CANCELLATION No 32 181 C (INVALIDITY)

Krungsiam Beverage Co., Ltd, 413 Moo 2, Banklongsuan, Prasamutjadee, Samutprakarn 10290, Thailand (applicant), represented by Frkelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Hansen Oda, Overvindingevej 69, 4760 Vordingborg, Denmark and Thyge Foss, 110 Charles Street East, Toronto m4y1t5, Ontario, Canada (EUTM proprietors).

On 12/02/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 16 545 121 is declared invalid in its entirety.

3. The EUTM proprietors bear the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 16 545 121 ‘COMANDOR NRG DRINK’ (word mark), namely against all the goods in Class 32. The application is based on European Union trade mark registration No 15 175 599 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion on the part of the public on account of the identity between the goods and the high similarity between the signs, considering that the differing elements ‘NRG DRINK’ would be understood as ‘energy drinks’ and were therefore descriptive of the relevant goods, while the dominant elements in each sign were highly similar.

The EUTM proprietors argued in reply that the applicant failed to provide information regarding the goods on which the invalidity request was based and did not submit any evidence relating to the recognition of its trade mark on the market. Furthermore, they argued that the signs were visually, aurally and conceptually dissimilar. In particular, they pointed out that the signs should be examined as a whole, taking into account all components in each sign, and not only on the basis of the dominant element. They also stated that the letters ‘NRG’ of the contested sign were not descriptive since there was no official recognition that they stood for the word ‘energy’. They also put forward that the large figurative element of the earlier mark was particularly striking and contributed to visually distinguishing the signs. The EUTM proprietors concluded that there was a low likelihood of confusion, which was not enough to uphold the cancellation request in the absence of any information regarding the beverages sold under the earlier mark and its level of market recognition.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based are the following:

Class 32: Coffee-flavored soft drinks; fruit juices; fruit drinks; fruit-based soft drinks flavored with tea; non-alcoholic beverages; non-alcoholic beverages flavored with tea; soft drinks; vegetable juices [beverages].

The contested goods are the following:

Class 32: Non-alcoholic beverages.

The contested non-alcoholic beverages are identically contained in both lists of goods. They are, therefore, identical.

It must be noted that, in order to assess the similarity of the goods at issue under Article 8(1)(b) EUTMR, only the goods for which the trade marks are protected must be taken into account, and not the goods actually or allegedly sold under the signs (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

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, whose degree of attention will be average.

3. The signs

	Comandor NRG Drink
Earlier trade mark	Contested trade mark

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.

Given that the signs are composed of word elements that are meaningful in English, and in view of the considerations below regarding the distinctiveness of the signs’ elements and their conceptual comparison, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the verbal element ‘COMMANDO’, depicted in slightly stylised bold upper-case letters, and, above it, a figurative element of two standing bears separated by a polygon shape.

The verbal element ‘COMMANDO’ will be understood by the relevant consumers as referring to ‘a group of soldiers who have been specially trained to carry out surprise attacks’ (information extracted from Collins Dictionary on 03/02/2020 at https://www.collinsdictionary.com/dictionary/english/commando). Since it has no clear meaning in relation to the relevant goods, it is distinctive to an average degree.

Likewise, the figurative elements have no link to the relevant goods in Class 32, and therefore they are distinctive to an average degree.

The earlier mark does not have any element that could be considered more dominant (eye-catching) than other elements. The two elements (verbal and figurative) are co-dominant.

The contested mark is a word mark consisting of the verbal elements ‘Comandor NRG Drink’. Differences in the use of lower- or upper-case letters in word marks are, in general, immaterial. However, it can influence the way the mark will be perceived by the public. The element ‘NRG’ is depicted in upper-case letters while the others, ‘Comandor’ and ‘Drink’, are in title case.

The first word, ‘Comandor’, has no meaning in English. However, as the applicant rightly pointed out, the English-speaking part of the public might associate this word with the English word ‘commander’, which refers to ‘an officer in charge of a military operation or organization’ (information extracted from Collins Dictionary on 03/02/2020 at https://www.collinsdictionary.com/dictionary/english/commander), or might also see it as a misspelling of the word ‘commando’. In any case, since it has no meaning in relation to the goods at issue, it is distinctive to an average degree.

Contrary to the proprietors’ claims, the verbal elements ‘NRG Drink’ will be read by the relevant public as ‘energy drink’ and perceived as an obvious reference to energy drinks. Therefore, they are descriptive for the relevant goods in Class 32, which include energy drinks.

Visually, the signs coincide in the letters ‘COM*ANDO*’. They differ in the additional letter ‘M’ of the earlier sign, in the final letter ‘R’ of the contested sign and in the verbal elements ‘NRG Drink’ of the contested sign, which are descriptive in relation to the relevant goods. Furthermore, they also differ in the figurative element of the earlier mark. However, despite the presence of a figurative device, 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; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛COM(M)ANDO*’. The additional letter ‘M’ of the earlier mark does not have any impact on the pronunciation. The pronunciation differs in the sound of the letter ‛R’ located at the end of the contested sign, which has no counterpart in the earlier sign. The pronunciation differs also in the verbal elements ‘NRG Drink’ of the contested sign. However, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Moreover, the differing elements ‘NRG Drink’ are non-distinctive. Therefore, the signs are aurally similar to a high degree.

Conceptually, as mentioned above, the word ‘Comandor’ might be associated by the relevant public with the word ‘commander’ and thus will evoke the concept of ‘military leader’. However, it might also be seen as a misspelling of the word ‘commando’ and be understood by the relevant public as a reference to a group of soldiers, just like the word ‘COMMANDO’ of the earlier mark. Therefore, the signs share the same reference to the military field. The verbal elements ‘NRG Drink’ of the contested sign are descriptive and, therefore, do not influence the conceptual comparison of the signs. The earlier trade mark also depicts two bears, which will be perceived as such by the relevant public. Therefore, taking into account the concepts conveyed by the distinctive elements of the signs ‘COMMANDO’ and ‘Comandor’, the signs are conceptually similar to an average 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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 the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks must be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, considering all the circumstances of the case.

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 found to be identical are directed at the public at large, whose degree of attention is average.

The signs are visually and conceptually similar to an average degree and aurally similar to a high degree, on account of the similarity between the distinctive verbal elements of the signs, ‘COMMANDO’ and ‘Comandor’.

Considering all the above, the Cancellation Division finds that the differences between the signs do not outweigh their striking similarities, especially considering that the goods are identical.

Considering all the above, there is a likelihood of confusion on the part of the English-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 declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 15 175 599. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietors are the losing party, they must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Pierluigi M. VILLANI

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 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.