OPPOSITION No B 3 046 980

Foodcare Spółka z ograniczoną odpowiedzialnością, ul. Spokojna 4, 32-080, Zabierzów, Poland (opponent), represented by Kancelaria Patentowa Dr W. Tabor sp.j., Ul. Mazowiecka 28a/8-9, 30-019, Kraków, Poland (professional representative)

a g a i n s t

Distillerie Franciacorta S.P.A., Via Tucidide, 56/bis - Torre 2, 20134 Milano, Italy (applicant), represented by PGA S.P.A., Via Mascheroni, 31, 20145 Milano, Italy (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 980 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 of European Union trade mark application No 17 559 411 ‘CRYSTAL BLACK’ (word). The opposition is based on, inter alia, European Union trade mark registration No 11 591 344 . 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 European Union trade mark registration No 11 591 344.

a) The goods

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

Class 32: Non-alcoholic beverages; mineral and aerated waters; preparations for making mineral waters; preparations for making beverages; fruit juices; vegetable juices; fruit extracts; nectars; fruit syrups for making beverages; isotonic beverages; energy drinks; lemonades; syrups for beverages; pastilles and powders for beverages; non-alcoholic aperitifs; beer.

Class 33: Alcoholic beverages except beers; cocktails; aperitifs; alcoholic beverages containing fruits; vodka; liqueurs; bitters; wine; digesters [liqueurs and spirits]; hydromel [mead].

The contested goods are the following:

Class 33: Liqueurs based on liquorice.

Contested goods in Class 33

The contested liqueurs based on liquorice are included in the broad category of the opponent’s liqueurs. They are identical.

For the purpose of further examination of the opposition, the Opposition Division considers necessary to compare also the contested goods with the opponent’s energy drinks in Class 32 and finds them dissimilar. Although both products are liquids for human consumption, the goods have different natures: while the energy drinks are non-alcoholic drinks that contain stimulant compounds, the contested liqueurs based on liquorice are alcoholic beverages with added flavours that are usually derived from fruits, herbs or nuts. The goods differ in purposes: liqueurs based on liquorice are consumed on special occasions for pleasure or after a meal to aid in digestion, and energy drinks are marketed as providing mental and physical stimulation. The goods are neither complementary nor in competition. They are not likely to be provided by the same manufacturers.

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 directed at the public at large.

The degree of attention is considered average.

c) The signs

	CRYSTAL BLACK
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

With regards to the distinctive and dominant elements of the marks in question, first the Opposition Division would like to address the distinctiveness of the common term ‘BLACK’ present in both marks.

In its decision R 2305/2016-2, of 24/07/2017, the Second Board of Appeal stated that nowadays many wine companies tend to use different coloured labels on the bottles to explain the differences (and different categories) in the wines, such as, for example, the use of gold/yellow labels signifying the high quality, elegance, tradition of the wines on black labels on a wine bottle, not only assimilate to the wine being possibly a red wine but are also used sometimes to inform the consumer that wine he/she is purchasing is a more exclusive, deluxe range of wine, which also tends to be more expensive than a normal wine. The Board stated that the same applies to other alcoholic beverages, in particular liquors and spirits, such as vodkas, gin, rums, whiskies etc. Thus, in this context, the use of the word ‘BLACK’ and the representation of a black label as in the earlier mark will inform the public of the colour of the goods or of their desirable quality/aspect, i.e. the idea of their being unique and exclusive.

As such, both, the use of the word ‘BLACK’ and the representation of a black label as in the earlier mark will, therefore, allude to the idea of the liqueurs being unique and exclusive, or indeed, elegant and distinguished.

Moreover, although it may not be expected that the average consumer has a particular knowledge of a foreign language, this is a flexible rule and the knowledge of foreign terms by the relevant public should be assessed on a case by case basis. In this respect, in the present case, the word ‘BLACK’ is an elementary, basic English word, and at the same time, a basic colour. As such, it is most likely that its meaning will be understood by the majority of the relevant public.

