OPPOSITION No B 3 058 500

FrieslandCampina Nederland B.V., Stationsplein 4, 3818 LE Amersfoort, Netherlands (opponent), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, Netherlands (professional representative)

a g a i n s t

V&F S.L., Avda. de Machupichu 85 - 1º I, 28043 Madrid, Spain (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 24/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 500 is upheld for all the contested goods.

2. European Union trade mark application No 17 865 312 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 17 865 312 . The opposition is based on, inter alia, Benelux trade mark registration No 939 740 . The opponent invoked Article 8(1)(b) EUTMR in relation to this earlier trade mark.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 27/02/2018.

Earlier Benelux trade mark registration No 939 740 was registered on 10/09/2013.

Therefore, the request for proof of use of the earlier Benelux trade mark registration No 939 740 is inadmissible.

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 Benelux trade mark registration No 939 740.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit juice beverages; Syrups and other preparations for making beverages; Breakfast drinks, included in this class.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer).

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.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested alcoholic beverages (except beer) are similar to the opponent’s beer. Although their production processes are different, these goods have the same nature since they belong to the same category of alcoholic drinks intended for the same consumers. They share distribution channels since they can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. They can also be found in the same section of supermarkets. Furthermore, they can originate from the same undertakings.

2. 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 similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 common element ‘MONA’ is meaningless in the relevant territory, however part of the relevant public may perceive it as a female name. ‘MONA’ is considered distinctive regardless of whether it will be perceived as a female name or not.

The remaining verbal elements in the contested sign are meaningless in relation to the goods at hand in the relevant territory and considered distinctive. However, because of their size and position within the sign, they play a secondary role in the overall impression of the contested sign and have a limited impact on consumers.

The figurative element of the female face will be perceived as such and it is distinctive. It is also the dominant element of the contested sign.

Visually, the signs coincide in ‘MONA’ which is the only verbal element of the earlier mark and which plays an independent distinctive role in the contested sign where it is immediately perceptible. The signs differ in the remaining verbal elements of the contested sign which, however, play a secondary role and have a limited impact on consumers as explained above, and in the figurative elements and stylisation of both signs. In this regards, even though the figurative element of a female face in the contested sign is visually eye-catching, the verbal element ‘MONA’ is likely to have a stronger impact on consumers. This is because 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).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘MONA’. However, the signs differ in the pronunciation of the remaining verbal elements of the contested sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the female name by part of the relevant public, the signs are conceptually similar to an average degree for this part of the relevant public (since they will also perceive a concept of the female face in the figurative element of the contested sign).

They are conceptually not similar for part of the public that will not associate any meaning with the word ‘MONA’ (but which will see the concept of a female face in the figurative element of the contested sign).

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods are similar and the trade marks have been found visually similar to an average degree, aurally similar to a low degree and conceptually similar to an average degree (at least for part of the relevant public). The earlier mark has normal inherent distinctiveness.

The signs coincide in ‘MONA’ which is the only verbal element of the earlier mark, and it is entirely reproduced in the contested sign where it plays an independent and distinctive role. Because of their size and position, the remaining verbal elements of the contested sign play secondary role in the overall impression and have less impact on consumers than the element ‘MONA’. Finally, even though the figurative element of the contested sign is visually eye-catching and will definitely not escape the attention of the consumers, it is the verbal element ‘MONA’ that will have more impact on consumers for the reasons explained above.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 939 740. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Benelux trade mark registration No 939 740 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).

Furthermore, the fact that the applicant requested proof of use of the opponent’s Benelux trade marks No 94 478 and No 380 912 is irrelevant for the outcome of the opposition in the present case as it is fully successful on the basis of Benelux trade mark registration No 939 740 which is not subject to the proof of use obligation.

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

Martin MITURA

Anna BAKALARZ

Katarzyna ZANIECKA

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.