OPPOSITION No B 2 907 379

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830 Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

Fusion Weymax S.L., C/ del Cid 19, Puerta 5, 46980 Paterna, Spain (applicant), represented by Pons Consultores de Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 12/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 907 379 is upheld for all the contested goods.

2. European Union trade mark application No 16 440 307 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 440 307 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 13 025 036 for the word mark ‘HAPPY DAY’. The opponent invoked Articles 8(1)(b) and 8(5) 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 European Union trade mark registration No 13 025 036, as mentioned above, which cannot be subject to the use obligation because at the date of filing of the contested sign, namely on 06/03/2017, the earlier mark has not been registered for at least five years (date of registration of the earlier mark 15/01/2015).

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectars; fruit nectar beverages; vegetable juice, vegetable beverages and vegetable juices [beverages]; syrups and other preparations for making beverages; energy drinks; lemonades; non-alcoholic beverages, in particular with fruit flavouring; smoothies; flavoured water-based and/or tea-based beverages; water-based beverages; coconut juice; coconut water; tomato juice; non-alcoholic beverages made with fruits; non-alcoholic fruit extracts; fruit juice concentrate; cocktails, non-alcoholic; isotonic drinks; non-alcoholic beverages with coffee components or a coffee flavour, non-alcoholic energy drinks with coffee components or a coffee flavour; must; non-alcoholic aperitifs; non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; whey beverages; non-alcoholic beverages with tea flavor; coffee flavoured soft drinks; non-alcoholic beverages with fruit flavouring; non-alcoholic beverages containing fruits or fruit extracts; non-alcoholic beverages with a tea taste or tea flavour; non-alcoholic beverages with a coffee taste or coffee flavour; non-alcoholic beverages containing tea or tea extracts; non-alcoholic beverages containing coffee or coffee extracts; syrups for beverages; fruit syrups and other non-alcoholic fruit preparations for making non-alcoholic beverages.

The contested goods are the following:

Class 32: Beer.

The contested product is identically mentioned in the opponent’s specification, albeit in plural.

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.

The applicant argues that although the products in question are in the same class, their nature, their public and their channels of trade are different. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

In the present case, the goods found to be identical are directed at the public at large with a normal degree of attentiveness.

c) The signs

HAPPY DAY
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, both signs contain verbal elements made up of English words. The earlier mark will, therefore, be understood by the English-speaking part of the public as referring to a joyful 24 hour time, whereas ‘HAPPY’ in the contested sign will be understood as referring to feelings of pleasure. These elements are not descriptive or evocative of the characteristics of the relevant goods and, are therefore, distinctive to a normal degree. In view of the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

As to the figurative elements of the contested sign, 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).

In its observations, the applicant argues that the figurative representation of beers and wheat have a high degree of distinctiveness.

Firstly, it must be pointed out that it is settled case law that only the reputation or high distinctiveness of the earlier mark will be taken into account in the assessment of the likelihood of confusion, but the applicant cannot rely on the reputation of its younger mark (inter alia, 19/04/2013, T 537/11, Snickers, EU:T:2013:207, § 55).

Furthermore, the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, this applicant’s claim must be set aside.

Additionally, the representation of three glasses filled with liquid (‘beers’, as referred to by the applicant) will be perceived by the relevant public as a direct reference to the goods in question and, therefore, it is non-distinctive for them. The remaining figurative elements will not have much impact on the overall impression conveyed by the contested sign, since they are less relevant than the verbal element ‘HAPPY’, as stated above. Consequently, their role within the contested sign will be limited.

As to the dominant elements of the contested sign, the Opposition Division respectfully disagrees with the applicant’s contention that the figurative elements are very particular and will attract more consumers’ attention that the verbal element present below. Although it is true that their representations occupy a large space in the sign, it is also clear that they do not overshadow the verbal element ‘HAPPY’, placed below, which is sufficiently large in size to be readily noticed and read.

In its observations, the applicant refers to the previous decisions of the Office, in particular, to the opposition decisions No B 2 491 770 and No B 2 509 548 to support its arguments that the graphic elements of the contested sign have a great impact on the assessment of the likelihood of confusion in the present case.

