OPPOSITION No B 3 052 847

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830, Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700, Bludenz, (professional representative)

a g a i n s t

Shenzhen Meixixi Catering Management Co., Ltd.,1203-4-2, Dachong Business Centre No.9672, Nanshan Road, Yuehai Street, Nanshan District, Shenzhen, Republic of China (applicant), represented by Ballester IP, Avda. de la Constitución 16, 1°D, 03002 Alicante, Spain (professional representative).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 847 is partially upheld, namely for all the contested goods and services, with the exception of the following contested services:

Class 35: Publication of publicity texts; Advertising services; Advertising; Publicity; Shop window dressing; Television advertising; Business information; On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Sales promotion for others; Procurement services for others [purchasing goods and services for other businesses]; Design of advertising flyers; Design of advertising logos; Design of advertising brochures; Design of advertising materials; Advertising design.

Class 43: Hotel services.

2. European Union trade mark application No 17 798 216 is rejected for all the goods and services, with the exception of the above services, for which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against part of the goods and services of European Union trade mark application No 17 798 216 (figurative), namely all goods and services in Classes 29, 30, 32, 35 and 43. The opposition is based on, inter alia, Hungarian trade mark registration No 218 676 ‘HEY-HO’ (word). The opponent invoked Article 8(1)(b) and (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 Hungarian trade mark registration No 218 676 ‘Hey-Ho’.

a) The goods and services

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

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces [condiments]; spices; ice; tea-based beverages; ice tea.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectar; fruit nectar beverages; vegetable beverages and vegetable juices (beverages); syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 29: Frozen fruits; Milk beverages, milk predominating; Fruit salads; Fruit jellies; Milk products; Fruits, tinned; Milk shakes; Fruit based snack foods; Snack foods based on vegetables; Beverages consisting primarily of milk; Beverages having a milk base; Beverages made from milk; Beverages made from or containing milk; Milk; Milk-based beverages; Milk beverages; Milk tea; Cocoa milk (milk-based); Snacks, mainly of fruits or vegetables.

Class 30: Coffee-based beverages; Cocoa beverages with milk; Cocoa-based beverages; Chocolate-based beverages; Tea; Iced tea; Tea-based beverages; Cookies; Bread; Cakes; Sandwiches; Puddings; Plant flavourings [other than essential oils] for beverages.

Class 32: Non-alcoholic fruit extracts; Fruit juice; Waters [beverages]; Non-alcoholic beverages; Fruit nectars, non-alcoholic; Vegetable juices [beverages]; Preparations for making beverages; Non-alcoholic fruit juice beverages; Alcohol free beverages; Aloe juice beverages; Beverages (Non-alcoholic -); Fruit beverages; Non-alcoholic beverages flavored with tea; Sarsaparilla [non-alcoholic beverage]; Vegetable-based beverages; Plant beverage; Milky tea, non-milk-based.

Class 35: Publication of publicity texts; Advertising services; Advertising; Publicity; Shop window dressing; Television advertising; Business information; On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Sales promotion for others; Procurement services for others [purchasing goods and services for other businesses]; Design of advertising flyers; Design of advertising logos; Design of advertising brochures; Design of advertising materials; Advertising design.

Class 43: Cafés; Café services; Cafeteria services; Canteen services; Restaurant services; Snack-bar services; Food and drink catering; Tea rooms; Hotel services; Bar services; Mobile catering; Mobile restaurant services; Providing of food and drink via a mobile truck; Mobile canteen for food supply.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 29

The contested milk beverages, milk predominating; milk products; milk shakes; beverages consisting primarily of milk; beverages having a milk base; beverages made from milk; beverages made from or containing milk; milk-based beverages; milk beverages; milk tea; cocoa milk (milk-based) are, or include inter alia, beverages containing or based on milk. They are therefore similar to the opponent’s fruit beverages and fruit juices in Class 32, since they have the same purpose to quench thirst, share distribution channels and relevant public and are furthermore goods in competition.

