OPPOSITION Nо B 3 093 453

 

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830 Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

Roman Gischler, Bahnhofstraße 38, 35037 Marburg, Germany (applicant), represented by Patentanwälte Sturm • Weilnau • Franke Partnerschaft Mbb, Unter den Eichen 5, 65195 Wiesbaden, Germany (professional representative).

On 25/05/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 093 453 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 02/09/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 053 017, ‘MissisHippi’ (word mark), namely against all the goods in Classes 29, 30, 32, 33. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 12 566 089 ;

2. European Union trade mark registration No 18 052 481 ;

3. International registration No 1 225 495 designating France;

4. European Union trade mark registration No 11 941 655 ‘YIPPY’;

5. European Union trade mark registration No 12 870 416 ‘YIPPY’;

6. European Union trade mark registration No 18 033 874 ‘YIPPY’;

7. Austrian trade mark registration No 258 429 ‘YIPPY’;

8. Austrian trade mark registration No 258 432 ;

9. Maltese trade mark registration No 36 594 ‘YIPPY’;

10. Hungarian trade mark registration No 176 070 ‘YIPPY’;

11. International registration No 1 068 341 ‘YIPPY’ designating Germany;

12. International registration No 787 506 designating Bulgaria, Benelux, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Lithuania, Spain, Latvia, Poland, Portugal, Slovakia, Slovenia, United Kingdom;

13. International registration No 787 506 designating Rumania;

The opponent invoked Article 8(1)(b) EUTMR for the earlier rights 1- 13 and Article 8(5) EUTMR for the earlier rights 7, 8, 10 and 12 (for Hungary).

OPPOSITION INSOFAR AS BASED ON INTERNATIONAL REGISTRATION No 787 506 DESIGNATING THE UNITED KINGDOM

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows International registration No 787 506 designating the United Kingdom no longer constitutes a valid basis of the opposition.

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 and services on which the opposition is based are the following:

European Union trade mark registration No 12 566 089

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; fruit pulp; fruit puree; fruit concentrates; preserved fruits; fruit preparations; fruit jellies; apple purée; tomato purée; milk and milk products with coffee or a coffee flavour.

Class 30: Coffee, tea, cocoa and artificial coffee; coffee based drinks; drinking chocolate; coffee beverages with milk; coffee-based beverages with milk; cappuccino; macchiato; latte-macchiato; iced coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); fruit sauces; spices; ice; tea drinks; tea-based beverages; tea-based and water-based beverages; tea-based beverages with fruit flavoring; non-alcoholic beverages with tea flavour; coffee-flavoured soft drink; non-alcoholic drinks, containing tea or tea extracts; non-alcoholic drinks, containing coffee or coffee extracts; flavoured water-based and tea-based beverages; flavoured tea-based beverages; tea-based and water-based beverages; non-alcoholic beverages with coffee components or a coffee flavour, non-alcoholic energy drinks with coffee components or a coffee flavour; non-alcoholic beverages with tea flavour; coffee-flavoured soft drink.

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectars; fruit nectar beverages; vegetable drinks and vegetable juices; syrups and other preparations for making beverages; energy drinks; lemonades; non-alcoholic beverages, in particular with fruit flavouring; smoothies; flavoured water-based beverages; water-based beverages; coconut juice; coconut water; tomato juice; non-alcoholic beverages made with fruits; non-alcoholic fruit extracts; fruit juice concentrate; cocktails, non-alcoholic; isotonic drinks; must; non-alcoholic aperitifs; non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; whey beverages; non-alcoholic beverages with fruit flavouring; non-alcoholic beverages containing fruits or fruit extracts.

European Union trade mark registrations No 18 052 481 and No 18 033 874 ‘YIPPY’

Class 30: Coffee, tea, cocoa and artificial coffee; coffee-based beverages; tea drinks; iced tea; green tea; drinking chocolate; cocoa-based beverages; beverages made on the basis of tea, chocolate, cocoa or coffee; rice; tapioca and sago; flour and preparations made from cereals; farinaceous foods; bread, pastry and confectionery; confections; confectionery; pralines and confectionery; chocolate and chocolate products; edible ices; ice cream; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); marinades; fruit sauces; tomato sauces; spices; ice.

Class 32: Beers; shandy; waters; mineral and aerated waters; non-alcoholic beverages; juices; fruit beverages and fruit juices; cider (non-alcoholic); orange juice; nectars; fruit nectars; fruit nectar beverages; vegetable juice, vegetable beverages and vegetable juices [beverages]; vegetable juice beverages; syrups and other preparations for making beverages; energy drinks; energy drinks; lemonades; non-alcoholic beverages; non-alcoholic beverages, in particular fruit-flavoured beverages; smoothies; waters, in particular with fruit flavouring; syrups for beverages; fruit syrups and other non-alcoholic fruit preparations for making non-alcoholic beverages; non-alcoholic sparkling wine.

