OPPOSITION Nо B 3 070 925

 

Carlsberg Polska Sp. z o.o., Iłżecka 24, 02-135 Warszawa, Poland (opponent), represented by Kancelaria Patentowa Sw-Patent Wróblewscy S.C., Gdańska 126/A104, 90-520 Łódź, Poland (professional representative) 

 

a g a i n s t

 

Biogroupe, 11 Rue Robert Surcouf, 22430 Erquy, France (applicant), represented by Mélanie Erber, 62 Avenue Marceau, 75008 Paris, France (professional representative).

 

On 31//07/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 070 925 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 914 919 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 17 914 919  (figurative mark), namely against all the goods in Class 32. The opposition is based on the following three earlier rights: (1) EUTM registration No 5 815 361 ‘KARMI’ (word mark), hereinafter ‘Earlier Mark 1’, (2) Polish trade mark registration No R 214 236 ‘Karmi’ (word mark), hereinafter ‘Earlier Mark 2’ and (3) Polish trade mark registration No R 305 461 (figurative mark), hereinafter ‘Earlier Mark 3’. The opponent invoked Article 8(1)(b) EUTMR in relation to Earlier Marks 1, 2 and 3 and Article 8(5) EUTMR in relation to Earlier Marks 1 and 2.

 

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 Earlier Mark 2, as Earlier Mark 1 is currently under cancellation proceedings.

 

a) The goods

 

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

 

Class 32: Beer; beer beverages; non-alcoholic beverages.

The contested goods are the following:

 

Class 32: Fermented non-alcoholic beverages; kvass (non-alcoholic beverages); non-alcoholic fruit juice beverages; juices; fruit nectars, non-alcoholic; smoothies; soft drinks; grain based beverages; beverages based on nuts; non-alcoholic fruit extracts; cocktails, non-alcoholic; syrups for beverages; waters, including mineral waters (beverages); aerated water; flavoured waters; plant based beverages; vegetable juices [beverages]; sherbets [beverages]; lemonades; soda water; non-alcoholic beverages flavoured with tea; beers, including, non-alcoholic beers; all of the aforesaid goods being produced organically or made from ingredients produced organically.

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 contested fermented non-alcoholic beverages; kvass (non-alcoholic beverages); non-alcoholic fruit juice beverages; juices; fruit nectars, non-alcoholic; smoothies; soft drinks; grain based beverages; beverages based on nuts; cocktails, non-alcoholic; waters, including mineral waters (beverages); aerated water; flavoured waters; plant based beverages; vegetable juices [beverages]; sherbets [beverages]; lemonades; soda water; non-alcoholic beverages flavoured with tea; all of the aforesaid goods being produced organically or made from ingredients produced organically are encompassed by the broader category of or overlap with the opponent’s non-alcoholic beverages. The goods are therefore identical.

Beers, including, non-alcoholic beers; all of the aforesaid goods being produced organically or made from ingredients produced organically are included in the broader category of the opponent’s beer. The goods are identical.

The remaining contested non-alcoholic fruit extracts; syrups for beverages; all of the aforesaid goods being produced organically or made from ingredients produced organically are similar to the opponent’s non-alcoholic beverages as they originate from the same manufacturers, can coincide in targeted consumers and distribution channels.

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 relevant goods are directed at the public at large. The degree of attention displayed during the purchase of the goods is considered to be average.

c) The signs

 

Karmi
Earlier trade mark	Contested sign

 

The relevant territory is Poland.

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 earlier mark is a word mark, consisting of the five-letter word ‘Karmi’. As in the case of word marks it is the word as such that is protected and not its written form, the use of title case letters is immaterial. Contrary to the applicant’s opinion, ‘Karmi’ conveys a semantic content for the relevant public. The word is the conjugated form in third person singular of the Polish verb karmić meaning to feed (a baby or an animal). The distinctiveness of ‘Karmi’ in relation to the relevant goods must be deemed as average since this term is not descriptive of or allusive to the characteristics of the goods in a way which may materially affect its ability to act as a badge of origin. For the sake of completeness, it is noted that as the earlier mark is a word mark, it does not have an element that could be considered clearly more dominant than other elements.

The contested sign is a figurative mark in colour. In the central part of the sign there is the word ‘KARMA’, in thick bold and slightly bigger script than the other verbal component, ‘KEFRUIT’, which is placed below it. The contested sign further depicts a figurative element of two stylized eyes, placed on top of the verbal elements. Albeit ‘KARMA’ is placed in a central position and the size and thickness of the script are bigger than those of ‘KEFRUIT’, there are no elements which can be deemed clearly visually more outstanding than others in the overall impression created by the mark, given that both ‘KEFRUIT’ and the figurative element are plainly visible.