The contested fruit jellies; fruits, tinned; fruit based snack foods; snack foods based on vegetables; snacks, mainly of fruits or vegetables are varieties of food products based on or containing fruit or vegetables. As such, they are at least lowly similar to the opponent’s sauces [condiments] in Class 30, which include, inter alia, fruit and vegetable sauces. Thus, the goods under comparison share at least distribution channels, relevant public and producer.

The contested frozen fruits; fruit salads and milk are lowly similar to the opponent’s fruit beverages and fruit juices in Class 32. The contested frozen fruits and fruit salads and the opponent’s products consist of fruit or have fruit as their main ingredient. For this reason they are frequently offered for sale by the same manufacturer and target the same public. As for the contested milk and the opponent’s goods, while it is acknowledged that their producers are quite distinct, this does not by itself rule out a finding of similarity. In particular, it is taken into account that these goods could be in competition, since often milk and fruit juices are consumed for example at breakfast. In that sense, their relevant public and distribution channels also coincide, as often milk and fruit juices are offered in the same beverage coolers in supermarkets.

Contested goods in Class 30

Tea; tea-based beverages; bread are identically contained in both lists.

Coffee-based beverages; cocoa-based beverages; cocoa beverages with milk; chocolate-based beverages; iced tea are identical to the opponent’s coffee, cocoa or tea, respectively. This is because the contested beverages are included in the respective broad categories of the opponent.

The contested cookies and cakes at least overlap with in the opponent’s preparations made from cereals and are therefore identical.

The contested sandwiches are similar to the opponent’s bread, because they share the same nature and are further produced by the same manufacturers and offered in the same sales outlets to the same end-users.

Plant flavourings [other than essential oils] for beverages are similar to the opponent’s sugar. Flavourings for beverages refers to the introduction of a new flavour to a drink by altering or modifying the original flavour. On the other hand, sugar is a sweet substance used to make food and drink taste sweet. They also target the same public. Therefore, the goods under comparison are likely to be distributed through the same channels (wholesalers would be preferred by professionals, and retailers, supermarkets, etc., would be preferred by general consumers).

The contested puddings are lowly similar to the opponent’s preparations made from cereals. In particular, they usually coincide in relevant public and distribution channels. Furthermore they are in competition.

Contested goods in Class 32

Non-alcoholic fruit extracts; fruit juice; non-alcoholic beverages; fruit nectars, non-alcoholic; vegetable juices [beverages]; non-alcoholic fruit juice beverages; alcohol free beverages; aloe juice beverages; beverages (non-alcoholic -); fruit beverages; non-alcoholic beverages flavored with tea; sarsaparilla [non-alcoholic beverage]; vegetable-based beverages; plant beverage; milky tea, non-milk-based of the contested mark are identical to the opponent’s other non-alcoholic beverages, as they are either included in the latter broad category or synonymous to it.

The contested waters [beverages] overlap with the opponent’s mineral and aerated waters. These goods are therefore identical.

Preparations for making beverages of the contested mark is identical to the opponent’s syrups and other preparations for making beverages, since the listed opponent’s goods in fact cover identical scope to the scope of the contested goods.

Contested services in Class 35

The contested services in this class encompass various types of advertising and advertising-related services, as well as business information and procurement services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. In this vein, the opponent’s claim that these services and its goods are similar because the latter can be the goods with respect to which advertising services are provided must be set aside. Further, procurement is the sourcing and purchasing of goods and services for business use. In this vein, the fact that procurement services might relate to any of the goods of the opponent does not lead to similarity between them. Similarly, no similarity can be found with business information, even if the provision of such information might relate, inter alia, to any of the goods of the opponent.

Accordingly, all contested services in this class are dissimilar to the opponent’s goods.

Contested services in Class 43

All contested services in this class, with the exception of hotel services, are exclusively services for provision of food and drink. These services are considered lowly similar to preparations made from cereals in Class 30 of the opponent. In particular, the providers of the contested services necessarily operate by providing, inter alia, the mentioned opponent’s goods. In this sense, there is a complementarity relationship between them (15/02/2011, T-213/09, 'Yorma`s', EU:T:2011:37, § 46; 04/06/2015, T-562/14, ‘YOO’, EU:T:2015:363, § 27).

