OPPOSITION Nо B 3 075 000

 

Quargentan S.P.A., Via Valle, 1, 37030 Roncà, Fraz. Terrossa (VR), Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative) 

 

a g a i n s t

 

Mercadona, S.A., C/ Valencia, 5, 46016 Tavernes Blanques (Valencia), Spain (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 22/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 075 000 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 970 615 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 17 970 615 (figurative mark). The opposition is based on European Union trade mark registration No 10 199 933 ‘HAWAIKI’ (word mark), European Union trade mark registration No 313 825 (figurative mark) and Italian trade mark registration No 840 162 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

  

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

  

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 10 199 933 ‘HAWAIKI’ (word mark), European Union trade mark registration No 313 825 (figurative mark) and Italian trade mark registration No 840 162 (figurative mark).

  

The date of filing of the contested application is 19/10/2018. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in Italy from 19/10/2013 to 18/10/2018 inclusive.

 

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

 

European Union trade mark registration No 10 199 933

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices.

 

European Union trade mark registration No 313 825

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

Italian trade mark registration No 840 162

Class 32: Fruit juices.

 

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

 

On 27/02/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 03/05/2020 to submit evidence of use of the earlier trade marks. Following a request by the opponent, the time limit was extended to 03/07/2020. On 22/06/2020, within the extended time limit, the opponent submitted evidence of use.

  

The evidence to be taken into account is the following:

 Items 1-1 bis: numerous invoices, in Italian, issued between 2013 and 2018, to, mostly, clients in Italy. They refer to, in particular, nectars and fruit beverages. The goods are described in the invoices as for example, HAWAIKI S.Ananas 100%, HAWAIKI Trop.Multivit., HAWAIKI Pera. The invoices range from more than EUR 500 to 22 000.

 Item 2: an undated brochure referring to the opponent’s products, such as nectars, fruit juices, almond and oat drinks. The figurative sign is displayed on the products, as .

 Item 3: a printout of the opponent’s website www.quargentan.com (print date: 08/06/2020), referring to, among others, fruit juices, nectars and soft drinks, bearing the figurative sign, for example .

 Item 4: a declaration issued by the opponent, dated 22/06/2020, showing the annual sales figures for 2013-2018 for Italy, relating to non-alcoholic beverages sold under the ‘HAWAIKI’ word and figurative mark, reaching from almost EUR 500.000 to more than EUR 4.000.000.

For reasons of procedural economy, the Opposition Division will focus the examination of the proof of use in relation to the opponent’s Italian trade mark registration No 840 162 (figurative mark).

The invoices show that the place of use is Italy. This can be inferred from the customers’ addresses in this country. Therefore, the evidence relates to the relevant territory.

Some of the evidence, namely most of the invoices, are dated within the relevant period. Furthermore, the annual sales figures submitted in Item 4 also refer to the relevant period (namely, 19/10/2013 - 18/10/2018 ).

The documents submitted, in particular the invoices, brochure and financial information submitted by the opponent, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. The evidence demonstrates that the opponent’s use of the mark at issue for fruit juices was such as to maintain an outlet for the goods and that the opponent has seriously tried to acquire a commercial position in the relevant market by using its mark within the relevant period. Therefore, the Opposition Division considers that the opponent provided sufficient indications regarding the extent of use of the earlier mark in the relevant territory.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The evidence demonstrates use of the word mark ‘HAWAIKI’ in the invoices and of the figurative mark, as shown above in Items 2-3, on the opponent’s goods. Although the figurative sign is depicted in different colours, these do not alter the distinctive character of the earlier mark as registered , as they fulfil merely decorative function. Therefore, the depiction of the sign at issue in different colours do not call into question the conclusion on use of the earlier figurative mark at issue. Similarly, the use of the mark as a word mark in the invoices constitutes an acceptable form of use of the mark as registered when assessed the evidence in its conjunction.

Furthermore, the evidence submitted shows use for the goods covered by the earlier mark, namely fruit juices.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for the goods at issue.

 

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

 

The goods on which the opposition is based and for which genuine use has been proven are the following:

 

Class 32: Fruit juices.

The contested goods are the following:

 

Class 32: Energy drinks.

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 energy drinks are similar to the opponent’s goods, since they have the same purpose (to quench thirst) and, therefore, can be in competition. Further, they are addressed to the same users, through the same distribution channels, either in stores or in bars or restaurants.

 

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 found to be similar are directed at the public at large.  The degree of attention is average.

 

c) Distinctiveness of the earlier mark and the comparison of signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is Italy.

 

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 element ‘HAWAIKI’ in the earlier mark features the third letter, ‘W’, especially stylised, consisting of the curved extension of the lines of its four arms over the rest of the letters, two to the left and two to the right. In any event, the letter ‘W’ is clearly identifiable as such. The rest of the letters are also slightly stylized. Overall, the refereed figurative components are inherently weak, since they will be perceived by consumers as mere ornamental features in the sign, which are meant to embellish it and to draw the public’s attention to the verbal element composing the sign. It follows that the public will afford more trade mark significance to the verbal element than to the sign’s stylisation.

