OPPOSITION No B 3 050 050

Monster Energy Company, 1 Monster Way, 92879 Corona, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Marc Charpentier, 41 avenue Trudaine, 75009 Paris, France (applicant).

On 30/01/2019, the Opposition Division takes the following

DECISION:

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

2. European Union trade mark application No 17 623 001 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 623 001 for the word mark ‘SUPRA’. The opposition is based on, inter alia, European Union trade mark registration No 16 209 355 for the word mark ‘SUPRA SODA’. 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 32: Soft drinks, namely, carbonated soft drinks; syrups for making soft drinks; concentrates for making soft drinks.

The contested goods are the following:

Class 32: Beer and brewery products; soft drinks; preparations for making beverages.

Class 33: Cider; preparations for making alcoholic beverages; alcoholic beverages (except beer).

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 32

The contested soft drinks include, as a broader category, the opponent´s carbonated soft drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested soft drinks, they are considered identical to the opponent’s soft drinks, namely carbonated soft drinks.

The contested preparations for making beverages include the opponent’s syrups for making soft drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.

The contested beer and brewery products are similar to the opponent´s carbonated soft drinks because they have the same purpose, they can be in competition and they are usually sold through the same distribution channels. Finally, the end consumer is the same.

Contested goods in class 33

The contested preparations for making alcoholic beverages are similar to the earlier syrups for making soft drinks because they are similar in nature, method of use, distribution channels, relevant public, and can have the same producer.

The contested cider; alcoholic beverages (except beer) and the carbonated soft drinks of the earlier right have points in common as regards their basic ingredients and 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. Therefore, they are similar to a low degree.

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 or similar to various degrees are directed at the public at large. The degree of attention is considered to be average.

c) The signs

SUPRA SODA	SUPRA
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SUPRA’ will be perceived by a substantial part of the public as the adverb used in texts or books to refer to something mentioned earlier or above. From this perspective, since it has no meaning in relation to the goods involved, it is of average distinctive character.

The element ‘SODA’ is commonly used in the relevant territory as the term used to refer to a sweet frizzy drink. Taking into account the kind of goods involved, this term is descriptive of some of the relative goods (e.g. soft drinks) and therefore
non-distinctive in relation to them, and weak in relation to other goods (e.g. syrups) for which it is at least allusive of the characteristics, such as their flavour or their purpose. Consequently this element is of reduced impact.

Even if ‘SUPRA’ and ‘SODA’ can be perceived as having other meanings, or no meaning at all, in order to focus on the best-case-scenario for likelihood of confusion to arise, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public (i.e. a significant part) for which ‘SUPRA’ and ‘SODA’ have the meanings referred to above.

‘SUPRA’ is placed at the beginning of the earlier right and it is therefore the element that first catches the consumer´s attention, since the public reads from left to right. In this same line, the impact of the element ‘SODA’ is reduced for being read and pronounced in the last place.

Visually and aurally the signs coincide in the sequence of letters ‘S-U-P-R-A’, and their sound. The contested sign is entirely contained in the earlier mark, being in this latter sign the first element read and pronounced.

However, they differ in the element ‘SODA’ of the earlier right, which is of reduced impact for the reasons explained above.

Therefore, the signs are visually and aurally similar to, at least, an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the verbal element ‘SUPRA’ which is the most distinctive element of the earlier right. Even though ‘SODA’ is
of reduced impact, its presence will still be registered. Therefore, the signs are conceptually similar to, at least, an average 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.

The opponent did not explicitly claim that its 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 distinctiveness of the earlier mark must be seen as normal despite the presence of an element of reduced impact in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to various degrees and target the public at large. The degree of attention of the consumer during purchase is average.

The signs are visually, aurally and conceptually similar to, at least, an average degree. The earlier mark is of average distinctive character.

The similarity between the signs results from their common element ‘SUPRA’, identically present in both signs, being the most or only distinctive element in the earlier right as explained in section c) of this decision, and the sole verbal element of the contested sign. The difference between the signs lies in the verbal element ‘SODA’ of the earlier right which has a reduced impact.

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 undertaking or economically linked undertakings. Indeed, in the present case it is likely that consumers will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.

The Opposition Division considers that there is a likelihood of confusion because the differences between the signs are confined to elements which have a reduced impact.

Considering all the above, there is a likelihood of confusion on the part of the relevant public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore the opposition is well founded on the basis of the opponent´s European trade mark registration No 16 209 355.

It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 16 209 355 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, he 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.

The Opposition Division

Francesca CANGERI SERRANO

Sylvie ALBRECHT

María del Carmen SUCH SÁNCHEZ

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.