Nowadays it is very common that many bakeries not only sell bread and pastries, but also offer coffee and small snacks, e.g. breakfasts, served at the table. And vice versa, restaurants and other establishments for provision of food and drink also directly market foodstuff products manufactured by them. Therefore, the goods and services target the same public.

Hotel services of the contested mark comprise of accommodation services provided by hotels. The fact that these contested services are directed at the public at large is not sufficient to find them similar. Neither is the fact that hotel services often include provision of food and drink. In particular, these are auxiliary services, where the main service relates to provision of temporary accommodation. Normally, hotel services providers do not directly market to the public foodstuff and beverages, and the consumers would not expect that such goods and services originate from the same company. These services and goods are not complementary either, since a complementarity relationship requires that one is indispensable for the other, while in the case at hand, as said above, it is the provision of accommodation that is the core activity of hotel services. Accordingly, the contested hotel services are dissimilar to all of the opponent’s 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 and services found to be identical and similar to various degrees are directed at the public at large and at professional public. Since there is nothing in the nature of the goods and services nor any particular consideration concerning their impact or price that could affect the degree of attention, it is considered average.

c) The signs

HEY-HO
Earlier trade mark	Contested sign

The relevant territory is Hungary.

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).

It is acknowledged that when confronted with verbal elements in a sign, the public does not normally proceed to breaking them down into sub-elements, unless there is something in the way they are represented or there are identifiable parts of them that suggest concrete meaning or known word(s) (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this context, it is considered that the relevant public will break the contested sign into ‘HEY’ and ‘TEA’ since both of these elements suggest concrete meanings for them. The English term ‘HEY’ will be perceived as such, as a form of informal greeting or an interjection, due to its closeness to the Hungarian equivalent ‘hé’/’hej’/’héj’ (https://angol-magyar-szotar.hu/hey!.html). ‘TEA’ is the Hungarian word for ‘tea’ (http://mek.oszk.hu/adatbazis/magyar-nyelv-ertelmezo-szotara/kereses.php?kereses=tea). Accordingly, the distinctiveness of ‘TEA’ will be at most reduced with respect to most of goods at issue and all the relevant services in Class 43. In particular, the word will be seen as directly describing part of the goods at issue (e.g. tea) or as alluding to characteristics they have (more generally beverages containing or based on tea or tea-flavoured drinks or cakes, e.g. beverages consisting primarily of milk, cakes) or as at least alluding to characteristics of the relevant services (e.g. establishments serving tea, like tea rooms or more generally alluding to the services of establishments where beverages are served/offered). As for ‘HEY’, its connotations will not create any associations with the goods and services at issue and this part of the sign will therefore be of normal distinctiveness.

As for the perception of the earlier sign, it will be naturally broken down into ‘HEY’ and ‘HO’, in result of the use of a hyphen between them. The above said on the concept behind ‘HEY’ is applicable in the case at hand. ‘HO’ has no meaning. It is acknowledged that ‘hó’ means snow in Hungarian, however considering that such word is written with an accent over the vowel ‘o’ and the importance of accent marks in Hungarian, it is likely that the majority of the public does not see such connotations in this element. The distinctiveness of the elements of the earlier mark is normal, irrespective of whether a meaning is seen in it or not.

In its observations the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘HEY’. In support of its argument it refers to a list of European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘HEY’. Under these circumstances, the applicant’s claims must be set aside.

Additionally, it is to be noted that the applicant states that ‘the sequence HEY does not have an independent distinctive role in the opponent’s trademarks in comparison to the end word elements, -HO, being both overall equally distinctive.’ However, as explained above, the public will see in ‘HEY’ a concept and will therefore dissect ‘HEY’ as a separate element in the sign. Furthermore, even if this were not the case, i.e. ‘HEY’ were meaningless, in result of the use of a hyphen to separate ‘HEY’ and ‘HO’, the public would in all events see the mark as composed of the two elements ‘HEY’ and ‘HO’.

Lastly, by acknowledging that ‘both [are] overall equally distinctive’, the applicant in fact implies that the mark will be seen as composed of two elements, each of them being on the same footing in terms of distinctiveness. In that sense, the logical conclusion from the applicant’s statement is that each of the two elements of the sign has an independent distinctive role in it, since none of them is related to the goods at issue and furthermore they will not be seen as a whole unit, having semantic connotations that are different from the mere sum of its two components.

