OPPOSITION No B 3 055 339

Gerolsteiner Brunnen GmbH & Co. KG, Vulkanring, 54568 Gerolstein, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern Mbb, Kranhaus 1, Im Zollhafen 18, 50678, Köln, Germany (professional representative)

a g a i n s t

Conserve Italia Soc. Coop. Agricola, Via Paolo Poggi n. 11, 40068 San Lazzaro di Savena (Bologna), Italy (applicant), represented by Bugnion S.p.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).

On XX/XX/XXXX, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 339 is upheld for all the contested goods.

2. European Union trade mark application No 17 875 319 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 17 875 319 for the 3D shape mark . The opposition is based on German trade mark registration No 30 423 502 for the word mark ‘Moment’. 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

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

Class 32: Mineral and aerated waters, flavoured mineral waters, mineral waters with additives; non-alcoholic drinks; fruit drinks and fruit juices.

The contested trade mark contained some classification deficiencies in the list of its goods. Therefore, the Office had suspended the procedure until the classification of the goods was corrected. After the necessary amendments, for which the parties have been informed, the list of goods is as follows.

Class 32: Spring water; mineral and aerated waters and other non-alcoholic beverages; non-alcoholic aperitifs; fruit-based or vegetable-based beverages with added mineral salts and/or vitamins and/or fibre; squashes; fruit-vegetable beverages; fruit juice beverages; fruit drinks; non-alcoholic beverages containing fruit juices; multivitamin, non-alcoholic energy drinks; non-alcoholic fruit-based beverages; non-alcoholic beverages based on fruit and vegetable juice and pulp; fruit beverages, energy, isotonic and stimulant beverages, beverages based on vegetable extracts; all of the aforesaid goods not for medical use; non-alcoholic beverages; non-alcoholic beverages, in particular beverages based on fruit and vegetable juices; sports drinks; soft drink beverages; beer, ale and porter; beers and malt extracts for making beers; fruit and vegetable smoothies; concentrated fruits; fruit and vegetable extracts (non-alcoholic); smoothies; vegetable smoothies; fizzy drinks; fruit nectars, non-alcoholic; fruit syrups for making beverages; syrups for making beverages and other non-alcoholic beverages, including fruit juices and non-alcoholic beverages based on fruit juices; syrups and other preparations for making beverages, including those based on fruit or vegetables; syrups for making non-alcoholic beverages; syrups, non-alcoholic beverages based on fruit and vegetable juice and pulp; syrups, extracts and essences of plants for making non-alcoholic beverages; syrups, extracts, other preparations and essences of plants for making non-alcoholic beverages; concentrated juices (non-alcoholic); aloe vera juices; fruit juices and fruit juice products; vegetable juices [beverages]; drinkable fruit and vegetable juice and pulp (nectars), concentrate and non-concentrate; natural fruit and vegetable juices; natural and concentrated juices (non-alcoholic beverages); vegetable juices (non-alcoholic beverages); all the aforesaid goods being processed using preserving agents for distillation; beverages containing vitamins and/or fibre, not for medical purposes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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.

To avoid repetitions, the limitations all of the aforesaid goods not for medical use and all the aforesaid goods being processed using preserving agents for distillation in the list of the contested goods are not expressly mentioned below. However, they are considered included in the specification of the compared goods for reference.

The contested malt extracts for making beers; other preparations for making beverages, including those based on fruit or vegetables and extracts, other preparations and essences of plants for making non-alcoholic beverages are products for the preparation of beverages. They target both professionals and members of the general public who may wish to prepare beer and other drinks at home. They are considered at least similar to a low degree to the opponent’s non-alcoholic drinks because they can have the same producers, relevant public and distribution channels.

