OPPOSITION No B 2 959 891

Energy Beverages LLC, 2390 Anselmo Drive, 92879 Corona, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, EC4A 1JP London, United Kingdom (professional representative)

a g a i n s t

Compass Motion AB, Persgatan 9B, 41658 Gothenburg, Sweden (applicant).

On 11/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 959 891 is partially upheld, namely for the following contested goods:

Class 5: Vitamin drinks; Melissa water for pharmaceutical purposes.

Class 30: Aromatic preparations for making non-medicated tisanes; Aromatic teas [other than for medicinal use]; Tea-based beverages; Herbal infusions; Herb teas, other than for medicinal use; Rooibos tea; Rosemary tea; Instant tea; Tea (Non-medicated -) consisting of cranberry extracts; Tea leaves; Teas (Non-medicated -) flavoured with lemon; Theine-free tea.

Class 32: Beverages containing vitamins; Powders for the preparation of beverages; Powders used in the preparation of fruit-based beverages; Sports drinks containing electrolytes.

2. European Union trade mark application No 16 968 109 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 16 968 109 ‘NAU’ (word). The opposition is based on Benelux trade mark registration No 714 631 ‘NALU’ (word), European Union trade mark registration No 14 583 793 ‘NALU’ (word) and the United Kingdom trade mark registration No 3 156 050 ‘NALU’ (word). The opponent invoked Article 8(1)(b) and Article 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 Benelux trade mark registration No 714 631.

a) The goods

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

Class 30: Caffeinated beverages, including revitalizing beverages; all listed goods containing vitamins and food supplements, not for medical or veterinary use, not included in other classes.

Class 32: Mineral and aerated waters and other non-alcoholic beverages, including revitalizing beverages; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages; all listed products containing vitamins and food supplements, not for medical or veterinary use; not included in other classes.

The contested goods are the following:

Class 5: Antioxidants; Anti-oxidant food supplements; Food supplements; Powdered nutritional supplement drink mix; Powdered fruit-flavored dietary supplement drink mix; Mineral nutritional supplements; Vitamin A preparations; Vitamin B preparations; Vitamin C preparations; Mixed vitamin preparations; Vitamin D preparations; Dietary supplements consisting of vitamins; Vitamin and mineral supplements; Vitamin drinks; Vitamins and vitamin preparations; Vitamin preparations; Vitamin supplements; Multi-vitamin preparations; Melissa water for pharmaceutical purposes.

Class 30: Aromatic preparations for making non-medicated tisanes; Aromatic teas [other than for medicinal use]; Tea-based beverages; Herbal infusions; Herb teas, other than for medicinal use; Rooibos tea; Rosemary tea; Instant tea; Tea (Non-medicated -) consisting of cranberry extracts; Tea leaves; Teas (Non-medicated -) flavoured with lemon; Theine-free tea.

Class 32: Beverages containing vitamins; Powders for the preparation of beverages; Powders used in the preparation of fruit-based beverages; Sports drinks containing electrolytes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 5

The contested vitamin drinks; melissa water for pharmaceutical purposes are considered similar to the opponent’s mineral and aerated waters and other non-alcoholic beverages, including revitalizing beverages; all listed products containing vitamins and food supplements, not for medical or veterinary use; not included in other classes in Class 32 which include, inter alia, energy drinks and isotonic beverages which do not have medical purpose. The goods have the same natures (i.e. they are drinks), with the only difference that the opponent’s goods do not have a medical purpose. The goods have the same methods of use, are intended for the same public and can be sold through the same distribution channels.

However, the contested antioxidants; anti-oxidant food supplements; food supplements; powdered nutritional supplement drink mix; powdered fruit-flavored dietary supplement drink mix; mineral nutritional supplements; vitamin A preparations; vitamin B preparations; vitamin C preparations; mixed vitamin preparations; vitamin D preparations; dietary supplements consisting of vitamins; vitamin and mineral supplements; vitamins and vitamin preparations; vitamin preparations; vitamin supplements; multi-vitamin preparations are dissimilar to any of the opponent’s goods. The goods differ in their natures and purposes. While the contested goods will mainly be distributed through pharmacies or chemist’s shops, the opponent’s goods are most likely to be retailed in supermarkets or sports shops. The goods differ in the usual origin, nature, distribution channels; they are not complementary to each other nor are they in competition.

Contested goods in Class 30

The contested aromatic preparations for making non-medicated tisanes; aromatic teas [other than for medicinal use]; tea-based beverages; herbal infusions; herb teas, other than for medicinal use; rooibos tea; rosemary tea; instant tea; tea (non-medicated -) consisting of cranberry extracts; tea leaves; teas (non-medicated -) flavoured with lemon; theine-free tea are considered similar to the opponent’s caffeinated beverages, including revitalizing beverages; all listed goods containing vitamins and food supplements, not for medical or veterinary use, not included in other classes in Class 32. The goods are directed at the same relevant public through the same distribution channels. They coincide in their methods of use and are in competition.

Contested goods in Class 32

The contested beverages containing vitamins; sports drinks containing electrolytes are included in, or overlap with, the broad category of the opponent’s mineral and aerated waters and other non-alcoholic beverages, including revitalizing beverages; all listed products containing vitamins and food supplements, not for medical or veterinary use; not included in other classes. The goods are identical.

