OPPOSITION No B 3 060 162

Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734 Nordhausen/Harz, Germany (opponent), represented by Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Kolibri Drinks Limited, 130 Shaftesbury Avenue, 2nd Floor, London W1D 5EU, United Kingdom (applicant), represented by Ipconsult, 21A Commercial Road, Swanage, Dorset BH19 1DF, United Kingdom (professional representative).

On 25/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 162 is partially upheld, namely for the following contested goods and services:

Class 32: Mineral and aerated waters and other non-alcoholic beverages; spring water; water; drinking water; sparkling water; vitamin enriched sparkling water [beverages]; sparkling spring water blended with fruit juices, herbs and spices; mineral water blended with fruit juices, herbs and spices; water blended with fruit juices, herbs and spices; flavoured mineral water; flavoured waters; essences for making flavoured mineral water [not in the nature of essential oils]; cordials; syrups and other preparations for making beverages; syrups for making flavoured mineral waters.

Class 35: Retail services connected with the sale of mineral and aerated waters, water, non-alcoholic beverages, spring water, sparkling water, vitamin enriched sparkling water, sparkling spring water blended with fruit juices and herbs and spices, mineral water blended with fruit juices and herbs and spices, water blended with fruit juices and herbs and spices, flavoured mineral water, flavoured waters, cordials, essences for making flavoured mineral water, syrups and other preparations for making beverages, syrups for making flavoured mineral waters; all the aforesaid additionally provided online from a computer database or by means of web pages on the Internet.

2. European Union trade mark application No 17 874 223 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 874 223 for the word mark ‘KOLIBRI’, namely against all the goods and services in Classes 32 and 35. The opposition is based on German trade mark registration No 302 015 057 140 for the word mark ‘KOLIBRI’. 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.

1. The goods and services

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

Class 32: Beers; mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices; syrups for making beverages; preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 43: Services for providing food and drink; services for temporary accommodation.

The contested goods, following a limitation requested by the applicant on 23/08/2018, are the following:

Class 32: Mineral and aerated waters and other non-alcoholic beverages; spring water; water; drinking water; sparkling water; vitamin enriched sparkling water [beverages]; sparkling spring water blended with fruit juices, herbs and spices; mineral water blended with fruit juices, herbs and spices; water blended with fruit juices, herbs and spices; flavoured mineral water; flavoured waters; essences for making flavoured mineral water [not in the nature of essential oils]; cordials; syrups and other preparations for making beverages; syrups for making flavoured mineral waters.

Class 35: Retail services connected with the sale of mineral and aerated waters, water, non-alcoholic beverages, spring water, sparkling water, vitamin enriched sparkling water, sparkling spring water blended with fruit juices and herbs and spices, mineral water blended with fruit juices and herbs and spices, water blended with fruit juices and herbs and spices, flavoured mineral water, flavoured waters, cordials, essences for making flavoured mineral water, syrups and other preparations for making beverages, syrups for making flavoured mineral waters, Agave syrup, sugar, honey, natural sweetners; all the aforesaid additionally provided online from a computer database or by means of web pages on the Internet.

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.

Contested goods in Class 32

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (mineral and aerated waters and other non-alcoholic beverages; syrups and other preparations for making beverages) or because they are included in the opponent’s mineral and aerated waters; other non-alcoholic beverages; syrups and other preparations for making beverages.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. This applies to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc.

Therefore, the contested services retail services connected with the sale of mineral and aerated waters, water, non-alcoholic beverages, spring water, sparkling water, vitamin enriched sparkling water, sparkling spring water blended with fruit juices and herbs and spices, mineral water blended with fruit juices and herbs and spices, water blended with fruit juices and herbs and spices, flavoured mineral water, flavoured waters, cordials, essences for making flavoured mineral water, syrups and other preparations for making beverages, syrups for making flavoured mineral waters; all the aforesaid additionally provided online from a computer database or by means of web pages on the Internet are similar to a low degree to the opponent's goods in Class 32. The similarity arises from these services are services that consist exclusively of activities revolving around the actual sale of goods.

On the contrary, the rest of the contested services namely retail services connected with the sale of Agave syrup, sugar, honey, natural sweetners; all the aforesaid additionally provided online from a computer database or by means of web pages on the Internet do not relate to goods that are identical to any of the goods that are covered by earlier mark of the opponent, and they are therefore dissimilar. The sale of these goods relate to goods included in Class 30, for example, agave syrup, which is a natural sweetener and it is not identical to syrups for making beverages in Class 32. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

These contested services are even further away from the opponent’s services in Class 43. The conflicting services do not coincide in purpose, target different public over different distribution channels and usually do not have the same commercial origin. They are neither complementary to not in competition with each other. They are dissimilar.

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 and services found to be identical or similar to a low degree are directed at the public at large, whose level of attention is average.

3. The signs

KOLIBRI	KOLIBRI
Earlier trade mark	Contested sign

The earlier German trademark and the contested sign are identical.

4. Conclusion

The signs were found to be identical and some of the contested goods and services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for the goods in Class 32.

Furthermore, some of the contested goods and services, as established above in section a) of this decision, were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

The rest of the contested services are dissimilar. As the 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 services cannot be successful.

It has to be pointed out that 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). Therefore, the identity of the signs clearly offsets the fact that the contested services are similar only to a low degree.

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

Tu Nhi VAN

Gonzalo BILBAO TEJADA

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.