OPPOSITION No B 2 646 100

Lany Investment Corporation Limited, Tal-Qroqq Street, Tower Gate Place, Msida MSD 1703, Malta (opponent), represented by Tomáš Sum, Budějovická 1550/15a, 140 00 Praha 4, Czech republic (professional representative)

a g a i n s t

Regner Legacy LLC, 31121 Via Colinas Suite 1005, Westlake Village California 91362, United States of America (applicant), represented by Daniel Blyšťan, Užhorodská 21, 040 01 Košice, Slowak Republic (professional representative).

On 19/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 646 100 is upheld for all the contested goods.

2. European Union trade mark application No 14 665 608 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 14 665 608. The opposition is based on International trade mark registration No 962 727 designating the European Union. The opponent invoked Article 8(1)(a) and (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: Mineral waters, aerated drinks and other non-alcoholic drinks, fruit drinks and juices, syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Squashes [non-alcoholic beverages]; mineral water [beverages]; spring water; still water; glacial water; aerated water; preparations for making aerated water; flavoured mineral water; aerated water [soda water]; carbonated mineral water; bottled drinking water; seltzer water.

Contested goods in Class 32

Mineral water [beverages] are identically contained in both lists of goods (including synonyms).

The contested spring water; still water; glacial water; flavoured mineral water; carbonated mineral water; bottled drinking water are included in the broad category of, or overlap with, the opponent’s mineral waters. Therefore, they are identical;

The contested aerated water; aerated water [soda water]; seltzer water are included in the broad category of the opponent’s aerated drinks. Therefore, they are identical.

The contested preparations for making aerated are included in the broad category of the opponent’s water preparations for making beverages. Therefore, they are identical.

The contested squashes [non-alcoholic beverages] are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is deemed average

3. The signs

	MY AQUA CUBE.
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 Greek-speaking part of the relevant public.

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 word ‘aqua’ written in small standard lower case followed by a square device made of the word ‘CUBE’ in slightly stylised bold uppercase in which the first two letters and the last two letters are placed on two levels.

The contested sign is a word mark made of the words ‘MY AQUA CUBE’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The signs at issue have no elements that could be considered more distinctive than other elements.

The contested mark has no element that could be considered more eye-catching (dominant) than other elements whereas, in the earlier sign, the element ‘CUBE’ is the more eye-catching element of the sign and, therefore, dominant.

Visually, the signs coincide in the elements ‘AQUA’ and ‘CUBE’ albeit that these are represented in a specific way in the earlier mark whereas they are not in the contested sign. However, in this respect it deserves to be noted 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).

Apart from this difference in stylisation, the signs differ further in the additional element ‘MY’ of the contested sign.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters
/A-Q-U-A/-/C-U-B-E/, present identically in both signs. The pronunciation differs in the sound of the letters ‘M-Y’ of the contested mark, which have no counterparts in the earlier mark.

Therefore, the signs are highly similar.

Conceptually, the signs at issue have no meaning whatsoever for the Greek-speaking public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

As mentioned above, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Canon, § 17). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods at issue are identical and the signs are visually and aurally similar to a high degree in that both word elements of the earlier mark are fully incorporated in the same order in the contested sign. The earlier mark is distinctive to a normal degree and the degree of attention of the relevant public is deemed average.

In view of the foregoing and taking into account all the relevant factors in the present case, the Opposition Division considers that there is a likelihood of confusion on the part of the on the part of the Greek-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 No 962 727 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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(1)(a) EUTMR.

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

Sandra IBAÑEZ

Martina GALLE

Benoit VLEMINCQ

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.