OPPOSITION No B 3 054 622

R. Seelig & Hille oHG, Kevelaerer Str. 21-23, 40549 Düsseldorf, Germany (opponent),

a g a i n s t

TEAYO s.r.o., Bucharova 2657/12, 15800 Prague, Czech Republic (applicant), represented by Jiří Macek, Sázavská 16, 120 00 Praha 2-Vinohrady, Czech Republic.

On 16/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 622 is upheld for all the contested goods and services, namely

Class 30: Tea.

Class 32: Soft drinks.

Class 43: Tea rooms; teahouse services.

2. European Union trade mark application No 17 900 513 is rejected for all the contested goods and services. It may proceed for the remaining (non-contested) services, namely all the services in Class 40.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 900 513 for the figurative mark , namely against all the goods and services in Classes 30, 32 and 43. The opposition is based on European Union trade mark registration No 17 611 898 for the word mark ‘TEYO’. 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 and services

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

Class 30: Tea and tea-like preparations (herbal teas, fruit teas, infusions) and substitutes therefor, including with further ingredients; iced tea; tea extracts; preparations and ready-made beverages, included in class 30, based on tea, tea-like preparations or extracts thereof or substitutes therefor, including with further ingredients; flavourings, other than essential oils, for beverages; cocoa; coffee; drinking chocolate; chocolate goods; bonbons made of sugar.

Class 32: Non-alcoholic beverages; tea-flavoured, non-alcoholic beverages, non-alcoholic beverages having tea flavours, fruit-based, tea-flavoured, non-alcoholic beverages, tea-flavoured, non-alcoholic soda beverages; syrups and other preparations for making beverages

The contested goods and services are the following:

Class 30: Tea.

Class 32: Soft drinks.

Class 43: Tea rooms; teahouse services.

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.

Contested goods in Class 30

Tea is identically contained in both lists of goods in Class 30.

Contested goods in Class 32

The contested soft drinks are included in the opponent’s broad category of non-alcoholic beverages in Class 32. Therefore, these goods are considered identical.

Contested goods in Class 43

The contested tea rooms; teahouse services are similar to a low degree to the opponent’s tea in Class 30, because, despite being different in nature, these goods and services are complementary. They also may coincide in distribution channels and in provider.

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 a low degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

TEYO
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 verbal components of the signs are meaningful for the Spanish-speaking part of the public in the relevant territory. To take into account the semantic content of these elements in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on this part of the public.

The earlier mark is a word mark, consisting of the string of letters ‘TEYO’. While it is acknowledged that it is composed of one sole verbal component, it must be noted that consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The contested sign is a figurative mark consisting of the verbal elements ‘TE’ and ‘YO!’ (separated by a triangle, that could also be read – or misread – as the letter ‘A’), in black and yellow standard typeface, underneath of which is depicted, in a very small (black and standard) typeface, ‘FRESH TEA BAR’. Above the elements ‘TEɅYO!’ is depicted a figurative device (in black and yellow) that could be seen as an abstract depiction of a cup (e.g. of tea or another hot beverage) with facial features (namely eyes and a nose).

The coinciding verbal element ‘YO’ will be understood by the relevant public as the first person singular pronoun ‘I’. It is fanciful and normally distinctive.

The coinciding verbal element of the signs under comparison, ‘TE’, will be understood by the relevant public as the second person singular pronoun ‘YOU’ or also as ‘té’ which is the Spanish word for ‘tea’. In relation to the goods and services at issue (tea, soft drinks and tearooms), in the first scenario it is arbitrary and thus normally distinctive, while in the second scenario, it will be directly descriptive of (a characteristic of, e.g. an ingredient) the goods and services at issue.

In any event, the contested sign’s verbal component, whether perceived as ‘TE-YO’ or ‘TEA-YO’, is normally distinctive as a whole.

The English expression ‘FRESH TEA BAR’ in the contested sign would be understood by the relevant public taken under analysis, on account of the highly similar (‘fresco’, ‘té’) and identical (‘bar’) equivalent terms in Spanish; it is thus descriptive of the goods and services at issue. Hence it lacks distinctiveness. In addition, as the expression is depicted in a significantly smaller size, it is also - at the least - less visually eye-catching than the other elements (if not negligible, as it may also easily go unnoticed, on account of its position and size) .

The figurative device in the contested sign, albeit certainly not devoid of distinctiveness, is either of weaker distinctiveness (when directly perceived as a cup of tea or of a hot beverage) or, in any event, will have less impact than the verbal component and in particular the – as a whole – normally distinctive element ‘TE(Ʌ)YO’. This is because 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. Indeed, 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). In the present case, in the contested sign, it is undoubtedly the normally distinctive verbal component (‘TE(Ʌ)YO’) that will clearly be the part that will have more impact on consumers.

The stylisation (the different colour use) of the letters in the contested sign is minimal and will be perceived as being of a decorative nature; hence it lacks distinctiveness.

Visually, the signs coincide in the string of letters ‘TE(-)YO’, identically present in both signs, which forms the entire earlier mark and the normally distinctive element with the most impact on consumers in the contested sign. The signs merely differ in the figurative aspects of the contested sign which, however, as seen above, will have in any event less impact than the verbal component (in addition to be of weaker distinctiveness for the part of the public that perceives it a cup of a hot beverage).

Therefore, the signs are visually similar to a degree that is higher than average.

Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‘TE(-)YO’.

Consequently, depending on whether the triangle would or would not be read as the letter ‘A’, the signs are either aurally similar to an (at least) average degree or aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same concepts related to – at least – the first person singular pronoun (of normal distinctiveness) as well as to either the second person singular pronoun (likewise of normal distinctiveness) or to the Spanish term ‘té’ (i.e. ’tea’, and thus non-distinctive, as seen above), they are held similar to at least an average degree. Account must be taken of the fact that the contested sign’s expression ‘FRESH TEA BAR’ is non-distinctive (if not, and in addition, negligible) so that it cannot indicate a commercial origin or establish a conceptual distance between the signs.

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 possible presence of a non‑distinctive element in the mark (i.e. for part of the relevant public, that perceives the first two-letter string as the Spanish term - ‘té’ - for ‘tea’, as stated above in section c) of this decision).

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 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 and services are identical or similar to a low degree. The signs are visually similar to a degree that is higher than average; aurally they are identical for part of the public (while similar to an average degree for the remaining) and conceptually they are similar to at least an average degree.

It is therefore conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a mere figurative variation of the earlier mark, configured in a different way according to the type of goods or services (identical or similar to a low degree) that it designates.

Account must also be 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).

Therefore, taking into account the principle of interdependence, despite certain differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded, even for the services that are only held lowly similar.

Considering all the above, there is a likelihood of confusion on the part of at least the Spanish-speaking public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration compared above. 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, and there is no need to analyse the remaining part of the public.

It follows that the contested sign must be rejected for all the contested goods and 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.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Francesca CANGERI

Edith Elisabeth VAN DEN EEDE

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.