OPPOSITION No B 2 986 530

Myriam Vázquez Vázquez, Santa Cruz De Arrabaldo, 49, 32990, Ourense, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014, Madrid, Spain (professional representative)

a g a i n s t

Optimum Mark Sp. z o.o., ul. Dolna 3, 00-773, Warsaw, Poland (applicant), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610, Lublin, Poland (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 986 530 is partially upheld, namely for the following contested goods:

Class 32: Non-alcoholic beverages; Fruit beverages and fruit juices.

2. European Union trade mark application No 16 888 216 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 888 216 for the word mark ‘Polaris’. The opposition is based on Spanish trade mark registration No 3 665 753 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

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

Class 33: Alcoholic beverages (except beer).

The contested goods are the following:

Class 32: Non-alcoholic beverages; aerated and non-aerated mineral water; fruit beverages and fruit juices.

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.

The contested non-alcoholic beverages; fruit beverages and fruit juices and the opponent’s alcoholic beverages (except beer) in Class 33 are often sold side by side, both in shops and bars and on drinks menus. These goods target the same public and may be in competition. During social gatherings, people can choose between alcoholic drinks, mixed drinks and non-alcoholic drinks, all of which have the same purpose, namely pleasure. For example, if consumers wish to have a cocktail but do not drink alcohol, they can still order a non-alcoholic cocktail made of juices, syrups etc., or simply order cola or lemonade to enjoy. In this way, the goods not only are used in combination with each other, but also may be in competition. Furthermore, consumers are used to beverages with comparatively low alcohol content, such as beer, wine and sparkling wine, also being sold in non-alcoholic variations, often by the producers of the ‘real’ alcoholic beverages. Therefore, the difference in alcohol content alone is no longer sufficient to prevent consumers from believing that the goods share the same commercial origin (26/06/2018, R 1624/2017‑2, COSTANEGRA (fig.) / COSTASERA et al., § 25). Therefore, these goods are similar to a low degree (30/10/2018, R 885/2018-2, Lemillion / Vermilion, § 23; 07/12/2017, R 739/2017-1, SUMMUM ESSENTIAL / SUMMUM (fig.), § 48).

The contested aerated and non-aerated mineral water are dissimilar to the opponent’s alcoholic beverages (except beer) in Class 33. Water is a liquid that is found naturally, is not refined and is aimed at satisfying basic human needs, whereas alcoholic drinks are made using a complex production process, have a stimulating effect on a person and are often consumed late during the day or at night. Moreover, these goods are not complementary. The purchase of one is not indispensable or important for the use of the other and there is no reason to assume that the purchaser of one of these types of products would be led to purchase the other as well. Alcoholic beverages are also not interchangeable with the contested goods due to their difference in taste, the consequences of their consumption and how they are normally used. It is true that, all these goods can be served in restaurants and bars and usually come in bottles, intended for human consumption. However, these factors refer to all drinks, even the most varied (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 58), and cannot diminish the fact that the distinction between alcoholic beverages and water is of high importance, e.g. for drivers, people of certain religions, age etc. and that on a more concrete level they are different in nature, often serve a different purpose and do not usually compete with each other (07/12/2017, R 739/2017-1, SUMMUM ESSENTIAL / SUMMUM (fig.), § 41). Consequently, consumers will consider it normal for aerated and non-aerated mineral water and alcoholic beverages (except beer) to come from different companies and will therefore expect this (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 51).

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 similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

	POLARIS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a figurative trade mark composed of the verbal element ‘Polaris’ in standard bold black title case letters accompanied by a figurative element depicting a constellation composed of seven purple stars connected by a thin line of the same colour. These elements are depicted against a white background decorated with pale brown stars that are smaller than those in the figurative element.

Due to their sizes, colours and positions, the verbal element ‘Polaris’ and the figurative element composed of seven purple stars are co-dominant.

The contested sign is the word mark ‘POLARIS’.

The coinciding verbal element ‘Polaris’ is an English word referring to the brightest star in the constellation Ursa Minor. However, this word is meaningless for the public in the relevant territory and, as such, it has an average degree of inherent distinctiveness.

