OPPOSITION No B 3 087 208

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

a g a i n s t

Alfredo Koechlin Lizárraga, Av. Benavides 155 Int. 701, Miraflores, 15074, Lima, Peru (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014, Madrid, Spain (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 208 is upheld for all the contested goods, namely

Class 30: Coffee-based, cocoa-based, chocolate-based and tea-based beverages, and preparations for making the aforementioned beverages.

2. European Union trade mark application No 18 029 107 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 029 107 ‘HERBAZEST’, namely against all the goods in Class 30. The opposition is based on German trade mark registration No 39 410 132 ‘HERBA’. 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 mark on which the opposition is based.

The date of filing of the contested application is 28/02/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 28/02/2014 to 27/02/2019 inclusive.

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

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

Class 30: Tea; tea-like products (herbal and fruit teas).

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 17/02/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 22/04/2020 to submit evidence of use of the earlier trade mark. On 06/03/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Invoices: twenty-seven invoices addressed to retailers in Germany, dated between 28/02/2014 and 27/02/2019, with several invoices in each of the relevant years. The invoices were issued by the opponent’s distributor to various buyers in Germany, and show consistent sales of ‘Herba’ teas to resellers, with sales volumes ranging from a few hundred units to several thousands units per invoice.

 Affidavit dated 05/03/2020 and made by the marketing director of the opponent’s distributor in Germany. The affidavit contains information of sales volumes concerning herbal and fruit teas in Germany in the relevant territory. The data show consistently high sales volumes in the range of ten million units sold annually, amounting to a total turnover of over twenty million euros in the relevant period.

The Affidavit also contains photos of the products sold as follows:

Translation of the above product indications were provided as follows: „Englische Schwarztee-Mischung“ (= black tea), „Fenchel“ (fennel), „Kamille“ (camomile), „K äuter-Mischung“ (herbal mix), „Pfefferminze (peppermint), „Malve“ (mallow) (= herbal teas), „Früchte-Mischung“ (fruit mix), „Hagebutte mit Hibiskus“ rose hip with hibiscus), „Beeren Cocktail“ blackberry flavor), „Tropic Zauber“ (fruit mix flavor), „Rote Grütze“ (redfruits) (= fruit teas).

 Google search results, concerning German websites and for the time period 28/02/2014 to 27/02/2019. These show that on 05/08/2015 the website www.bueromarkt.-ag.de offered ‘Herba’ herbal tea and on 13/02/2017 the website www.mvnetfair.com offered “Herba” fruit tea.

Assessment of the evidence

All the documents filed show that the place of use is Gemany. This can be inferred from the language of the documents (‘German’), the currency mentioned (‘EUR’) and addresses in Germany. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely the invoices, in combination with the information in the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

It is to be noted that while the evidence filed is in German, the invoices are mostly self-explanatory and the opponent also provided translation of the relevant information, namely the specification of the products sold under the trade mark ‘HERBA’. Furthermore, based on the dates and the numbering of the invoices, it can be presumed that these are only samples of invoices, therefore, the actual sales volumes and sales figures can be higher than those presented.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

The evidence shows that the mark has been used either as ‘HERBA’ (in the invoices) or as a figurative mark in the product photos. In this regard, the Opposition Division finds that the use of the above figurative mark still constitutes use of the present trade mark since the differing elements, namely the use of colours and the word ‘HERBA’ represented in different typeface essentially serve decorative purposes and are elements that are not capable of altering the distinctive character of the trade mark. Pursuant to Article 18 EUTMR, proprietors are allowed to make variations in the sign that, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

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 invoked.

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 are the following:

Class 30: Tea; tea-like products (herbal and fruit teas).

The contested goods are the following:

Class 30: Coffee-based, cocoa-based, chocolate-based and tea-based beverages, and preparations for making the aforementioned beverages.

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 tea-based beverages overlap with the opponent’s tea, therefore, these goods are identical.

The contested coffee-based, cocoa-based, chocolate-based beverages coincide with the opponent’s tea in terms of their method of use, distribution channels and consumers, furthermore, they are in competition. Therefore, these goods are similar.

