OPPOSITION No B 2 930 637

Promieso S.A., 29, Duchscherstrooss, 6868 Wecker, Luxembourg (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Raquel Dominguez Rueda and Jovita Lorenza Martinez Talaya, C/ Rosales Nº 17, 28794 Guadalix de la Sierra Madrid, Spain (applicants), represented by Manuel López-Leis González, María de Molina 56 - 4º, 12, 28006 Madrid, Spain (professional representative).

On 25/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 930 637 is upheld for all the contested goods.

2. European Union trade mark application No 16 453 921 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 46 453 921 ‘FEEL ME’ (word mark). The opposition is based on European Union trade mark registration No 11 987 088 (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.

1. The goods

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

Class 32: Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers); Alcoholic beverages containing fruit; Alcoholic beverages, except beer; Alcoholic essences; Alcoholic extracts; Anise [liqueur]; Anisette [liqueur]; Aperitifs; Arak [arrack]; Bitters; Brandy spirits; Cider; Cocktails; Curacao; Digesters [liqueurs and spirits]; Distilled beverages; Fruit extracts, alcoholic; Gin; Hydromel [mead]; Kirsch; Liqueurs; Nira [sugarcane-based alcoholic beverage]; Peppermint liqueurs; Perry; Piquette; Pre-mixed alcoholic beverages, other than beer-based; Rice alcohol; Rum; Sake; Spirits [beverages]; Vodka; Whisky; Wine.

Class 43: Services for providing food and drink.

The contested goods are the following:

Class 32: Beer; Non-alcoholic beverages; Waters; Preparations for making beverages; Juices.

Class 33: Alcoholic beverages (except beer).

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

Preparations for making beverages and non-alcoholic beverages are identically contained in both lists of goods (albeit using slightly different wordings).

The contested waters and juices are identical to the opponent’s non-alcoholic drinks because the contested goods are included in the opponent’s goods.

The contested beer is highly similar to the opponent’s other non-alcoholic drinks, since they serve the same purpose and can have the same producers, consumers and distribution channels. Moreover, they are in competition with each other.

Contested goods in Class 33

Alcoholic beverages (except beer) are identically contained in both lists of goods.

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 highly similar are directed at the public at large. The degree of attention is considered average.

3. The signs

	FEEL ME
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 earlier sign is a figurative mark composed of the words ‘i feel’ written one above the other in stylised grey lower case letters. ‘feel’ is an English verb meaning ‘to experience a particular physical sensation or emotion’. Consequently ‘i feel’ will be understood by the English-speaking part of the relevant public as the first person singular of the verb ‘feel’. However, for the remaining part of the public, it has no meaning. In any case, there is no relation between the verbal element and the relevant goods. Therefore, this element is distinctive. The stylisation of the earlier mark plays a secondary role, as it serves a merely decorative purpose.

The contested sign is a word mark consisting of the words ‘FEEL ME’. As far as word marks are concerned, it is irrelevant whether they are written in lower case or upper case letters or a combination of both (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57). In word marks, in principle, the word itself is protected, not its written form. Therefore, in the present case, it is irrelevant whether the contested sign is depicted in title case or upper case letters. For the English-speaking part of the relevant public, ‘FEEL ME’ is a non-standard phrase used to see if someone understands what the speaker is talking about or to gain reassurance that the listener sympathises or empathises with the speaker. The remaining part of the public will not associate this element with any meaning. In any case, it does not relate to the relevant goods and is distinctive.

Visually, the signs coincide in the word ‘feel’. They differ in the letter ‘i’ and the stylisation of the letters in the earlier mark, as well as in the word ‘me’ in the contested sign. Therefore, the signs are visually similar to an average degree.

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 word ‛feel’, present identically in both signs. The pronunciation differs in the sound of the letter ‛i’ in the earlier mark and in the sound of the letters ‘me’ in the contested sign, neither of which has a counterpart in the other sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the English-speaking part of the public, both signs refer to experiencing certain sensations, emotions or moods (sympathy/empathy). Therefore, for this part of the public, the signs are conceptually similar to at least a low degree. For the remaining part of the relevant public, neither of the signs has a meaning. 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

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).

In the present case, the goods are identical or highly similar. They target the general public, which has an average degree of attention. The earlier mark enjoys a normal degree of distinctiveness. The signs are visually and aurally similar to an average degree and they have at least a low degree of conceptual similarity for the part of the public that perceives the meanings conveyed by the marks. For the remaining part of the public, the conceptual aspect does not affect the assessment of the similarity of the signs. The signs have the word ‘feel’ in common. The other word elements in the signs are only one- or two-letter additions that are rather unlikely to differentiate the signs, as the consumers’ attention will naturally focus on the central coinciding element by which the marks can be easily identified. The stylisation of the earlier mark is of significantly limited importance, if any, as it serves a merely decorative purpose.

In addition, account must be 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).

Therefore, based on the principle of imperfect recollection and also having regard to the principle of interdependence, it is considered that the similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods, which are identical or highly similar, come from the same undertaking or economically linked undertakings. The relevant public could therefore believe that the contested sign is a modification of the earlier mark based on the same core element and perhaps used for a different line of products.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 987 088. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicants are the losing party, they 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

Jessica LEWIS

Arkadiusz GORNY

Ana MUÑÍZ RODRÍGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.