OPPOSITION No B 3 059 862

All Market, Inc., 39 West 14th Street, Suite 404, 10011 New York, United States of America (opponent), represented by Marks & Clerk LLP, 40 Torphichen Street, EH3 8JB Edinburgh, United Kingdom (professional representative)

a g a i n s t

Jose Maria Aycart Valdes, Edif. Parking Escalinata, Avd. Virgen del Carmen s/n, 11201 Algeciras, Spain (applicant), represented by Consiangar, S.L., Calle Albasanz 72-1º 1, 28037 Madrid, Spain (professional representative).

On 21/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 862 is partially upheld, namely for the following contested goods and services:

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Retailing, wholesaling and sale via global computer networks of mineral waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

2. European Union trade mark application No 17 881 116 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 881 116 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 199 423 for the word mark ‘VITA COCO’. 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.

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 European Union trade mark registration No 9 199 423 for the word mark ‘VITA COCO’, since this earlier mark is most similar to the contested sign and, moreover, has a broad scope of protection regarding the goods.

a) The goods and services

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

Class 32: Mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; coconut water, drinks based on coconut water; coconut-based drinks; non-alcoholic fruit extracts; extracts for making beverages; waters (beverages); lemonades; non-alcoholic cocktails; all included non-alcoholic beverages are produced on the basis of non-carbonated coconut water (including fruit juices, and/or combinations of ingredients) and without any carbonation and/or carbonated water; all aforementioned goods without content of malt.

Class 33: Alcoholic beverages (except beers); alcoholic beverages containing fruit, alcoholic beverages containing coconut water; alcoholic beverages containing coconut; alcoholic fruit extracts; alcoholic extracts and decoctions; cocktails included in this class.

The contested goods and services are the following:

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Retailing, wholesaling and sale via global computer networks of beers, mineral waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

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

The term ‘including’, used in the opponent’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).

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 limitation at the end of the specification of the earlier mark’s goods in Class 32 (all included non-alcoholic beverages are produced on the basis of non-carbonated coconut water (including fruit juices, and/or combinations of ingredients) and without any carbonation and/or carbonated water; all aforementioned goods without content of malt) does not affect their degree of at least a certain similarity with the contested goods and/or services. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparison, the aforementioned limitation will be taken into account, but will not be mentioned in the paragraphs that follow.

Contested goods in Class 32

The contested mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested beer is highly similar to the opponent’s non-alcoholic drinks in Class 32. These goods have the same purpose, are in competition, have the same distribution channels, target the same relevant public and are normally produced by the same kind of undertakings.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. 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. Therefore, the contested retailing of mineral waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages are similar to a low degree to the opponent’s mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35. Therefore, the contested wholesaling and sale via global computer networks of mineral waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages are also similar to a low degree to the opponent’s mineral and other non-alcoholic drinks, including energy drinks and sports drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages in Class 32.

However, the contested retailing, wholesaling and sale via global computer networks of beers and the opponent’s goods in Classes 32 and 33 are not similar. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Retail services and the like 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. Similarity between retail services and the like of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the like and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only highly similar.

b) 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 varying degrees) are directed at the public at large, whose level of attention is average.

c) The signs

VITA COCO
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 an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘VITA’ is not meaningful in certain territories, for example in those countries where Polish and Dutch is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and Dutch-speaking part of the public, who are more likely to confuse the marks.

The earlier mark is a word mark consisting of the two words ‘VITA’ and ‘COCO’.

The word ‘VITA’, included in the earlier mark as its first element, will not be associated by Polish and Dutch consumers with any precise meaning and is, therefore, distinctive. The word ‘COCO’ of the earlier mark will most likely be understood by a significant part of the relevant Polish and Dutch consumers as the coconut fruit. Bearing in mind that the relevant goods and services are beverages and retailing these goods, the element ‘COCO’ will be connected with the characteristics of the goods in question, which are beverages based on coconut water or that can have a coconut flavour. Therefore, it is considered to be non-distinctive in relation to some of the goods and services and at least weak in relation to others. It follows that the element ‘VITA’ is the most distinctive element in the earlier mark.

