OPPOSITION No B 3 030 569

Appelsdrift Farm (Pty) Ltd, 5 Silverhill Crescent, Kenilworth, 7708 Cape Town, South Africa (opponent), represented by Elkington and Fife LLP, Prospect House, 8 Pembroke Road, TN13 1XR, Sevenoaks,, United Kingdom (professional representative)

a g a i n s t

Abdelghani Bouterfass, Rue Louis Mascré 2, 1070 Anderlecht, Belgium (applicant), represented by Matteo Di Stefano, Processiestraat 43, 8510 Bellegem, Belgium (professional representative).

On 24/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 030 569 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 381 401 for the word mark ‘Pic Nic "Like Son Goût Fruité", namely all the goods and services in Classes 32 and 35. The opposition is based on European Union trade mark registration No 14 746 606 for the word mark ‘LE PIQUE NIQUE’. The opponent invoked Article 8(1)(b) EUTMR.

LE PIQUE NIQUE	Pic Nic "Like Son Goût Fruité"
Earlier trade mark	Contested sign

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 and services

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

Class 33: Alcoholic beverages (except beers); wines; spirits; liqueurs; ciders.

The contested goods and services are the following:

Class 32: Waters [beverages]; Mineral waters [beverages]; Soft drinks; Colas [soft drinks]; Non-carbonated soft drinks; Fruit-flavored soft drinks; Coffee-flavored soft drinks; Soft drinks flavored with tea; Fruit-based soft drinks flavored with tea; Soft drinks for energy supply; Carbonated non-alcoholic drinks; Non-alcoholic carbonated beverages; Non-alcoholic flavored carbonated beverages; Flavoured carbonated beverages; Fruit flavoured carbonated drinks; Mineral enriched water [beverages]; Aerated fruit juices; Aerated juices; Soda water; Aerated water [soda water]; Cola; Fruit juices; Juice (Fruit -); Fruit juice; Fruit beverages; Fruit drinks; Iced fruit beverages; Fruit beverages and fruit juices; Fruit-based beverages; Non-alcoholic sparkling fruit juice drinks; Non-alcoholic fruit juice beverages; Non-alcoholic fruit drinks; Non-alcoholic beverages containing fruit juices; Non-alcoholic fruit cocktails; Mixed fruit juices; Mixed fruit juice; Fruit juice for use as a beverages; Fruit juice beverages (Non-alcoholic -); Fruit juice beverages; Fruit flavoured drinks; Fruit-flavoured beverages; Fruit flavored drinks; Fruit-flavored beverages.

Class 35: Advertising services for the promotion of beverages; Retail services in relation to non-alcoholic beverages; Mail order retail services related to non-alcoholic beverages; Wholesale services in relation to non-alcoholic beverages; Providing consumer product information relating to food or drink products; Retail services via global computer networks related to non-alcoholic beverages; Retail services via catalogues related to non-alcoholic drinks; Advertising; Advertising and marketing; Online advertisements; Business management; Administration of business affairs; Administration of the business affairs of franchises; Administration of the business affairs of retail stores; Import and export services; Services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises.

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 32

All the contested goods are dissimilar to the opponent’s goods in Class 33 according to the recent case law (4/10/2018, T‑150/17, FLÜGEL, EU:T:2018:641; § 77-84). The nature of these goods differs in terms of the presence or absence of alcohol. The average consumer, deemed to be reasonably well-informed and reasonably observant and circumspect, is used to and aware of the distinction between alcoholic and non-alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to – or cannot – consume alcohol (15/02/2005, T-296/02, LINDENHOF, EU:T:2005:49, §54; 18/06/2008, T‑175/06, MEZZOPANE, EU:T:2008:212; §79). The contested goods are everyday consumer drinks. The opponent’s goods, on the other hand, are drunk almost solely, if not solely, on special occasions and for enjoyment and much less frequently than the goods covered by the contested mark. Also, the opponent’s goods are no more than an atypical replacement for the contested drinks. The goods in question cannot therefore be considered to be in competition with each other. The fact that the goods in question may be consumed one after the other or even mixed is not such as to alter the finding of the dissimilarity of the goods, in particular as it is true of many drinks which are not, however, similar. According to case law, it should be noted that a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks. To consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) of Regulation No 207/2009 (4/10/2018, T‑150/17, FLÜGEL, EU:T:2018:641; § 80; 3/10/2012, T‑584/10, TEQUILA MATADOR HECHO EN MEXICO, EU:T:2012:518, §55). As such, the goods at issue are dissimilar.

Contested services in Class 35

The contested retail services in relation to non-alcoholic beverages; mail order retail services related to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages; retail services via global computer networks related to non-alcoholic beverages; retail services via catalogues related to non-alcoholic drinks and the opponent’s goods in class 33 (alcoholic beverages (except beers); wines; spirits; liqueurs; ciders) are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services, wholesale services, internet shopping, catalogue or mail order services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services (and wholesale services, internet shopping, catalogue or mail order service) and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are dissimilar.

When comparing the remaining contested services, which mainly include services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise; providing consumer product information as well as services rendered by advertising establishments, and the opponent’s goods in Class 33, these are considered all dissimilar. These contested services and the opponent’s goods have a different nature and purpose. They are not complementary neither are they in competition. They have different distribution channels, target a different public and are normally produced or provided by different companies.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.