The contested beer, ale and porter; beers are highly similar to the contested non-alcoholic drinks. Both are used to quench one’s thirst, to refresh, to accompany a meal or for relaxation/sociable ends. Therefore, they have the same purpose. They have the same nature (liquids) and the same method of use (drinking). Moreover, they are in competition. They can substitute for each other because consumers who like drinking beer may consume a non-alcoholic drink instead, for instance, in a situation where they want to avoid the consumption of alcohol. Their end users are the same (the adult population who can drink both alcoholic and non-alcoholic drinks). Moreover, the conflicting goods are distributed through the same channels or at places, such as restaurants and bars, and could come, in particular in the bottling and marketing stages, from the same undertakings. Furthermore, the conflicting goods can share their basic ingredients since it is not unusual to find, for instance, beers containing all kinds of additives or flavourings, such as mixtures with soft drinks, juices or syrups (28/08/2012, R 1691/2011‑2, Sola (FIG. MARK) / SOLO, § 21;; 15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 40, 41; 13/05/2015, R 2343/2014‑4, TIEGERBRÄU (FIG. MARK), § 39, 40; 25/11/2014, R 427/2014‑5, VITAWATER / VITA ZITRONE, § 18-20).

All the remaining contested goods are different types of non-alcoholic beverages and drinks, such as waters, aperitifs, syrups, juices, squashes and nectars, containing different ingredients and/or prepared in different ways. Therefore, these contested goods are identical to the opponent’s mineral and aerated waters, flavoured mineral waters, mineral waters with additives; non-alcoholic drinks; fruit drinks and fruit juices, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

Moment
Earlier trade mark	Contested sign

The relevant territory is Germany.

As the contested sign is a shape mark with five different perspectives, the standard size of trade marks images’ depiction does not allow the verbal elements to be seen in their normal size. Therefore, in order to allow the verbal elements to be perceived, the Opposition Division will only present the last two perspectives of the contested sign in almost the same size as in the original application for the mark.

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).

In the case of word marks, as the earlier one, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are written in upper- or lower-case typeface, or in a combination thereof. For the same reasons, word marks have no elements that could be considered clearly more eye-catching than other elements.

The element ‘Moment’, constituting the entire earlier mark, has the same meaning in German as in English, ‘a very short space of time’ (information extracted from Cambridge Dictionary on 30/08/2019 at https://dictionary.cambridge.org/dictionary/german-english/moment?q=Moment) and has no meaning in relation to the goods in question. Therefore, it is distinctive. As the opponent did not claim enhanced distinctiveness due to intensive use or reputation, the distinctiveness of the earlier mark is average.

The contested sign consists of the shape of a bottle and two groups of verbal elements and, depending on their size, position and distinctiveness, these elements play a different role in the overall impression.

The public in the relevant territory will recognise that the expression ‘Un momento’, depicted on the first perspective, the front side, of the contested shape mark as a foreign expression, for example Italian. The public will understand the word ‘momento’, since it is very close to the equivalent word ‘Moment’ in German. Moreover, at least a significant part, if not all, of that public will understand the meaning of the expression ‘un momento’ as ‘one moment’ (‘ein Moment’ in German). This is because of the similarity between the equivalent words, the simplicity of the expression, the similarity of the verbal constructions and the popularity of the Italian language and culture in Europe, in particular in Germany.

The words are placed diagonally on the lower part of the bottle, in a slightly bold cursive typeface. The depiction of the expression ‘Un momento’ is rather usual and basic. The stylisation does not have any remarkable elements and will be seen as having a purely decorative function. However, due to its position, distinctiveness and size, the expression ‘Un momento’ is the most distinctive element of the contested sign.

The remaining elements of the contested sign include a standard transparent bottle shape and the words ‘SAN LAZZARO DI SAVENA (BO)’. The consumers will primarily ascribe a mere packaging function of the bottle, taking into account the goods for which the trade mark is applied. Moreover, the form does not possess any specific characteristics. Therefore, the shape of the contested sign is merely of a functional character and will not be perceived as a commercial indication of origin. Therefore, it is non-distinctive.

The words ‘SAN LAZZARO DI SAVENA (BO)’ are depicted on one of the sides of the bottle, different to that on which the expression ‘Un momento’ is placed and in a significantly smaller and ordinary typeface. The opponent states that these words will be related to the geographical place in Italy that they indicate. It is not excluded that because of its structure and character, it definitely looks like the name of a place. Part of the public may see it as the name of a geographical location, but without relating it to any specific place. For another part of the public, the words ‘SAN LAZZARO DI SAVENA (BO)’ will be meaningless and of distinctive character.