Finally, it is to be noted that a dominant element may not be identified in the contested sign, while the earlier mark, being a word mark, may not have an element that is visually more eye-catching, since all its elements are represented in the same font and font size.

Visually and aurally, the signs coincide in ‘HEY’, which is the initial part of both signs that will be identified as a separate element in both of them. Moreover, for most of the goods at issue and all relevant services this is the most distinctive element of the contested sign. The stylisation of the typeface in the contested sign is fairly ordinary and in no way diverts the attention from the represented verbal part.

Considering the coincidence in one of the identifiable elements of the signs, out of two, the normal distinctiveness of that element and that it is the first element of the signs, even for the few goods for which the second element ‘TEA’ in the contested sign is of normal distinctiveness and irrespective of the differing second element ‘HO’ in the earlier mark, the signs are of average visual and aural similarity.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the common concept of ‘HEY’ in both signs, and upon taking into account the distinctiveness factor, the signs are found to be conceptual similarity at least to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, 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. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

It has been established above that the goods and services are partially identical, partially similar to various degrees and partially dissimilar. The relevant public is the public at large and the professional public. The degree of attention is average. The signs are aurally and visually similar to an average degree and conceptually similar at least to an average degree.

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 or economically linked undertakings. In this connection, the coincidence in a distinctive element in the beginning of the signs, out of two elements in total, is sufficient for a finding of a likelihood of confusion even in relation to goods, for which the differing second part of the contested sign is of normal distinctiveness. Considering the market practices, including in relation to the goods and services at issue, where merchants use the same distinctive component to form different sub-brands of goods and services offered by them, 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Hungarian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the analysed earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the analysed earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

(i) European Union trade mark registration No 14 715 858, ‘HEY-HO’ (word), registered for goods in Classes 30 and 32;

(ii) European Union trade mark registration No 15 661 994, ‘Hey Ho’ (word), registered for goods in Classes 30 and 32;

(iii) Austrian trade mark registration No 284 417, ‘HEY-HO’ (word), registered for goods in Classes 30 and 32;

(iv) Slovakian trade mark registration No 242 489, HEY-HO’ (word), registered for goods in Classes 30 and 32.

Since these marks cover the same or very similar scope of goods in the same classes, as the analysed earlier mark, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent has also based its opposition on the reputation of its Hungarian trade mark registration No 218 676 ‘Hey-Ho’ under Article 8(5) EUTMR.

It is to be noted that in its submission dated 14/12/2018, i.e. within the time limit to substantiate its opposition but after expiry of the opposition period, the opponent refers also to its European Union trade mark registration No 15 661 994, as basis of Article 8(5) EUTMR. Nevertheless, since this right was not invoked as basis of this ground within the opposition period, it may not validly serve as such, because the opponent may not validly broaden the scope of its opposition after the end of the opposition term.

Consequently, the Opposition Division will proceed analysing the opposition on this ground in relation to Hungarian trade mark registration No 218 676 ‘Hey-Ho’.

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 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 trade mark has a reputation in Hungary.

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 10/02/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Hungary 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:

Class 32 Non-alcoholic beverages; fruit juices; fruit drinks.

In the light of the rejection of part of the contested goods and services on grounds of Article 8(1)(b) EUTMR, the opposition on this ground is directed against the following services:

Class 35: Publication of publicity texts; Advertising services; Advertising; Publicity; Shop window dressing; Television advertising; Business information; On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Sales promotion for others; Procurement services for others [purchasing goods and services for other businesses]; Design of advertising flyers; Design of advertising logos; Design of advertising brochures; Design of advertising materials; Advertising design.

Class 43: Hotel services.

