CANCELLATION No C 46 868 (INVALIDITY) 

 

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

 

a g a i n s t

 

Shenzhen Meixixi Catering Management Co., Ltd., 1203-4-2, Dachong Business Centre, No.9672, Nanshan Road, Yuehai Street, Nanshan District,, Shenzhen, People’s Republic of China  (EUTM proprietor), represented by Ballester IP, Avda. de la Constitución, 16, 1°D, 03002 Alicante, Spain (professional representative).

On 25/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

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

 

2.		European Union trade mark No 16 868 911 is declared invalid for all the contested goods, namely: Class 32: Fruit extracts (Non-alcoholic -); Fruit juices; Waters [beverages]; Beverages (Non-alcoholic -); Non-alcoholic fruit juice beverages; Beverages (Preparations for making -); Fruit-based soft drinks flavored with tea; Water-based beverages containing tea extracts; Milky tea, non-milk-based; Milk (Peanut -) [non-alcoholic beverage]; Non-alcoholic beverages.
3.	The European Union trade mark remains registered for all the uncontested goods and services, namely: Class 16: Bottle wrappers of paper or cardboard; Bags [envelopes, pouches] of paper or plastics, for packaging; Plastic film for wrapping; Packing paper; Sheets of reclaimed cellulose for wrapping; Absorbent sheets of paper or plastic for foodstuff packaging; Boxes of cardboard or paper; Table napkins of paper; Place mats of paper; Printed matter. Class 35: Advertising; Publicity; Marketing studies; Sales promotion for others; Import-export agencies; Procurement services for others [purchasing goods and services for other businesses]; Photocopying services.
4.		The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS

 On 23/10/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 16 868 911 (figurative mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely against all of the goods in Class 32. The application is based on Hungarian trade mark registration No 218 676 HEY-HO (word mark) and EUTM registration No 15 661 994 Hey Ho (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

  

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that the earlier goods in Class 32 are identical to all of the contested goods. It points out that the signs coincide in the initial element ‘HEY’ which is an identifiable and separate element in both signs. The applicant claims that the public will not pay attention to the element ‘TEA’ as it is non-distinctive and clearly descriptive for the relevant goods. It argues that none of the signs have a meaning conceptually. It further points out that the similarity of the signs has been confirmed by the EUIPO in the Opposition Division decision of 30/10/2019, B 3 052 847 which has also been confirmed by the Board of Appeal in its decision of 26/05/2020, R 2979/2019-4. The applicant asserts that the earlier marks have been used extensively and enjoy an enhanced scope of protection and reputation in connection with fruit nectar beverages and fruit drinks in Hungary. It provides evidence to back up this assertion and states the reasons why this evidence is relevant. Therefore, it claims that there is a likelihood of confusion between the signs. It also argues that the case should be upheld under Article 8(5) EUTMR due to the substantial reputation of the earlier marks in Hungary, the similarity of the signs and the clear link between the goods in conflict as the use of the EUTM will take unfair advantage of the distinctive character and repute of the earlier marks and also result in detriment to the distinctive character of the sign.

In support of its observations the applicant submits the following documents:

 Annex 1: Affidavit of Mr. J.S., the Legal Counsel of the applicant, dated 19/10/2020.

 Annexes 2 and 3: International Brand Tracking report regarding the Hungarian market issued by ‘Kantar TNS Info Research Austria’ from Autumn 2016 and Autumn 2017.

 Annexes 4 and 7: Invoices for the sale of HEY-HO goods to customers in Hungary dated between 2016-2019.

 Annex 5: Trade mark registration certificate in respect of the earlier EUTM No 15 661 994 Hey Ho and the extract relating to the earlier Hungarian trade mark registration No 218 676 HEY-HO with a translation into English.

 Annex 6: Trade mark extract relating to the earlier Hungarian trade mark registration No 218 676 HEY-HO with a translation into English.

 

The EUTM proprietor did not submit any observations in response to the application for a declaration of invalidity although it was invited by the Office to do so.

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. 

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Hungarian trade mark registration No 218 676 HEY-HO (word mark).

 

a) The goods

 

 

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

 

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces [condiments]; spices; ice; tea-based beverages; ice tea.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectar; fruit nectar beverages; vegetable beverages and vegetable juices (beverages); syrups and other preparations for making beverages.

The contested goods are the following: 

Class 32: Fruit extracts (Non-alcoholic -); fruit juices; waters [beverages]; beverages (non-alcoholic -); non-alcoholic fruit juice beverages; beverages (preparations for making -); fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; milky tea, non-milk-based; milk (peanut -) [non-alcoholic beverage]; non-alcoholic beverages.

 

Fruit juices; waters [beverages]; beverages (non-alcoholic -); non-alcoholic fruit juice beverages; beverages (preparations for making -); non-alcoholic beverages are identically contained in both lists of goods, including synonyms.

 

The contested fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; milky tea, non-milk-based; milk (peanut -) [non-alcoholic beverage]; are included in the broad category of the applicant’s other non-alcoholic beverages. Therefore, they are identical.

The contested fruit extracts (Non-alcoholic) are contained within the broad category of earlier goods other preparations for making beverages. Therefore, they are identical.

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 goods found to be identical are beverages and preparations for making beverages which are for daily consumption. Some of the goods, such as waters [beverages] are rather low-cost groceries being addressed at the public at large. In principle, these relevant consumers will buy the groceries quickly without paying too much attention to them (12/02/2014, T-570/11, La qualite est la meilleure des recettes, EU:T:2014:72, § 30-31). Other goods, like fruit extracts are not goods bought on a daily basis. Consequently, the level of attention ranges from lower than average to average in the present case.

 

c) The signs

 

HEY-HO
Earlier trade mark	Contested sign

 

The relevant territory is Hungary.  

