OPPOSITION No B 3 050 582

Sun Mark Limited, Sun House, 428 Long Drive, UB6 8UH, Greenford, United Kingdom (opponent)

a g a i n s t

Kbf Enterprises Limited, Unit 1 Guinness Road Trading Estate, Guinness Road, Trafford Park, M17 1SB Manchester, United Kingdom (applicant), represented by Wood Ip Limited, 2 Ivy Court, NN11 4EP Daventry, United Kingdom (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 582 is upheld for all the contested goods, namely

Class 32: Non-alcoholic beverages; sports drinks; energy drinks; syrups and other preparations for making beverages.

2. European Union trade mark application No 17 185 612 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 185 612 ‘WARRIOR’, namely against all the goods in Class 32. The opposition is based on, inter alia, European Union trade mark registration No 17 575 465 ‘WARRIOR’. The opponent invoked Article 8(1)(a) and (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.

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 European Union trade mark registration No 17 575 465.

a) The goods

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

Class 32: Non-alcoholic energy drinks, Pre-mixed non-alcoholic cocktails, juices (including but not limited to cranberry, lemon, mango, peach) and beverages (including but not limited to cola, soda, tonic water, sparkling water) used for pre-mixing purposes.

The contested goods are the following:

Class 32: Non-alcoholic beverages; sports drinks; energy drinks; syrups and other preparations for making beverages.

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.

The contested non-alcoholic beverages include, as a broader category the opponent’s non-alcoholic energy drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sports drinks; energy drinks are identical to the opponent’s non-alcoholic energy drinks, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested syrups and other preparations for making beverages are similar to beverages (including but not limited to cola, soda, tonic water, sparkling water) used for pre-mixing purposes as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

b) The signs

WARRIOR	WARRIOR
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 575 465. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, the European Union trade mark registration No 17 575 465, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

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.