However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The Opposition Division observes that in the cases mentioned by the applicant, the figurative elements are minimal and they play rather a decorative function within them (opposition case No B 2 509 548 - partially upheld) and the second opposition case mentioned in the applicant’s observations has been rejected (opposition case No B 2 491 770), due to the fact that the coincidence between the signs was limited to a lowly distinctive element and there were additional verbal elements present in the contested sign.

Consequently, the applicant’s arguments must be put aside and the Opposition Division reiterates the above-mentioned findings.

Visually, the signs coincide in the word ‘HAPPY’, which is the sole verbal element of the contested sign and is included as an independent and distinctive element at the beginning of the earlier mark. 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.

The signs differ in the second word of the earlier mark, ‘DAY’. They differ also in the figurative elements and colours of the contested sign, which, as analysed above, are either non-distinctive or their impact will be lesser than that of the verbal element ‘HAPPY’.

Therefore, considering that the only verbal and distinctive element of the contested sign, ‘HAPPY’, reproduces the first element of the earlier mark, the sign are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘HAPPY’, constituting the only verbal element of the contested sign and it is present at the beginning of the earlier mark. The pronunciation differs in the sound of the second element, ‘DAY’, of the earlier mark, which has no counterpart in the contested sign.

Consequently, considering the average distinctiveness of the coinciding element ‘HAPPY’ and the fact that it is the only verbal element of the contested sign, the marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In the present case, although the expression ‘HAPPY DAY’ of the earlier mark will be perceived as such by the relevant public, the same public will be also aware of the semantic content of the word ‘HAPPY’, which is also the sole word in the contested sign. As analysed above, this word is inherently distinctive in relation to the goods at issue and, therefore, this coincidence generates an average degree of conceptual similarity between the marks.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

The conflicting goods are identical and they are directed at the public at large with a normal degree of attention.

The distinctiveness per se of the earlier mark is normal.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common distinctive word ‘HAPPY’, which is the first word within the earlier mark and the only verbal element of the contested sign.

As explained above, the additional elements present in both signs either occupy a less prominent position within the sign (i.e. the verbal element ‘DAY’ of the earlier mark) or they have a reduced impact on the assessment of the likelihood of confusion between the signs in question since they are limited to the figurative elements present in the contested sign. As it has been explained above, these figurative elements are either non-distinctive or, in any case, less relevant than the verbal element ‘HAPPY’. As a result, these differing elements are not sufficient to exclude a likelihood of confusion between the marks under dispute resulting from their coinciding distinctive element ‘HAPPY’.

Furthermore, It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Consequently, although, the marks differ in the additional word ‘DAY’ of the earlier mark, given the reproduction of the distinctive and sole verbal element ‘HAPPY’ in the contested sign, it is likely that the relevant public will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In the present case, the relevant consumers may legitimately believe that the contested sign is a new figurative brand line of goods provided under the opponent’s ‘HAPPY DAY’ mark, because the incorporation into a mark of additional verbal and/or figurative elements is a common market practice.

Furthermore, account is taken of the interdependence principle mentioned above and of the fact that in the present case the conflicting goods are identical.

In its observations, the applicant argues that there are a lot of EUTMs registered that include the word ‘HAPPY’ in relation to the goods in Class 32 and it submits a copy of the page from the EUIPO e-Search database.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking part of the public and, therefore, the opposition is well founded on the basis of the European Union trade mark registration No 13 025 036. 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.

If follows that the contested trade mark must be rejected for the contested goods.

Given that the opposition is well founded on the basis of the earlier European Union trade mark registration No 13 025 036, on which the opposition was based and which cannot be subject to the use obligation, as mentioned above, it is also unnecessary to examine the evidence of use filed by the opponent in relation to the remaining earlier rights.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 13 025 036 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).

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 (5) EUTMR.

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 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

Martina GALLE

Monika CISZEWSKA

Marta GARCÍA COLLADO

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.