The opponent argues that ‘Polaris’ is very similar to the Spanish word ‘polar’, which means ‘belonging or relative to the poles’, and that, consequently, the relevant public would attribute this meaning to the coinciding verbal element ‘Polaris’. However, bearing in mind the category of goods at issue (beverages), the Opposition Division considers that a substantial part of the relevant public will perceive the word ‘Polaris’ as a fanciful term and will not associate it with the poles of the Earth (26/06/2008, T‑79/07, POLARIS (fig. mark)/POLAR, EU:T:2008:230, § 41; 08/01/2007, R 658/2006-2, POLARIS (fig. mark)/POLAR, § 20). In any case, even if a part of the public were to perceive the word ‘Polaris’ as alluding to ‘polar’, this meaning is not related to the goods in question. It is not likely that, as argued by the opponent, consumers would perceive this word as referring to characteristics of the goods in question, namely that they are cold. ‘Polar’ is not a word that the public would use to describe any characteristics of the goods, and an association with being cold is very remote and thus not likely.

The figurative element of the earlier mark depicting a constellation does not convey any meaning in relation to the goods in question. Therefore, it also has an average degree of inherent distinctiveness.

In addition, the white background of the earlier mark decorated with stars is distinctive, since it is not descriptive or allusive of the goods in question. However, it is secondary in the sign in comparison with the other, dominant, elements.

Visually, the signs are similar to the extent that the (co-dominant) sole verbal element ‘Polaris’ of the earlier mark constitutes the contested sign in its entirety. They differ in the figurative element and the decorative background of the earlier mark.

However, when signs consist of both verbal and figurative components, as the contested sign does, 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 (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters of the coinciding element, ‘Polaris’. The signs differ only in the figurative elements of the earlier mark, which are not subject to a phonetic assessment.

Therefore, the signs are aurally identical.

Conceptually, for a substantial part of the public in the relevant territory, the coinciding element ‘Polaris’ is likely to be perceived as a meaningless fanciful word. By contrast, the figurative element and the background of the earlier mark convey the concept of a constellation in a starry sky. Therefore, to this extent, the signs are not conceptually similar for at least a substantial part of the public.

For the sake of completeness, it must be noted that, even if a part of the public were to perceive ‘Polaris’ as alluding to ‘polar’, this association would arise for both marks and thus the signs would be conceptually highly similar.

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.

The opponent did not explicitly claim that her 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.

e) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §16).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

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).

In the present case, the contested goods are partly similar to a low degree and partly dissimilar to the opponent’s goods. The earlier mark has an average degree of distinctiveness. The degree of attention of the public is average.

The signs are visually highly similar and aurally identical. As explained above in section c) of this decision, for the substantial part of the public that will not attribute any meaning to the coinciding element ‘Polaris’, the signs are not conceptually similar. However, the signs are conceptually highly similar for the part of the public that perceives ‘Polaris’ as alluding to ‘polar’.

The signs’ similarity lies in the coinciding verbal element ‘Polaris’, constituting the (co-dominant) sole verbal element of the earlier mark and the contested sign in its entirety.

Furthermore, the differing figurative element and the background of the earlier mark are not visually striking in comparison with the word element ‘Polaris’. Moreover, as already mentioned, when a trade mark is composed of both verbal and figurative elements, the former should, in principle, be considered to have a stronger impact than the latter, because the average consumer will more easily refer to the services in question by name than by describing the figurative elements or stylisation of the trade mark.

It should also 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 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). Accordingly, in such cases, it may be appropriate to attach particular importance to the aural identity between the signs at issue.

In the light of the foregoing, the degree of similarity between the marks at issue is sufficient to consider that a substantial part of the relevant public could reasonably believe that the similar goods bearing the contested word mark ‘Polaris’ and the earlier figurative mark originate from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that the signs convey similar overall impressions and that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 665 753.

Applying the aforementioned principle of interdependence and taking into account the degree of attention of the relevant public, it is considered that the aural identity and the high degree of visual similarity between the signs are sufficient to offset the low degree of similarity between some of the goods. Therefore, there is a likelihood of confusion for the goods that are similar to a low degree.

In its observations, the applicant argues that the coinciding verbal element ‘Polaris’ has a low distinctive character given that many trade marks include the element ‘polar’. In support of its argument the applicant refers to some European Union trade mark registrations for goods in Class 33.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘polar’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant refers to previous decisions of the Office to support its arguments. In particular, the applicant refers to:

- the decision of 26/07/2013, R 1094/2012-4, between the signs and ‘GOURMET’;

- the decision of 22/02/2010, B 1 488 017, between the signs and ‘Casserole’.

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 decisions referred to by the applicant are not relevant to the present proceedings because they concern very different cases from the present case, namely cases where the signs have only a weak or non-distinctive element in common.

It follows from the above that the contested trade mark must be rejected for the goods that have been found to be similar to a low degree to the goods of the earlier mark.

The rest of the contested goods are dissimilar. 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Rosario GURRIERI

Jakub MROZOWSKI

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.