 

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 earlier mark is a word mark and consists of two words separated by a hyphen, ‘HEY-HO’. As the earlier sign is a word mark without any irregular capitalization it is protected in both upper and lower case typeface.

It is acknowledged that when confronted with verbal elements in a sign, the public does not normally proceed to breaking them down into sub-elements, unless there is something in the way they are represented or there are identifiable parts of them that suggest concrete meaning or known word(s) (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In regards to the earlier sign, it will be broken down into the elements ‘HEY’ and ‘HO’ as a result of the use of a hyphen between them. The term ‘HEY’ will be perceived by the Hungarian public under examination as having the same meaning as in English, namely as an informal greeting or an interjection as this word is very similar to the Hungarian equivalent ‘hé’/’hej’/’héj’ (extracted from the Online Angol Magyar Szotar Hungarian-English dictionary on 10/05/2021, https://angol-magyar-szotar.hu/hey!.html). The hypen ‘-‘ is merely a punctuation symbol and as such it does not have trade mark significance. Although it does serve to separate the two words so that the consumer will break the elements down. The word ‘HO’ has no particular meaning in Hungarian although the word ‘hó’ (with an accent over the letter o) means ‘snow’ in Hungarian. However in Hungarian the accents placed over vowels are of great importance and therefore, it is likely that the Hungarian consumers will not understand this word as having any exact meaning, but even if it did recognise the word as ‘snow’ it does not have any meaning in relation to the relevant goods (see 26/05/2020, R 2979/2019-4, HEYTEA (fig.) / Hey-ho et al., § 32). Therefore, the distinctiveness of the elements of the earlier mark is normal, irrespective of whether a meaning is seen in it or not. As the earlier mark is a word mark it does not have any element which is more dominant than other elements.

The contested mark is a figurative mark and is comprised of the term ‘HEYTEA’ written as a single word in a very mildly stylised plain black typeface. The typeface is not particularly striking or original and is rather standard, therefore, it is non-distinctive. In relation to the term ‘HEYTEA’ the consumer will again break the sign down into two separate elements, namely, ‘HEY’ and ‘TEA’ since both of these elements suggest concrete meanings for the Hungarian public. The meaning of ‘HEY’ has already been given above under the examination of the earlier mark. The word ‘TEA’ is the Hungarian word for ‘tea’ (extracted from the Online Angol Magyar Szotar Hungarian-English dictionary on 10/05/2021, https://angol-magyar-szotar.hu/hey.html#forditInput=tea&korra=0&from=en&to=hu&version=4 ). Accordingly, the distinctiveness of ‘tea’ will be at least reduced with respect to some of the goods at issue which could be tea based and as alluding to the characteristics of same, such as beverages containing or based on tea or tea-flavoured drinks, e.g. fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; milky tea, non-milk-based. Although it will be normally distinctive for some of the goods for which it has no relation, e.g. fruit juices; waters [beverages]. The word ‘hey’ will not create any association with the goods at issue and therefore this part of the sign will be normally distinctive. Therefore, for some of the relevant goods (such as fruit-based soft drinks flavored with tea; water-based beverages containing tea extracts; milky tea, non-milk-based) the most distinctive part of the contested sign in the word ‘HEY’. However, for the remaining goods for which ‘tea’ is normally distinctive (such as fruit juices; waters [beverages] etc.) it will be the word element as a whole, both ‘HEY’ and ‘TEA’ that are equally distinctive. There is no element which is more dominant (visually eye-catching) in the contested sign.

Visually, the signs coincide in the first word ‘HEY’. They differ in the second word ‘HO’ and ‘tea’ respectively, the hyphen in the earlier mark and reference is made to the above findings on the relative distinctiveness of each of these elements.

It is noted that the first parts of the conflicting marks are identical. 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.

Therefore, the signs are visually at least similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HEY’, present identically at the beginning of both signs. The pronunciation differs in the sound of the elements ‛HO’ and ‘TEA’ respectively. However, as the first element is identical in both signs the signs are at least similar to an average degree.

 

Conceptually, reference is made to the above findings on the different meanings and levels of distinctiveness of each of the elements of the signs in conflict. As the signs coincide in the meaning of ‘HEY’ the signs are conceptually similar at least to this extent.  

 

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 applicant, 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 applicant 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 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.

 

e) 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). 

Account is 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). 

The signs in conflict have been found to be visually and aurally at least similar to an average degree and the signs are conceptually similar. The goods have been found to be identical, similar to a high degree, similar to a low degree and dissimilar. The relevant public is the public at large and their degree of attention is lower than average. The earlier mark has a normal degree of inherent distinctiveness.

As mentioned the signs coincide in their initial element ‘HEY’ which plays an independent and distinctive role in each sign. Furthermore, as mentioned consumers tend to pay more attention to the beginning of signs and the beginning of both signs is identical. Moreover, as mentioned the consumers level of attention is lower than average.

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, for the reasons given above the Cancellation Division considers that there is a likelihood of confusion, including the likelihood of association, in relation to the all of the contested goods given the similarities between the signs and the fact that the goods are all identical.

Conclusion

 

Considering all the above, there is a likelihood of confusion on the part of the public for part of the goods as specified above.

Therefore, the application is well founded on the basis of the Hungarian trade mark registration No 218 676. It follows that the contested trade mark must be declared invalid for all the contested goods found to be identical. The contested mark remains valid and registered for the uncontested goods and services.

Since the cancellation application is entirely successful on the basis of the inherent distinctiveness of the earlier Hungarian mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use and reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. 

As the earlier Hungarian trade mark registration No 218 676  leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

 

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 proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(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

 

Zuzanna STOJKOWICZ

Nicole CLARKE

María Belén IBARRA DE DIEGO

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.