OPPOSITION No B 3 052 435

TSI GmbH & Co. KG, Südring 26, 27404 Zeven, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative)

a g a i n s t

Rockstar, Inc., 4730 S. Fort Apache Road Suite 300, 89147-7947 Las Vegas, United States of America (applicant), represented by Beatrice Martinet, 8 Avenue Percier, 75008 Paris, France (professional representative).

On 15/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 435 is upheld for all the contested goods.

2. European Union trade mark application No 17 771 809 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all goods of European Union trade mark application No 17 771 809 for the figurative mark , namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 13 543 988 for the word mark ‘TWISTER’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use. Moreover, for the request for proof of use to be admissible, it has to be submitted as an unconditional request in a separate document according to Article 10(1) EUTMDR.

Furthermore, the European Union trade mark registration No 13 543 988 was registered on 08/07/2017 and the grace period has not lapsed yet, therefore there is still no obligation for the opponent to use the earlier mark according to Article 18(1) 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 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, 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, inter alia, the following:

Class 32: Beers; Non-alcoholic beverages, non-alcoholic beverages containing caffeine, taurine and/or guaranine, isotonic beverages, awareness-enhancing non-alcoholic soft drinks; Basic non-alcoholic beverages and/or alcoholic beverages containing bases; Energy drinks, soft drinks, non-alcoholic mixed beverages; Lemonades, fruit juices, vegetable juices, vitamin juices, in particular multivitamin juices; Smoothies; Non-alcoholic beverages containing whey, in particular beverages containing whey with added fruit; Liquid and/or dry preparations, in particular instant powders, syrups, essences and concentrates for making non-alcoholic beverages, lemonades, non-alcoholic mixed beverages, beverages containing vitamins, beverages containing multivitamins, fruit beverages, fruit juices and/or vegetable juices; Mineral waters, aerated waters; Pastilles for effervescing beverages; Foaming powder for beverages, in particular for beverages tasting of fruit.

The contested goods are the following:

Class 32: Energy drinks.

Energy drinks are identically contained in both lists of goods.

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 average.

c) The signs

TWISTER
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 ‘TWISTER’ is meaningful in certain territories, for example in those countries where English is understood. In these countries ‘Twister’ will be understood as ‘a tornado’ or ‘a swindling or dishonest person’ (information extracted from Collins Dictionary on 11/07/2019 at https://www.collinsdictionary.com/dictionary/english/twister). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is composed of the word ‘Twister’ only which, as previously mentioned, is understood by the relevant public. The word element is distinctive as it is not descriptive, allusive or otherwise weak/non-distinctive for the relevant goods. The applicant argues that the word element ‘Twister’ has an evocative connotation; it refers to a “twist” in the recipe, an interesting change. However, based on the evidence filed, namely four different web page addresses where the word ‘twist’ and/or ‘twister’ appear, it is not enough to evidence a wide spread, usual understanding of the word under this definition. Furthermore, it would require too many mental steps on the part of the relevant public for it to perceive it as an ‘unusual mix of flavours’. Therefore, the Opposition Division is of the view that the word element ‘Twister’ is, in relation to energy drinks, normally distinctive.

The contested mark is a figurative sign composed of three verbal elements, namely ‘Rockstar’, ‘Twister’ and ‘Energy’. The second verbal element ‘Twister’ is distinctive as argued above. The last verbal element is clearly descriptive of the goods, namely energy drinks and is, therefore, non-distinctive.

The correct grammatical spelling of the first verbal element ‘Rockstar’ would be ‘rock star’, which is understood as ‘a pop musician, usually a singer, who is very famous’ (information extracted from Collins Dictionary on 11/07/2019 at https://www.collinsdictionary.com/dictionary/english/rock-star). However, either as ‘rockstar’ or ‘rock star’, the relevant public will understand the concept, which is not descriptive, allusive or otherwise weak/non-distinctive for the relevant goods.

Furthermore, the word element ‘Rockstar’ includes instead of the letter ‘a’, a star (‘Rockst r’), intensifying the concept of a star. It is important to point out that the representation of a star is considered to be of weak distinctiveness as a laudatory element highlighting the quality of the so-labelled products (10/09/2014, T-199/13, ‘Star’, EU:T:2014:761, § 61 and 11/05/2010, T-492/08, ‘Star foods’, EU:T:2014:186, § 52).