The applicant contends that ‘KARMA’ refers to the internationally well-known concept that one’s good or bad luck is a direct result from his actions, a meaning immediately perceived by the public in the European Union and refers to three previous decisions of the Opposition Division. It further shows that the figurative element represents the depiction of the Buddha’s eyes and thus serves to reinforce the reference to the Hindi/Buddhist belief in ‘KARMA’ since the depiction would be ‘in the style of the Hindi/Buddhist imagery’. In support of its claims, the applicant filed in Annex 1 internet printouts showing Buddha’s eyes images and in Annex 2 dictionary definitions for the word ‘karma’ from English and French dictionaries, Wikipedia extract in Polish titled ‘Karma’ and two screenshots from miejski.pl and selfmastery.pl where the concept of ‘Karma’ is being discussed. Contrary to the applicant’s claims, in Polish the word ‘KARMA’ in its first and obvious meaning refers to a feed for animals. Only then someone more familiar with India or Buddhism will see the second meaning of the force produced by a person’s actions in one life that influences what happens to them in future lives. In any case, the ability of this word to function as a badge of origin for the relevant goods is average. No analogies ca be drawn between the previous cases referred to by the applicant and the present proceedings, since in none of them the comparison of the signs has been carried out explicitly from the perspective of the Polish-speaking public.

‘KEFRUIT’ of the contested sign has no immediately perceptible meaning for the relevant public. Therefore, its distinctiveness in relation to the relevant goods is also deemed as average.

Finally, as regards the figurative element, the Opposition Division does not share the applicant’s view that the relevant consumers (not even those that are more familiar with India or Buddhism) will perceive it as the eyes of Buddha. The depictions in Annex 1 are quite further removed from the way the figurative element is portrayed in the contested sign and, in the absence of conclusive supporting evidence to the contrary, there is no reason to assume that the public will perceive it in the artificial way claimed by the opponent. In any case, as this element has no meaning in relation to the relevant goods, its distinctiveness per se is average.

Without prejudice to the foregoing, it is however recalled that, contrary to the applicant’s assertions, 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. This is because 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).

Visually, although it cannot be denied that the general configuration of the signs under comparison is different (one verbal component in the earlier mark and two words and one graphic element in the contested sign), the component that is more likely to first attract the attention of consumers in the contested sign is ‘KARMA’. It is the first verbal element of the contested mark, placed in a central position therein and it is depicted in slightly bigger and thicker script than the differentiating verbal element ‘KEFRUIT’. It reproduces almost the entirety of the earlier mark’s sole component ‘Karmi’, the non-coinciding letters ‘i’ versus ‘A’ appearing in a less conspicuous position and being preceded by four identical letters. The stylisation of the verbal components in the contested sign will be perceived as mere carriers of the respective words and in any case it is not so conspicuous or striking so that it can significantly divert consumers’ attention from the identical letters, which are clearly perceptible. Bearing in mind the foregoing and account taken of the impact of the figurative element, as stated above, it is concluded that the overall degree of visual similarity is below average.

Aurally, the earlier mark will be referred to as ‘Karmi’. As regards the contested sign, common experience shows that when faced with marks that include many sequences of text elements, consumers have a natural tendency to shorten them to the elements they find easy to identify and remember. Bearing this in mind, it cannot be excluded that at least part of the relevant public will identify aurally the contested mark by pronouncing the element ‘KARMA’ (which is an existing word in the relevant language and simple enough to notice and remember). To this extent the pronunciation of the signs coincides in the sound of the letters ‘karm’, present identically in both marks and differs in the sound of their last letters ‘i’ and ‘a’ respectively. Where consumers will further utter the second element the contested sign, ‘KEFRUIT’, the pronunciation of the signs differs in the sounds of these additional letters, which have no counterparts in the earlier mark. Against this background, the overall degree of aural similarity varies from high to below average.

Conceptually, reference is made to the above explanations on consumers’ perceptions of the semantic content conveyed by the signs under comparison. There is a conceptual link between the signs on account of ‘Karmi’ and ‘KARMA’, to the extent where, albeit one refers to animals and humans and the other one to animals only, they both have the same root and are related to feeding. Overall, there is at least a below average degree of conceptual similarity.

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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.

 

e) Global assessment, other arguments and conclusion

 

The contested goods are partly identical and partly similar.

The signs are overall similar on all three levels to varying degrees. As already detailed in section c) above, on account of being the first verbal element of the contested sign and in a central position, the component ‘KARMA’ is immediately and clearly noticeable and, moreover, plays an independent and distinctive role therein.

It should also 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 addition, 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).

Furthermore, 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).

Against this background, it is concluded that the differences resulting from the graphic and additional verbal elements in the contested sign are not capable of offsetting the degree of similarity between the signs resulting from the shared letters/sounds ‘Karm(*)’ and the semantic content conveyed by ‘Karmi’ and ‘KARMA’. As a consequence, when encountering the contested sign, consumers will make an association with the opponent’s earlier mark, which will lead them to believe that the identical or similar goods in Class 32 originate from the opponent or, as the case may be, from an economically-linked undertaking.

Considering all the above, and taking into account the principle of interdependence (quoted above), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is well founded on the basis of the opponent’s Earlier Mark 2. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of Earlier Mark 2, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to  its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As Earlier Mark 2 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

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, 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

 

 

Ioana MOISESCU

Oana-Alina STURZA

Richard BIANCHI

 

 

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.