OPPOSITION No B 2 723 891

Jacobs Douwe Egberts Pl Spółka Z Ograniczoną Odpowiedzialnością, Taśmowa 7, 02-677, Warsaw, Poland (opponent), represented by Patpol Sp Z.O.o., Nowoursynowska 162 J, 02-776, Warsaw, Poland (professional representative)

a g a i n s t

Deco, Via Colli Euganei, 47, 35030 Saccolongo (PD), Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 723 891 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 15 215 701 for the word mark ‘PRIMA MUSA’. The opposition is based on Polish trade mark registration No 237 761 for the figurative mark . 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.

a) The goods and services

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

Class 30: Coffee, packed with filter, soft drinks based on coffee, coffee extracts, instant coffee, coffee substitutes, mixtures of coffee and coffee substitutes, tea, tea-based beverages, extracts, tea, cocoa, cocoa based beverages, chocolate and chocolate extracts in powder, granular and liquid, tapioca, sago, sweets, honey, molasses, baking powder, salt, mustard, vinegar.

Class 32: Beer.

The contested goods and services, after a partial refusal of the contested application and after a limitation, are the following:

Class 11: Coffee roasters; electric coffeepots; electrical coffee pots incorporating percolators; electric wireless coffeepots; electric coffee filters; automatic installations for making coffee; electric coffee percolators; electric coffee makers for household use; electric espresso machines; electric coffee brewers; expresso coffee machines; domestic coffee percolators [electric].

Class 21: Coffee pots; coffeepots, non-electric; non-electric coffee servers of precious metal; coffee pots not of precious metal; non-electric plunger style coffee makers; coffee percolators, non-electric; coffee grinders, hand-operated; non-electric coffee frothers; coffee services [tableware].

Class 43: Coffee supply services for offices [provision of beverages].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 Classes 11 and 21

The contested goods in Classes 11 and 21 are electric and non-electric devices which have all some connections with coffee as they are used to process it, to prepare it or to serve it. However, this is not sufficient to consider that these goods are similar to the opponent’s coffee products, such as coffee, packed with filter, soft drinks based on coffee, coffee extracts, instant coffee, coffee substitutes, mixtures of coffee and coffee substitutes in Class 30. The opponent claims a close connection between these goods and the contested goods in Classes 11 and 21 given that it is very common to sell the machines and the coffee together in the same outlets. However, the Opposition Division is of the opinion that this is not the rule in the market but, rather, the exception, and concerns only a few enterprises. The fact is that, in general, coffee is sold independently from the coffee machines. Whereas it is true that coffee and coffee machines are used together (in combination with each other), usually they do not have the same commercial origins and, when distributed through the same outlets, they usually appear in different sections. Also, the goods are not complementary in the sense that consumers would think that responsibility for the production of the goods lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

The contested goods and the opponent’s goods in Classes 30 and 32 have a different nature, purpose and method of use. They usually do not coincide in their commercial origin and, when distributed through the same outlets, they usually appear in different sections. They are neither complementary nor in competition. Therefore, these goods are dissimilar.

Contested services in Class 43

The contested coffee supply services for offices [provision of beverages] are similar to a low degree to the opponent’s mixtures of coffee because they may have the same distribution channels. Furthermore they are complementary to the extent that one is important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

	PRIMA MUSA
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 element ‘PRIMA’, which is the only verbal element in the earlier mark and the first verbal element in the contested sign, will be understood in Polish as ‘perfect, great’. As this element has a laudatory connotation, it is weak for the relevant goods and services.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The second verbal element ‘MUSA’ of the contested sign has no meaning in Polish but it cannot be excluded that part of the relevant public associate it with a misspelling of the Polish word ‘MUZA’ which means ‘muse’. In any case, this term has a normal degree of inherent distinctiveness as it does not describe any characteristics of the contested services found to be similar to a low degree.

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.

Visually and aurally, the signs coincide in the weak element ‘PRIMA’ of the earlier mark, and its sound, totally incorporated at the beginning of the contested sign. However, they differ in the distinctive second element ‘MUSA’ of the contested sign (and its sound) and, visually, in the stylisation and colours of the earlier mark. Although the common element ‘PRIMA’ is placed at the beginning of the contested sign and the initial part of a sign is the one that first catches the attention of the consumers, the fact that it has a limited distinctiveness is a major factor in the assessment of the overall impression given by the marks.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same concept of the weak element ‘PRIMA’, the signs are conceptually 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.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use on the Polish market for coffee products without giving details as regards the specific goods for which the earlier mark would have recognition from the relevant public. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Annexes 1 & 2: Slides containing the history, the performance and added value for consumers of the earlier mark. These documents seem to emanate from the opponent or from the group to which it belongs. It can be seen that, on 06/06/2014, the earlier mark ‘PRIMA’ had been introduced on the Polish market over 25 years ago. These documents indicate for example that the market share of the earlier mark has been growing from 1998 until 2013 and that 15% of share in the R&G (roast and ground) market ranks the ‘PRIMA’ coffee in third position among the coffee brands sold in Poland in 2013 (data exported in 2014 from AC Nielsen). It can be also inferred from these items that, in Poland, the prompted brand awareness of the mark ‘PRIMA’ maintained its level between 90% and 91% during the period 2011-2013 (source: Brand Tracking [Brand Equity Measurement] Millward Brown, 2013).

 Annex 3: Awards and certificates granted for the coffee ‘PRIMA’ by consumers in the years 2010 and 2011 in Poland (‘Quality Product Consumer’ choice 2010 [award organised by ‘Forum Biznesu’], Title of ‘Top Brand 2011’ [no information is provided in relation to the organiser]).

Having examined the material listed above, the Opposition Division concludes that the opponent has not demonstrated that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market. Most of the evidence seems to be internal documents elaborated by the opponent itself or from the group to which it belongs or documents of unknown origin and/or nature which are unsigned. Information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin.

The data contained in the documents submitted by the opponent does not have sufficient credibility because, even though external sources are mentioned, no information has been provided about the marketing research firms in question and a copy of the original surveys has not been submitted. Moreover, the evidence does not show if such information is publicly available and/or has been compiled for official purposes. It contains information and data that cannot be objectively verified, that do not reproduce statements made in public and/or that are supported by original and independent documents. Therefore, their probative value is very low and is considered insufficient. As regards the two items of evidence related to the awards and certificates, one (‘Top Brand 2011’) is of unknown origin and none of them demonstrates the renown of the awards in question and their possible effect on the public.

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 the opponent’s goods, amongst others, for the mixtures of coffee considered similar to a low degree to the contested services in Class 43.

e) Global assessment, other arguments and conclusion

The contested goods in Classes 11 and 21 are dissimilar to the opponent’s goods. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The contested services in Class 43, considered similar to a low degree, are directed at business customers with specific professional knowledge or expertise whose degree of attention has been considered average in this case. The signs are visually, aurally and conceptually similar to a low degree because the term ‘PRIMA’ has a low degree of distinctiveness and because the additional word ‘MUSA’ of the contested sign, which is distinctive, is the element in the sign that really helps Polish consumers to identify the commercial origin of the services.

The opponent claimed high distinctiveness of its earlier mark as result of its long-standing and intensive use in Poland, claiming therefore a broader protection for its mark. However, the opponent has not demonstrated that the earlier trade mark has acquired a high degree of distinctiveness.

Taking into account the degree of inherent distinctiveness of the earlier mark, the degree of similarity found for the contested services and the degree of similarity between the signs, all considered to be low, it is considered that the differences between the signs are clearly sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

COSTS

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Frédérique SULPICE

Benoit VLEMINCQ

Helen Louise MOSBACK

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.