Contrary to the applicant’s view, the Opposition Division considers the second word element ‘Twister’ co-dominant together with ‘Rockstar’. Both are eye-catching elements in the contested sign, ‘Twister’ due to its strongly bold and white coloured letters and ‘Rockstar’ due to the prominent size of the letters.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive verbal element ‘TWISTER’. The whole earlier sign is included in the contested mark in a visually striking stylized manner, namely strongly bold and white coloured, which catches the attention in comparison to the other verbal elements in grey tones. The element ‘Rockst r’ is also distinctive, but does not undermine the word element ‘Twister’, which is co-dominant. The verbal element ‘energy’, being non-distinctive, as well as the star device, being weak, has barely any impact on the comparison.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the distinctive word element ‘TWISTER’, present identically in both signs. The pronunciation differs in the distinctive word ‘Rockstar’ and non-distinctive word ‘Energy’ of the contested sign which have no counterpart in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs include the distinctive element ‘TWISTER’, which is also understood by the relevant public, the signs are similar to an average degree, even taking into account the second distinctive element ‘ROCKSTAR’, which does not undermine the conceptual similarity. The word element ‘energy’ is non-distinctive and, therefore, has barely any impact on the comparison, as it cannot indicate any origin of the goods.

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.

The opponent argued that its mark is highly inherently distinctive in relation to the goods and services for which it is protected because it is not descriptive, allusive or laudatory. However, any higher degree of distinctiveness acquired by the earlier mark has to be proven by its proprietor by submitting appropriate evidence. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

As no evidence was filed to prove an enhanced distinctive character, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In this regard, the Opposition Division concurs with the opponent, that 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 and it has, therefore, a normal degree of distinctiveness.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §17).

The goods are identical, the earlier mark enjoys normal inherent distinctiveness and the goods target the general consumer public with an average level of attention. The signs are aurally, visually and conceptually similar to an average degree. The complete earlier sign is included in the contested sign, where it is not only distinctive but also co-dominant. The Opposition Division concurs with the opponent in referring to the Thomson Life decision in so far as the word element ‘Twister’ is, entirely included in the contested sign and has an independent, distinctive role therein.

As correctly stated by the opponent, in order to fulfil a thorough comparison of the signs at a visual, aural and conceptual level, it is necessary to assess the inherent distinctiveness and dominance of the components of the sign. Therefore, it is not an arbitrary dissection of the mark, but an analysis of each of its parts in order to weigh each component and be able to give an overall assessment on its similarity.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word element ‘TWISTER’. In support of its argument the applicant refers to several trade mark registrations in Europe and in the European Union member states, as evidenced in Appendix 1 and 2 of the applicant’s observations.

The Opposition Division notes that the existence of several trade mark registrations (as filed in Appendix 1 and 2 by the applicant) is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In this regard, the applicant argues that there are at least seven different beverages which include the word element ‘Twister’, coming from different undertakings, coexisting in the market. In Appendix 3 of its observations, the applicant includes pictures of these beverages and their webpage, of which most are fruit beverages. The evidence filed does not prove real use of these different products, bearing the verbal element ‘TWISTER’ in the European Union’s market, nor the relevant consumer’s exposure to this assortment or its risk of confusion thereto. The burden of proof is on the applicant in this case and the evidence furnished in this regard is only pictures of the different products bearing the word ‘Twister’ and a webpage link thereto. It is not proven whether, where, when and how these products are offered and in which way the relevant consumer might not be able to clearly differentiate the origin of the products. In other words, the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘TWISTER’. Under these circumstances, the applicant’s claims must be set aside.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant argues that the sign ‘ROCKSTAR’ is largely known as a brand on energy drink, which will be understood by the average consumer as the indicator of origin. However, no evidence was filed to sustain this argument and, moreover, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The facts of the Ann Taylor Loft case (17/02/2011, T 385/09, Ann Taylor Loft, EU:T:2011:49) referred to by the applicant are different from the present one. In the Ann Taylor Loft case, the French consumer public does not understand the meaning of the verbal elements, which undermines conceptual comparison of the signs, which is not the case in the present proceeding.

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 covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 Union trade mark registration No 13 543 988. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Martin EBERL

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.