Thus, although playing a dominant role in the earlier sign, the term ‘BLACK’ cannot be seen as a particularly distinctive element, as it will be considered, either as descriptive of the colour of the liqueurs concerned, or to some extent, as a laudatory term alluding to their uniqueness, exclusivity, elegance and distinction.

This is true not only for the opponent’s liqueurs but for all the goods on which the opposition is based and which could be found similar or identical to the opponent’s goods, as the same reasoning applies.

The perception of the word ‘BLACK’ is not essentially different in the contested sign, even for the part of the relevant public who will understand the contested sign, taken as a whole, as pure black, or as a play on words (as compared to the expression ‘crystal clear’), since the reference to the colour black is still clearly noticeable. The word ‘CRYSTAL’, on its own, whether understood as transparent rock or high-quality glass, or perceived as meaningless, is considered distinctive for the goods at hand.

The remaining verbal elements of the earlier sign cannot also be seen as particularly distinctive, at least for English-speaking consumers: ‘THE ORIGINAL PREMIUM’ alludes to the good quality of the goods (so does the depiction of a star) and ‘ENERGY’ to their purpose of boosting energy. In any case, because of their size and position within the sign, they cannot be attributed too much trade mark significance.

Likewise, the figurative elements on which the verbal elements are placed are not particularly distinctive since they will merely be perceived as a label.

Thus, visually, the signs are similar to the extent that they coincide in ‘BLACK’ which is not particularly distinctive for the goods at hand. Furthermore, the contested mark includes the additional word ‘CRYSTAL’ which is not present in the earlier sign and is located at the beginning of the sign, the part to which the consumer normally pays more attention. The overall impressions of the signs are different; the earlier sign features additional verbal and figurative elements while the contested mark is a plain word mark. Even though the additional elements of the earlier sign do not have a highly imaginative content, they tend to increase the differences between the contested sign and the earlier mark when they are assessed visually as a whole.

If follows that the signs at issue, insofar as they are composed of a different number of words and are distinguishable because of their initial parts and the further elements of the earlier sign, are visually similar to a low degree only.

As regards the aural comparison, the words ‘‘THE ORIGINAL PREMIUM’ and ‘ENERGY’ of the earlier sign, because of their size and position, as well as laudatory character for at least part of the relevant public, are unlikely to be pronounced at all. It has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, they tend to shorten marks containing several words. Therefore, it is most likely that consumers will refer to the earlier sign by its dominant element ‘BLACK’. As such, the earlier sign is pronounced in one syllable ‘BLACK’ whereas the contested mark includes three syllables ’CRYS – TAL – BLACK’. The rhythm and the intonation of the signs are, therefore, different. The similarities are limited to the identical pronunciation of the element ‘BLACK’, which has however reduced distinctiveness, and consequently, reduced impact on the comparison of the signs.

In those circumstances, the differences between the marks prevail over their similarities, such that the overall impression of the marks is that they are aurally similar only to a low degree.

As regards the conceptual comparison, the relevance of the coincidence in the element ‘BLACK’, whether seen as a laudatory indication in relation to the goods at hand or to something unique and prestigious or conveying the idea of elegance and distinction, or simply as the colour black, is dissipated decisively as this word is considered not particularly distinctive. Consequently, it is considered that the signs are conceptually similar at most to a low degree.

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 and enjoys a high degree of recognition among the relevant public, in particular in Poland, and in connection with energy drinks. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed at this point. This is because the opponent’s energy drinks were found dissimilar to the contested goods. Thus, even if the earlier mark enjoyed an enhanced distinctiveness for energy drinks, the similarity of goods is a sine qua non condition for there to be likelihood of confusion.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision regarding the perception of the word ‘BLACK’ and other elements of the earlier sign, the distinctiveness of the earlier mark must be seen as reduced for liqueurs, or any other goods on which the opposition is based and which could be found similar or identical to the opponent’s goods.

e) Global assessment, other arguments and conclusion

It has been established in the previous sections of the decision that the contested goods are identical to the opponent’s goods. The earlier sign has a reduced distinctiveness for the goods at hand. As regards the signs, they show a low degree of similarity due only to the coincidence in the English word ‘BLACK’.