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 14/12/2018 the opponent submitted the following evidence:

 Brand awareness survey: A survey ‘18217, International Brand Tracking Rauch HUNGARY’. It is conducted in the period from 26/10/2017 to 12/11/2017 in Hungary by Kantar TNS Info Research Austria. The sample size amounts to 1000 individuals aged 14-69 years. They have been interviewed online. The brand awareness of HeyHo in relation to fruit juices, established by the survey is (i) 4% top of mind; (ii) 22% spontaneous and (iii) 49% prompted, which amounts to 75% awareness of the brand HeyHo in relation to fruit juices in total. These levels of awareness are based on the answers of 447 individuals out of the 1000 interviewed that identified themselves as users of fruit juices. The survey also contains a comparison with the values from a survey conducted in 2016, where the top of mind and spontaneous awareness of HeyHo in 2016 appear to be at the same levels as in 2017, while the prompted awareness in 2016 is slightly lower than the one measured in 2017. The base sample for 2016 is said to be 431 individuals that described themselves as users of fruit juices. The brand logo of HeyHo, used in the survey is . Additionally, 9% of the juice users (477) identified HeyHo as a brand for juice they had recently seen, heard or read about in advertising. (Annex 1)

 Affidavit of the legal counsel of the opponent dated 13/12/2018, according to which the ‘Hey Ho’ branded products generated in Hungary the following turnover: (1) more than 2 300 000 euro in 2016; (2) more than 3 500 000 euro in 2017 and (3) more than 3 500 000 euro in 2018. It is confirmed also that the ‘Hey Ho’ trade mark is used in relation to fruit nectars and fruit drinks in Hungary and that such goods are distributed and invoiced by Rauch Hungaria Kft, which company belongs to the same group as the opponent, namely Rauch group of companies (Annex 2).

 Invoices: (Annex 3) Invoices of 2016, 2017 and 2018 issued by Rauch Hungaria Kft for ‘Hey Ho’ products, such as, inter alia, Hey Ho narancs. The invoices are provided in Hungarian and partially translated into English. They show sale of significant quantities of ‘Hey Ho’ branded goods. The prices under the invoices are deleted.

In its second submission of 16/07/2019, after expiry of the time limit, the opponent submitted additional evidence, comprising of invoices and English language translations. Since the evidence submitted by the opponent within the period given to it to substantiate its rights are considered sufficient, the Opposition Division will not take into account the additionally submitted evidence.

For the sake of completeness, since invoices primarily provide information on the intensity of use, the geographical extent and duration of the use of a mark, in this particular case, even if these additional invoices are taken into account, they may not add information that could lead to a different conclusion on the reputation of the mark. In particular, it is said in the opponent’s submission that they cover the same period as the ones already submitted (plus the year 2019). Furthermore, the territory is the same and finally, the initially submitted evidence shows the generated turnover for these years.

The applicant argues that the opponent did not submit some of the invoices in the language of the proceedings and that therefore this evidence should not be taken into consideration. However, it is to be noted that in fact all submitted invoices in Hungarian are accompanies by partial translations in English. Moreover, the opponent is not under any obligation to translate the evidence filed with a view to show the reputation of the earlier mark(s), unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Taking into account the nature of the parts of the documents that are not translated they are in fact not necessary, since based on the invoices in the original language and the partial translations, all necessary information can be obtained. In particular, it can be seen that certain quantities of ‘Hey Ho’ branded goods are sold in Hungary. Additionally, in the affidavit submitted together with the invoices, it is expressly explained that references to ‘HH’ in the invoices stand for ‘Hay Ho’. Therefore, the Opposition Division considers that there is no need to request additional translation.

The abovementioned evidence, namely the brand awareness survey, indicates that the earlier trade mark enjoyed certain degree of recognition among the relevant public. In particular, in the autumn of 2017, the brand awareness of ‘Hey Ho’ for fruit juices amounted to 75%, 26% of which are top of mind and spontaneous awareness, while the remaining 49% are prompted awareness. The survey also shows that the overall brand awareness in 2016 was similar, the main difference being in the slight increase in 2017 of the prompted awareness. The survey is conducted by a reputable research organisation, the questions asked are not misleading or suggestive of the answer and the sample size is sufficient. Moreover, based on the submitted survey it is clear also that investment in the form of advertising has been made for increasing the brand awareness through advertising.