However, although the contested sign is a shape mark, the conclusion of the Court about complex figurative marks can be applied in this case by analogy.

In assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of the other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark.

(28/03/2019, T‑276/18, K9 Unit (fig.) / unit (fig.) et al., EU:T:2019:200, § 39).

Therefore, considering its placement (not on the front of the bottle), its size (almost negligible and significantly smaller than the expression ‘Un momento’) and the stylisation, the relevant consumers will perceive the words ‘SAN LAZZARO DI SAVENA (BO)’ as a visually secondary element in the overall impression of the contested sign.

Consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Therefore, the relevant public would generally be likely to pronounce the expression ‘Un momento’ and to see it as an indication of the commercial origin when referring to the contested sign.

Considering all the above, if not considered descriptive, the words ‘SAN LAZZARO DI SAVENA (BO)’ are of very low importance in the overall impression of the contested sign.

For the sake of completeness, the expression ‘Un momento’ and the words ‘SAN LAZZARO DI SAVENA (BO)’ will not be connected to each other, as they are placed on different sides of the bottle, at different heights, depicted in different typefaces and sizes and, consequently, do not form one single expression.

Visually and aurally, the signs coincide in the sequence of letters ‘Moment*’. They differ in the additional article ‘Un’ and the last letter ‘O’ in the expression ‘Un momento’ of the contested sign. Given the previous assertions concerning the importance of the words ‘SAN LAZZARO DI SAVENA (BO)’, it is very unlikely to be used as a reference to the goods by the relevant public and is of secondary importance in the overall impression of the sign. The contested sign demonstrates further visual differences to the earlier mark, which are the three dimensional form, the graphical stylisation and position of the expression ‘Un momento’. However, the importance of these differences were, referred to above as, merely functional and/or limited to the packaging of the goods or of purely decorative character.

Therefore the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by the only word of the earlier mark ‘Moment’ and the expression ‘Un momento’ of the contested sign and given the very low importance of the remaining elements in the contested sign as discussed above, the signs are conceptually similar 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.

4. Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the public might make between the two marks and on the degree of similarity between the signs and the goods. Furthermore, the average consumer normally perceives a mark as a whole and does not proceed to analyse its details.

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 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 partly identical and partly similar to varying degrees. The distinctiveness of the earlier mark is normal and the relevant public has an average degree of attention.

The signs are visually and aurally similar to an average degree and conceptually similar to at least an average degree. The expression ‘Un momento’ is the most distinctive element of the contested sign and it constitutes the entire earlier mark, ‘Moment’, which has a normal degree of distinctiveness.

The public will focus on the expression ‘Un momento’. In general, the words ‘SAN LAZARRO DI SAVENA (BO)’ are of secondary importance in the overall impression of the contested sign and even non-distinctive for part of the public. The shape of the bottle is also element of non-distinctive character and of a secondary role.

Considering all the above, the expression ‘Un momento’ is the element that will serve consumers as a reference to the commercial origin of the goods. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Consequently, the differences between the signs, arising from non-distinctive or elements of secondary importance of the contested sign, cannot outweigh the strong overall similarity resulting from the distinctive element ‘Moment’ of the earlier mark, which is fully incorporated in the expression ‘Un momento’ in the contested sign. The public may be led to believe that the goods share the same commercial origin.

Moreover, it should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). For example, consumers relying on only the phonetic reference to the marks, will not be capable of visualising and comparing the additional figurative or verbal elements that the signs feature, which however are of secondary importance. Moreover, the expression ‘Un momento’ will be the only element used to identify the contested sign.

Furthermore, 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. Given that the element ‘Moment’ and the expression ‘Un momento’ are almost conceptually identical at least for a significant part of the relevant public, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of beverages that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). For example, they are of Italian origin or produced from Italian recipes.

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 well founded on the basis of the opponent’s German trade mark registration.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

Due to the similarities found between the signs, the opposition is also successful insofar as the goods that are similar to a low degree are concerned.

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

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

Andrea VALISA

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.