OPPOSITION No B 3 055 361

Macks Ølbryggeri AS, Postboks 1103, 9005 Tromsø, Norway (opponent), represented by Kransell & Wennborg KB, Styrmansgatan 2, SE-114 54 Stockholm, Sweden (professional representative)

a g a i n s t

Arctic Water Supply ApS, Rydholt 2, 2840 Holte, Denmark (applicant).

On 18/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 361 is upheld for all the contested goods, namely:

Class 32: Waters; glacial water; drinking water.

2. European Union trade mark application No 17 872 203 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 872 203, for the figurative mark , namely against all the goods in Class 32. The opposition is based on European Union trade mark registration No 894 931, ‘ARCTIC WATER’. 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: Aerated and non-aerated mineral water.

The contested goods are the following:

Class 32: Waters; glacial water; drinking water.

The contested goods are identical to the opponent’s aerated and non-aerated mineral water, because the opponent’s goods include, are included in, or overlap with, the contested goods.

For the sake of completeness, it has to be mentioned that Class 39 is not subject to the proceedings, contrary to the applicant’s claims.

b) Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large. The degree of attention may vary from average to low, depending on the frequency of purchase and their price.

c) The signs

ARCTIC WATER
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 likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The element ‘Supply’, of the contested sign, is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public as it is the best-case scenario for a likelihood of confusion to arise. This is because, for this part of the public, ‘Supply’ has a connection with the relevant goods as it refers to ‘a stock or amount of something available for use’ (information extracted from Oxford Dictionaries online on 12/06/2019 at https://www.lexico.com/en/definition/supply) and consequently, it is of a limited distinctive character for the goods, as it simply refers to a characteristic of the product and its availability.

The common elements ‘Arctic Water’ will be understood by the relevant public as water originating from a polar region located in the northern part of the Earth. Therefore, both signs will be associated with a similar meaning. This expression, as a whole, may be allusive to various characteristics of the goods, for instance it evokes freshness, coldness and purity, and to that extent, it might be of a slightly reduced distinctiveness in relation to the goods in Class 32.

As regards the contested sign, it is also composed of a less distinctive figurative element of a purely decorative nature, a blue circle in which the word ‘water’ is depicted. Therefore, ‘Arctic Water’ is considered the most distinctive element of the contested sign (although, it has a slightly reduced degree of distinctiveness). Furthermore, 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 because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the minor stylisation of the contested sign’s letters and the blue circle will have less impact on consumers, contrary to the applicant’s opinion. In addition, neither of the elements of the contested sign can be considered clearly more dominant due to their proportional sizes and positions.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Thus, the fact that the beginning of the contested sign fully reproduces the earlier mark is important in the comparison of the signs.

The signs are visually, aurally and conceptually similar to an average degree, as the earlier mark ‘ARCTIC WATER’ is completely included in the contested sign, moreover at the beginning. This expression constitutes the more distinctive element of the contested sign and plays an independent role in it. The signs differ in the letters, sounds and concept of the word ‘Supply’, which is an element that has an even lower distinctive character in comparison with the rest of the verbal elements, as it directly transmits the idea of availability of the products. Furthermore, the different typography and the figurative elements of the contested sign have a lower impact on consumers, as mentioned above.

As the signs have been found similar to an average degree, in the three aspects 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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods.

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 and are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). The goods target the public at large, whose degree of attention will vary between low and average.

As established above, the inherent distinctiveness of the earlier trade mark must be seen as lower than average. A coincidence in an element with a reduced distinctiveness will not normally, on its own, lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a low (or equally reduced) degree of distinctiveness, or are of insignificant visual impact and the overall impression of the marks is similar, as in the present case.

In the present case, the signs are visually, aurally and conceptually similar to an average degree, for the reasons explained above. They only differ in secondary elements or elements with an equally reduced degree of distinctiveness that cannot prevent the relevant public from associating the signs in question, due to their common components ‘Arctic Water’.

Consequently, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them, especially considering that the goods covered by the trade marks in conflict are identical, ordinary consumer products. In fact, the relevant public, when encountering the signs in relation to identical goods, is likely to believe that they come from the same undertaking or economically linked undertakings. Even if consumers are able to pay an average degree of attention, the signs in question may lead to confusion due to the above listed similarities.

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 894 931. It follows that the contested sign 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 (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

Manuela RUSEVA

María Clara IBÁÑEZ FIORILLO

Sylvie ALBRECHT

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.