotonic drinks; Fruit drinks and fruit juices; Fruit nectars; Protein, carbohydrate and energy beverages; Aerated and non-aerated mineral water.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention is deemed to vary from average to high. This is due to the fact that a higher degree of attention can be expected for those goods such as dietetic food containing energising supplements used in prophylaxis and in convalescence in Class 5 which may potentially affect the consumers’ state of health.

3. The signs

BOOSTER
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark, consisting of the word ‘BOOSTER’.

The contested sign is a figurative mark. It is made of the depiction of a stylized and humanized white rooster standing and keeping its arms against its hips. This element is placed on and almost entirely within a dark red circle. The mark is completed by the two words ‘ROOSTER BOOSTER’ depicted in white capital letter and displayed following a circular orientation in the left and upper side of the circle. The two letters ‘OO’ of the word ‘BOOSTER’ are partially covered by the rooster’s red comb. While the word ‘ROOSTER’ of the contested mark has no meaning for the relevant public, the word ‘BOOSTER’, which is the whole of the earlier mark and the second word of the contested sign, will be perceived with the same meaning as it has in English, that is to say something that increases power or effectiveness (see the German Duden dictionary on www.munziger.de).

Bearing in mind that the relevant goods are products or preparations which contain or might contain substances such as energising supplements, or that, in any case, can be consumed in order to increase power or effectiveness, the element ‘BOOSTER’ is weak for all these goods.

The marks in dispute have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘BOOSTER’, although in the case of the contested mark, it is depicted in a fanciful manner. However, this coinciding element is weak. On the other hand, they differ in all the additional distinctive elements of the contested mark, namely the first word ‘ROOSTER’, although it is true that this word shares most of its letters with the word ‘BOOSTER’ and the depiction of the stylized rooster.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BOOSTER’, present identically in both signs in the weak element ‘BOOSTER’. Also, the pronunciation coincides in the sound of the letter ‘-OOSTER’ of the word ‘ROOSTER’ of the contested mark, the equivalent of which can be found in the last letters of the word ‘BOOSTER’ of the earlier mark. The pronunciation only differs in the sound of the first letter ‘R’ of the word ‘ROOSTER’ of the contested mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the public in the relevant territory will perceive the earlier sign’s ‘BOOSTER’ and the contested sign’s word ‘BOOSTER’, which are weak elements, in the same manner. As the signs will be associated with a similar meaning, though limited to a weak element, they are deemed to be similar to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute were assumed to be identical and the degree of attention is deemed to vary from average to high.

The marks are only similar to a low degree. This is in particular due to the fact that the element that they have in common, namely the word ‘BOOSTER’, is weak.

When the marks share an element with low distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components.

A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical.

None of these latter circumstances can be referred to the present case.

First of all, the other elements of the contested mark are normally distinctive. The word ‘ROOSTER’ has no meaning in German and the depiction of a stylized rooster does not evoke any association or trigger any link when dealing with goods in Classes 5, 29, 30 and 32. Neither are these additional elements of the contested mark of insignificant visual impact. Furthermore, it is rather evident that the overall impression given by the mark is way far ways from being highly similar or identical.

In view of all the foregoing, and considering that the additional components of the contested mark are clearly perceivable, the Opposition Division deems that there are sufficient elements to exclude any likelihood of confusion on the part of the public between the marks, bearing also in mind that the common elements are of limited distinctiveness for the relevant public and are not the dominant elements of the signs.

This conclusion is valid even assuming that the goods are identical. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Karin KUHL

Andrea VALISA

Victoria DAFAUCE

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.