It should also be mentioned that while the percentage of unprompted brand awareness of ‘Hey Ho’ brand, which amounts to 26%, taken alone is not particularly high, it is noted that given the significant competition and the presence of many companies in the non-alcoholic beverages sector, the shown percentages are considered to show that the mark has been known by a significant part of the public. The rest of the figures in the study with respect to other brands spontaneously brought in the mind of the consumers are not significantly higher, and ‘Hey Ho’ brand is the 3^rd most spontaneously mentioned brand out of 18 in total.

The generated turnover in the years from 2016 to 2018 of ‘Hey Ho’ branded products, as per the submitted affidavit, support the finding that the brand enjoys a certain degree of reputation. In particular, it is noted that fruit juices are not particularly expensive goods and considering also the population of Hungary, a turnover of over 3 500 000 euro is an indication that ‘Hey Ho’ branded products have significant presence on the Hungarian market. It is true that the turnover figures are provided in a document stemming from the party, however account is taken of the fact that such information would normally be available only to the party at issue and not to third parties. The invoices submitted indicate that large quantities of the goods were sold on the Hungarian market in the period from 2016 to 2018 inclusive.

It is noted that the evidence relates only to the period from 2016 to 2018, however long standing use or reputation for a significant period before the filing date of the applicant is not a prerequisite for a successful reputation claim. It suffices that in 2017, i.e. a few months before the date of filing of the contested mark, the brand awareness regarding ‘Hey Ho’ branded fruit juices amounted to 75%.

Lastly, while it is noted that the opponent has not submitted particularly extensive materials to prove its reputation, the brand awareness survey, further supported by the affidavit and exemplary invoices, taken as a whole, indicate that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys a degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to fruit juices, in particular the brand awareness survey analyses the consumer’s awareness regarding ‘Hey Ho’ fruit juices only. To that end, and considering the remaining evidence mainly support the findings from the brand awareness survey but are not capable by themselves or taken together, to indicate reputation for additional goods, the Opposition Division concludes the evidence indicate that the brand ‘Hey Ho’ enjoys a certain degree of reputation for fruit juices in Hungary.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As seen from the analysis above on the grounds of Article 8(1)(b) EUTMR, the contested services at issue, namely in Class 35 and in Class 43 are dissimilar to fruit juices.

The contested services in Class 35 are services provided to business consumers with a view of supporting the running of their business and, as far as the advertising-related services are concerned, also of strengthening their market position. These consumers are particularly attentive when selecting such services, usually looking for references, company history, representative portfolio and other indications that show the expertise and high-quality work of the respective providers. On the other hand, fruit juices for which the opponent’s mark enjoys a certain degree of reputation are mass consumption goods, intended to the public at large. While it is unquestionable that business consumers are also consumers of everyday goods in their personal life, the contested Class 35 services are quite apart from the opponent’s fruit juices. They in no way have a crossing point where the purchaser of professional advertising or procurement services, might think of fruit juices they are well aware of, when selecting such exclusively business-oriented services.

As for the contested hotel services in Class 43, as noted above, these are temporary accommodation services. While undeniably they and fruit juices are directed at the general public, they belong to two completely different sectors, satisfy completely different needs and their purchase is determined on the basis of completely different factors and requirements.

For the sake of completeness, the opponent itself has not provided any convincing arguments or evidence to show that such link might possibly be created. In fact, the opponent merely refers to the reputation and high distinctive character of its trademark and its use on the market for several years to conclude that there is a link.

In this connection, even though the marks at issue feature certain similarities, the gap between the relevant services in Class 35 and 43 and fruit juices in Class 32 is so significant, that the certain degree of reputation found to be enjoyed by the earlier mark and the average degree of overall similarity between the signs are not of a nature to create a link in the consumer’s mind. In particular, while the submitted evidence shows that the mark enjoys a certain degree of reputation, it does not indicate that the mark’s reputation is so strong that the mark would imminently emerge in the consumer’s mind when confronted with a similar sign but when used in a completely different market in a completely different environment and circumstances.

Accordingly, the goods and services at issue are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them in relation to the contested service in Class 35 and Class 43. Therefore, the opposition is not well founded under Article 8(5) EUTMR with respect to these services and 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDAS

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.