OPPOSITION No B 3 056 072

Gaseosas Posada Tobon S.A., Calle 52, No. 47-42 Medellín, Colombia (opponent), represented by Hoffmann · Eitle Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative)

a g a i n s t

Zana Parr, Scherengrund 14, 63768 Hösbach, Germany (applicant), represented by Kanzlei Daniel Raimer, Ernst-Gnoß-Straße 22, 40219 Düsseldorf, Germany (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 072 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 17 865 808 for the figurative mark . The opposition is based on European Union trade mark registration No 11 451 564 for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 32: Aerated and non-aerated water, aerated and non-aerated mineral water, aerated and non-aerated fruit juices, non-alcoholic aerated and non-aerated flavoured beverages, aerated and non-aerated fruit drinks.

The contested goods are the following:

Class 32: Energy drinks; non-alcoholic beverages; isotonic beverages; lemonades.

The contested energy drinks; isotonic beverages and lemonades are included at least in one of the following categories of the opponent: non-alcoholic aerated and non-aerated flavoured beverages. Therefore, they are identical.

The contested non-alcoholic beverages include, as a broader category the opponent’s non-alcoholic aerated and non-aerated flavoured beverages. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large, as well as at professional athletes, in the case of isotonic beverages and energy drinks. The degree of attention is considered to be average.

3. The signs

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 word ‘Speed’, present in both marks, will be understood by the English-speaking part of the public as ‘the rate at which someone or something moves or operates or is able to move or operate or at which something happens or is done’. Bearing in mind that the relevant goods are non-alcoholic beverages, this element is distinctive. For the non-English-speaking part of the public, this element is meaningless, and it is, therefore, distinctive as well.

This common term is the only verbal element in the earlier mark and one of the verbal elements in the contested sign.

The element ‘M*ONKEYS’ in the contested sign is the dominant element as it is the most eye-catching due to its size and position. It will be understood by the English-speaking part of the public as the plural form of ‘a small to medium-sized primate’. Bearing in mind that the relevant goods are non-alcoholic beverages, this element is distinctive. For the non-English-speaking part of the public, this element is meaningless, and it is, therefore, distinctive too.

The element ‘ENERGY’ of the contested sign is likely to be understood throughout the whole relevant territory as ‘power; strength and vitality’. Bearing in mind that the relevant goods are non-alcoholic beverages covering, inter alia, energy and isotonic drinks, this element is non-distinctive for these goods.

The opponent correctly states that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly because the public reads from left to right and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader. However, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52).

In fact, in the present case, although the word ‘SPEED’ may appear as a preceding element in the contested sign, due to its size and position, it is barely perceptible. It is placed vertically along the first line of the letter ‘M’ and is depicted in almost illegible size. Moreover, bearing in mind the nature of the goods in question (beverages), it is clear that the mark will appear as a beverage label and the remaining elements composing the signs, namely ‘MONKEYS ENERGY’, will be certainly the first elements that will catch consumer’s attention.

The negligible nature of the coinciding element together with the fanciful stylisation used and the figurative aspects of the contested sign (the decorative stains on the element ‘MONKEYS’) camouflage it and make it impossible for consumers to notice it at first sight. Instead, by purchasing the goods on which the mark is featured, the relevant public will immediately perceive the largest and dominating element ‘MONKEYS’ (being fully distinctive in relation to the goods) as a badge of origin. Only after a careful analysis of the elements of the sign will the consumer be able to perceive the conflicting element ‘speed’ and read this term. Indeed, the question in the present assessment is not whether the Office can, in a meticulous side-by-side examination of the signs, decipher the element concerned. The question is rather whether, in the overall impression of the sign, the element is noticeable by the average consumer who normally perceives a sign as a whole and does not proceed to analyse its various details. Having in mind the above considerations, the Opposition Division considers that the element ‘speed’ in the contested sign is likely to be disregarded in the overall perception of the contested sign for all the reasons explained above.

As regards the figurative elements of the earlier sign, some of them may allude to splashing liquids. Bearing in mind that the relevant goods are water and non-alcoholic drinks, this element is considered weak. The rest of the figurative elements, the rectangular background, the circles and various lines, play merely a decorative role and consequently will have reduced impact as well.

The earlier mark has no element that could be considered clearly more dominant than other elements. However, 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 verbal element of the earlier mark has stronger impact than the rest of elements (figurative) accompanying it.

The figurative element replacing the letter ‘O’ in ‘MONKEYS’ of the contested sign will be perceived by the relevant public as a representation of this verbal element. Therefore, and in line with the assertions above, this element is distinctive for the relevant goods.

Visually and aurally, the signs coincide only in the element ‘SPEED’. However, as stated above, this element in the contested sign is negligible.

As the signs only coincide in irrelevant aspects, it is concluded that the signs are not visually and aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are conceptually dissimilar.

As the signs merely coincide in irrelevant aspects, they are dissimilar.

4. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

Manuela RUSEVA

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.