The contested preparations for making the aforementioned coffee-based, cocoa-based, chocolate-based and tea-based beverages are similar to a low degree to the opponent’s tea since these goods usually target the same relevant consumers, are sold via the same distribution channels have the same method of use.

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 identical or similar to various degrees are essentially directed at the public at large.

The degree of attention is considered to be average.

c) The signs

HERBA	HERBAZEST
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 consists of the verbal element ‘HERBA’. This element as such does not exist in German therefore at least a significant portion of the public will perceive it as a meaningless and, thus, distinctive, element. Indeed, this stance regarding the same earlier mark has been taken in a number of earlier decisions, in particular, the Board of Appeal also reached this conclusion in its decision of 01/12/2016, R 371/2016-2, herbea (fig.) / Herba, § 35 and 38.

The contested sign consists of the verbal element ‘HERBAZEST’. Even though the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). It cannot be excluded that the element ‘ZEST’ will be recognized by part of the public as highly similar to the existing German word ‘ZESTE’ meaning ‘sehr feiner Streifen der Schale einer Zitrusfrucht - very fine strip of the peel of a citrus fruit’ (https://www.duden.de/rechtschreibung/Zeste; information extracted on 17/03/2021; translation by the Office). This means that ‘ZESTE’ may be allusive to teas and tea-based beverages and related preparations since citrus fruits are possible ingredients for such products, which makes this word distinctive to a below average degree for these products and to an average degree for the remaining goods at issue. As for ‘HERBA’, it is meaningless and distinctive for a sizable part of the public, as explained above.

Based on all the foregoing, and for procedural economy, the Opposition Division will focus on the substantial part of the relevant public for which the element ‘HERBA’ is not understood and, consequently, has average distinctiveness.

Account must also be taken of the fact that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the distinctive verbal element ‘HERBA’ and differ in the additional element ‘ZEST’ in the contested sign. This means that the signs coincide in their first five letters, and the whole of the earlier mark is identically reproduced at the beginning of the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the preceding paragraphs in terms of the possible semantic content of the signs. Accordingly, for part of the public, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For another part, namely those recognizing ‘ZEST’ for the German word ‘ZESTE’ in the contested sign, the signs are 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.

e) Global assessment, other arguments and conclusion

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.

Account is taken of the fact that 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).

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).

The goods in conflict are partly identical and partly similar to various degrees. The signs present an average degree of visual and aural similarities and conceptually neutral or not similar. Irrespective of whether or not the contested sign’s second element is understood, the fact remains that the contested sign identically reproduces the only element of the earlier mark, and this coinciding, distinctive element is placed at the beginning of the contested sign. The Opposition Division is of the opinion that this coincidence is capable of counteracting the differences between the signs, and consumers are likely to presume that the identical or similar goods originate from the same or linked undertakings.

In its observations, the applicant argued that that the coinciding element of the signs ‘is devoid of importance […..]also due to the distinctive weakness of HERBA, as shown with the coexistence in German territory of trade marks that commence with HERBA in class 30’. As for the distinctiveness of the said element, reference is made to the above findings. With regard to registered signs containing the same element, it is to be noted 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.

In addition, the opponent cited a number of earlier decisions to support its claim of lack of likelihood of confusion. In particular, the applicant referred to several Board of Appeal decisions such as that of 11/03/2004, R 391/2003-2 ( v MENTIS), of 6/11/2009, 1306/2008-2 ( v ARTESIA).

In this regard, the Opposition Division finds that in the above cases, the contested signs contained important figurative and/colour elements. It is also recalled that in the present case the coinciding element is distinctive, which does not apply to a vast majority of the cases cited. Furthermore, it is noted, as correctly asserted by the applicant itself, that while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

Consequently, the applicant’s arguments must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration invoked. It follows that the contested trade mark must be rejected for all the contested goods, even for those only similar to a low degree, in line with the interdependence principle explained above.

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. 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

Liliya YORDANOVA

Ferenc GAZDA

Octavio MONGE GONZALVO

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.