The element ‘HAWAIKI’ of the earlier mark and ‘HAWAI’ of the contested sign are both likely to be understood as referring to ‘Hawaii’, which is an island or an archipelago in the Pacific Ocean, because of the close Italian word, ‘Hawaii’ (information extracted from Garzanti Linguistica on 17/02/2021 at https://www.garzantilinguistica.it/ricerca/?q=hawaiano). It does not convey any clear information as regards the relevant goods and their essential characteristics, and, therefore, is considered distinctive.

As regards the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the distinctiveness of the earlier mark must be seen as normal.

The verbal element ‘ENERGY’ in the contested sign will be understood by the relevant public as meaning ‘strength of nerves and muscles, physical vigor’, given its close equivalent to the Italian word, ‘energia’ (information extracted from Garzanti Linguistica on 17/02/2021 at https://www.garzantilinguistica.it/ricerca/?q=energia; https://www.collinsdictionary.com/translator). In relation to the goods at issue, namely energy drinks, this element is non-distinctive. The English term ‘COVER’ is meaningless for the relevant public and, therefore, is distinctive.

The figurative element that follows the element ‘ENERGY’ will be seen, in relation to the goods at issue, as an energy symbol, reinforcing the meaning of this verbal element. Therefore, it is also non-distinctive for the goods at issue.

The minimal stylization of the verbal elements of the contested sign and the two corner-like shapes embracing the verbal elements ‘ENERGY’ and ‘COVER’, will be perceived as merely decorative features and, therefore, they have a limited impact in the overall impression of the sign.

When signs consist of both types of component, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Considering the size and position of the elements of the contested sign, the verbal element ‘HAWAI’ is the dominant element as it is the most eye-catching.

Consumers generally tend to focus on the first elements of a sign when they encounter a trade mark. This is justified because the public reads from left to right, and from top to bottom, which makes the part placed at the left of the sign, or at its top (the initial part), the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘HAWAI*’, which form the first and the dominant element of the contested sign and most of the letters of the earlier mark, placed in the same order at the beginning of the sign. The signs differ in the final two letters, ‘*KI’, of the earlier mark and in the secondary verbal elements, ‘ENERGY’ and ‘COVER’, in the contested sign. Further, the signs differ in the stylization of both signs and in the figurative elements of the contested sign, which, contrary to the applicant’s arguments, will have at least a lesser impact on the consumer’s perception of the signs, for the reasons established above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their five letters ‘HAWAI*’. However, the pronunciation differs in the sound of the last two letters ‘*KI’ of the earlier mark and in the secondary elements ‘ENERGY’ and ‘COVER’ in the contested sign. As argued by the applicant, the signs have different lengths. However, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Taking into account the non-distinctive character of the element ‘ENERGY’ and the secondary position of ‘ENERGY’ and ‘COVER’ in the contested sign, it is likely that those two words will not be pronounced by the relevant consumers (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Therefore, the signs are aurally similar to an above average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same notion of ‘Hawaii’,  which is distinctive in relation to the goods at issue, the signs are conceptually similar to at least an average degree to this extent.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  

d) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The goods are similar. They are directed at the public at large, whose degree of attention will be average. The signs are visually similar to an average degree, aurally similar to an above average degree, while conceptually they are similar to at least an average degree. The earlier mark enjoys a normal degree of distinctiveness.

Indeed, the first and the dominant element, ‘HAWAI’ of the contested sign is fully included in the earlier mark, at its beginning, where consumers usually focus more attention. The additional two letters (‘*KI’) placed at the end of the earlier mark cannot be considered a striking one visually and aurally, and they have no impact conceptually.

As explained above in section c) of this decision, the relevant consumers will not pay much attention to the figurative and stylisation features of the signs, because they will most readily refer to the signs by their verbal elements. Also, the difference between the signs deriving from the secondary (and also non-distinctive, as regards the element ‘ENERGY’) verbal elements ‘ENERGY’ and ‘COVER’ of the contested sign, will retain less attention from the relevant consumer. In addition account has to be taken 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, in an overall assessment, it is reasonable to assume that when confronted with the contested sign in relation to goods which are similar, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

In its observations, the applicant argued that there are various European Union trade marks including the element ‘HAWAI’ and claimed that this is an indication that the trade marks can exist side by side without any likelihood of confusion between them.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Further, the applicant did not submit any evidence that would demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘HAWAI’. Under these circumstances, the applicant’s claim must be set aside.

Moreover, according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 840 162. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the above earlier right 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 and the proof of use submitted in relation to these earlier rights (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

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.