The contested powders for the preparation of beverages; powders used in the preparation of fruit-based beverages overlap with the broad category of the opponent’s syrups and other preparations for the preparation of beverages; all listed products containing vitamins and food supplements, not for medical or veterinary use; not included in other classes. The goods 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 and similar are directed at the public at large.

The degree of attention is average.

c) The signs

NALU	NAU
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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).

Both marks are word marks and they have no elements that could be considered dominant (visually eye-catching).

Moreover, both words are meaningless in the relevant territory. They are considered distinctive to an average degree.

Visually and aurally, the signs coincide in ‘NA*U’. In other words, the signs have similar structures (one word composed of a similar number of letters/sounds, starting and ending with the same letters/sounds) and the difference only lies in one additional letter/sound in the middle of the earlier mark and therefore it is less likely to be particularly marked in the consumers’ memory. The signs are considered visually and aurally similar, at least, to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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 trade mark has a reputation in Benelux (and the European Union) in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Witness statement of the Chief Executive Officer of Monster Beverage Corporation and its subsidiaries including the opponent. The witness statement includes information regarding ‘NALU’ registrations in the European Union and worldwide, history and the overview of the trade mark ‘NALU’, sales numbers for 2015-2017 in Benelux countries, and marketing strategy.

 Photos showing advertising campaigns such as sampling events, as well as photos of brand posters in colleges and universities, shopping centres, business areas and transit stations in Belgium and Luxembourg.

 Few examples of print media and online advertisements.

 Extracts from ‘NALU’ website and social media.

 Copies of few sample invoices showing the sale of the energy drinks to the distributors in Belgium.

 Copies of trade mark registration certificates from various IP offices.

 Few photos of ‘NALU’ drinks.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The opponent has provided extensive information with regard to the scope of its business, the commercial and corporate dimensions of its activities, the history and the overview of the trade mark ‘NALU’. This, however, does not provide the Opposition Division with any indication of the degree of recognition of the trade mark by the relevant public. Although the opponent submits samples of invoices, some information, such as the price is blacked out. And even if the sales figures in the relevant territory indicated by the opponent are substantial, they come from the opponent itself, and there is no evidence from, for example, third parties to reflect clearly and objectively what the opponent’s position on the market precisely is. The remaining evidence, and in particular the evidence showing the marketing efforts of the opponent is not sufficient to allow the Opposition Division to determine the extent and the degree of the recognition of the trade mark by the relevant public. Further, the trade mark registration certificates from various countries do not prove that the mark has been used or that it is recognised by the consumers.

The evidence submitted by the opponent does not provide sufficient information as regards the market share held by the trade mark, the trade mark awareness, or he intensity of use. All the abovementioned factors have to be taken into account in order to determine whether the mark concerned has acquired enhanced distinctiveness from the standpoint of the consumers targeted by the opponent. The opponent could have filed, for example, the declarations of independent parties attesting to the reputation of the mark, verified or verifiable data on the market share held by the registered goods, opinion polls and market surveys, certifications and awards, annual reports on economic results, and other commercial documents, audits and inspections, etc. in relation to the relevant goods and territory.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove the enhanced distinctiveness for any of the goods at hand in Benelux.

For the sake of completeness, and since the opponent also based its opposition on the earlier European Union trade mark No 14 583 793 ‘NALU’ (word) and the earlier United Kingdom trade mark No 3 156 050 ‘NALU’ (word), the Opposition Division notes that the enhanced distinctiveness has not been proven in the European Union and the United Kingdom neither.

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

The contested goods are partly identical and similar to the opponent’s goods, and partly dissimilar. The distinctiveness of the earlier trade mark is normal.

The signs are visually and aurally similar to the extent that all three letters of the contested sign coincide with three out of a total of four letters of the earlier mark having the same position, namely the two first letters, ‘NA’, at the beginning and the letter ‘U’ at the end, with the only exception of the additional letter ‘L’ in the third position of the earlier mark. The Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the visual and aural similarities between them. 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). Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, are likely to think that they come from the same undertaking or from economically linked undertakings.

The applicant refers to previous decision issued in Sweden to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the findings of the previous case referred to by the applicant are not applicable because the relevant territory that has been examined and where the likelihood of confusion exists is Benelux, and not Sweden.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 714 631.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade 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.

The opponent has also based its opposition on the earlier European Union trade mark No 14 583 793 ‘NALU’ (word) registered for non-alcoholic beverages, beer in Class 32, and the earlier United Kingdom trade marks No 3 156 050 ‘NALU’ (word), registered for non-alcoholic beverages in Class 32.

Since these marks cover a narrower/similar scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. In particular, beer in Class 32 of the earlier earlier European Union trade mark No 14 583 793 is dissimilar to the contested goods that were found already dissimilar. This is because beer differs in nature and purpose. The goods differ in the usual origin, nature, distribution channels; they are not complementary to each other nor are they in competition.

Therefore, no likelihood of confusion exists with respect to those goods that were already found dissimilar.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) in relation to Benelux trade mark registration No 714 631 ‘NALU’ (word) and European Union trade mark registration No 14 583 793 ‘NALU’ (word).

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The evidence provides little information on the extent of such use. The evidence provides insufficient indications of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the market share of the trade marks. As a result, the evidence does not show that trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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

Justyna GBYL

Anna BAKALARZ

Katarzyna ZANIECKA

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.