The signs differ in the remaining elements and the overall impressions of the signs are different. Importantly, the contested sign begins with the element which is considered distinctive and will first attract the consumers’ attention. The coincidence in the component ‘BLACK’ which does not possess a particularly high distinctiveness, cannot in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.

Given the low degree of visual, aural and conceptual similarity of the signs it must be concluded that even the identity of the goods is not sufficient to establish a likelihood of confusion in the present case on the part of a public that demonstrates a reasonable level of attention. That is particularly so given that the earlier mark does not enjoy a high degree of recognition for the goods at hand, which could have perhaps increased such a likelihood, in line with the case-law according to which the more distinctive the earlier trade mark, the greater will be the likelihood of confusion.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the Polish trade mark registration No 290 988 and Polish trade mark registration No 273 187 . The opponent invoked Article 8(1)(b) EUTMR in relation to those earlier marks.

Since these marks are similar to the one that has been compared (the word ‘BLACK’ in a dominant position placed on a label-like rectangular shape with additional word elements written in a smaller font and a depiction of a star) and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims that its earlier European Union trade mark registration No 11 591 344 has reputation in relation to energy drinks, in European Union, and in particular in Poland.

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][holder] 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 mark

According to the opponent, the earlier European Union trade mark registration No 11 591 344 has reputation in relation to energy drinks in Poland.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 05/12/2017. However, the contested trade mark has a priority date of 13/07/2017.Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Poland prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely energy drinks in Class 32.

The opposition is directed against the following goods:

Class 33: Liqueurs based on liquorice.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 28/02/2018 the opponent submitted the following evidence:

 Advertising material including materials from advertising campaign with Mike Tyson, Black Lottery campaign and a campaign with LFL players, LOT Polish Airlines and Porsche. However, majority of the examples of advertising materials do not show the context in which they appeared on the market, i.e. where and/or how they were presented to the public.

 Report by Zenith – The ROI agency showing the opponent’s expenses on promotion of the trade mark and exceeding 27 million PLN.

 Material showing sponsoring campaigns by the opponent in relation to cinema films and a music festival.

 Copies of awards received by the opponent in 2012-2015 and in relation to ‘BLACK ENERGY DRINK’, ‘BLACK SEX ENERGY’, ‘BLACK MOJITO ENERGY DRINK’.

 A printout of the opponent’s website showing that it is available in many languages.

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

The evidence shows promotional efforts of the opponent, however, it is not strong enough to reach the threshold of reputation. This is because, firstly, many of advertising materials are not put in the context, i.e. it is not clear how they were presented to the public, or how many viewers/listeners/readers they reached, and consequently, what is the recognition of the trade mark by the relevant public, and secondly, the remaining evidence shows little information on the extent and the intensity of the use of the trade mark.

Even though the opponent submitted copies of some awards, there is only one clear indication for ‘Black Energy Drink Classic’ being a consumers’ award in 2014, but the criteria for the remaining awards are not known and the evidence, as such, cannot give first-hand information about trade mark awareness.

Moreover, the evidence concerning production and sales figures as well as market share is of unknown origin and/or nature, undated and unsigned and does not include adequately substantiated or verifiable objective evidence.

The opponent could have submitted opinion polls or market surveys which are largely held as being the most suitable means of evidence for providing information about the degree of knowledge of the mark. Aside from submitting such information, the opponent could have filed more supporting documentation, such as for example, declarations made by independent parties, or newspaper articles attesting as to the reputation of the mark.

As a result, the evidence taken as a whole does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has 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 mark has 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.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.