Furthermore, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details… the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him’ (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). For these reasons, the relevant public normally will look for a meaning in marks.

The element ‘VITADRINK’ of the contested sign will be split into ‘VITA-’ and ‘-DRINK’, because the word ‘DRINK’ has a meaning. This will be immediately perceived by the relevant consumers, as either this word belongs to basic English vocabulary or the same word exists in the relevant languages. This element is used in connection with the applicant’s goods to indicate their nature of being drinks, and it is non-distinctive for some of the goods and services and at least weak in relation to others. The same considerations as given above in relation to the word ‘VITA’ apply also to the contested sign.

The figurative element in the contested sign, a red frame, will convey no precise message to the relevant consumers. Since this element is likely to be perceived by consumers essentially as a mere decorative element, and not as an element indicating the commercial origin of the goods/services, its distinctiveness is considered to be limited. It follows that the element ‘VITA’ is the most distinctive element of the contested sign.

Furthermore, the contested sign has no element that can be considered more dominant (eye-catching) than others.

Visually, the signs are similar to the extent that they coincide in the first letters ‘VITA-’, with the only differences the typeface and colour in which these letters are written in the contested sign. However, this typeface is fairly standard and in any case will not divert the consumer’s attention from the element it seems to embellish.

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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the first elements of the signs coincide is relevant. The marks differ in the second word ‘COCO’ of the earlier mark versus the element ‘-DRINK’ of the contested sign, both considered at least weak. The figurative element of the red frame in the contested sign has little impact on the comparison, as explained above.

Therefore, taking into account the aforementioned, and also the distinctiveness issues, the marks 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 their first element /VI-TA/ and differs in the sound of the words /CO-CO/ and /DRINK/ present in the earlier mark and the contested sign respectively.

Therefore, taking into account the aforementioned, and also the distinctiveness issues, the marks are aurally similar to a high 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 different meaning on account of the elements ‘COCO’ and ‘DRINK’, even though these are weak and have a reduced impact, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect 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. 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, despite the presence of a non‑distinctive or at least weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found to be partly identical or similar (to varying degrees) and partly dissimilar and target the public at large, which has an average level of attention. The marks are visually similar to an average degree and aurally similar to a high degree, while they are conceptually not similar. The earlier mark, as a whole, is normally distinctive.

The coincidences between the signs lie in their first element, ‘VITA’, which is the most distinctive element in the signs and the beginning part, on which consumers generally tend to focus more. However, differing concepts in the marks are conveyed by the elements ‘COCO’ and ‘DRINK’, which have been found non-distinctive or weak. This also applies to the figurative element of the frame, whihc has a reduced impact.

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).

Finally, 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).

In the light of all above considerations, it is found that the differences between the signs cannot be deemed sufficient to safely exclude that the relevant general public displaying an average degree of attention, when encountering the signs in question on identical or similar (to varying degrees) goods and services, will be able to distinguish between them. The differences arise from elements that are non-distinctive or at least weak and therefore have a more limited impact than the common distinctive element ‘VITA’.

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). In the present case, the high degree of similarity, in particular from a phonetic point of view, offsets the lower degree of similarity between some of the goods and services.

Considering all the above, there is a likelihood of confusion on the part of the Polish- and Dutch-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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark.

The rest of the contested services are dissimilar. As 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.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 9 199 472 for the figurative mark for goods in Classes 32 and 33.

 European Union trade mark registration No 11 578 051 for the figurative mark for goods in Class 32.

 European Union trade mark registration No 15 865 496 for the figurative mark for goods in Class 32.

These other earlier rights invoked by the opponent are less similar to the contested mark, because they contain further figurative elements or additional words, such as ‘KIDS’ or ‘PROJECT’, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

Saida CRABBE

Chantal VAN RIEL

Klaudia MISZTAL

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.