Class 33: Alcoholic beverages (except beers); fruit (alcoholic beverages containing-).

Class 43: Services for providing food and drink, including catering, and temporary accommodation; catering for the provision of food and beverages; bar services, in particular for drinks bars, juice bars, in particular for fruit juice and smoothie bars, and fruit bars; preparation of beverages and meals; takeaway services; services for providing food and drink by means of beverage dispensers; drink dispensing machines (rental of); providing food and drink in drinks bars, in particular fruit juice bars and smoothie bars, and fruit bars, take-out catering; services for the preparation of food and drink; consultancy and information relating to the preparation of beverages and meals.

International registration No 1 225 495 designating France

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; fruit pulp; fruit puree; fruit concentrates; preserved fruits; prepared fruits; fruit jellies; apple purée; tomato purée; milk and milk products with coffee or a coffee flavour.

Class 30: Coffee, tea, cocoa and artificial coffee; coffee based drinks; drinking chocolate; coffee beverages with milk; coffee-based beverages with milk; cappuccino; macchiato; latte-macchiato; iced coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); fruit sauces; spices; ice; tea-based drinks; tea-based beverages; tea-based beverages; tea-based beverages with fruit flavoring; and tea-based beverages; flavoured tea-based beverages; tea-based beverages.

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectars; fruit nectar beverages; vegetable drinks and vegetable juices; syrups and other preparations for making beverages; energy drinks; lemonades; non-alcoholic beverages, in particular with fruit flavouring; smoothies; flavoured water-based beverages; water-based beverages; coconut juice; coconut water; tomato juice; non-alcoholic beverages made with fruits; non-alcoholic fruit extracts; fruit juice concentrate; cocktails, non-alcoholic; isotonic drinks; must; non-alcoholic aperitifs; non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; whey beverages; non-alcoholic beverages with fruit flavouring; non-alcoholic beverages containing fruits or fruit extracts; flavoured water-based beverages; non-alcoholic beverages flavoured with tea or tea extracts; coffee-flavoured soft drink; non-alcoholic drinks flavoured with coffee or coffee extracts; non-alcoholic energy drinks flavoured with coffee.

European Union trade mark registration No 11 941 655 ‘YIPPY’

Class 32: Beers; mineral water and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; fruit cordials; fruit nectars; vegetable drinks and vegetable juices; syrups and other preparations for making beverages; fruit syrups for making beverages; energy drinks; lemonades.

European Union trade mark registration No 12 870 416 ‘YIPPY’

Class 29: Meat, fish, poultry and game; meat extracts; meats; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; butter, yoghurt, cheese and cheese products; edible oils and fats; fruit pulp; fruit puree; fruit concentrates; preserved fruits; fruit preparations; fruit jellies; fruit salads; apple purée; tomato purée; milk and milk products with coffee or a coffee flavour.

Class 30: Coffee, tea, cocoa and artificial coffee; coffee based drinks; drinking chocolate; cocoa-based beverages; coffee beverages with milk; coffee-based beverages with milk; cappuccino; macchiato; latte-macchiato; iced coffee; rice; tapioca and sago; flour and preparations made from cereals; farinaceous foods; bread, pastry and confectionery; candy; pralines and confectionery; chocolate and chocolate products; edible ices; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); marinades; fruit sauces; tomato sauces; spices; ice; tea drinks; iced tea; tea-based beverages; tea-based beverages with fruit flavoring or fruit flavourings; non-alcoholic beverages with tea flavour or flavorings of tea; fruit teas; fruit teas containing lemon and/or flavoured with elderflower; fruit teas containing peach and/or flavoured with honey; coffee-flavoured soft drink or coffee flavorings [flavourings]; non-alcoholic drinks, containing tea or tea extracts; non-alcoholic drinks, containing coffee or coffee extracts; non-alcoholic beverages with coffee components or a coffee flavour, non-alcoholic energy drinks with coffee components or a coffee flavour; non-alcoholic beverages with tea flavour; coffee-flavoured soft drink; flavoured tea-based beverages; tea-based beverages.

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages; fruit beverages and fruit juices; nectars; fruit nectars; fruit nectar beverages; vegetable drinks and vegetable juices; syrups and other preparations for making beverages; energy drinks; lemonades; non-alcoholic beverages, in particular with fruit flavouring; smoothies; flavoured water-based beverages; water-based beverages; coconut juice; coconut water; tomato juice; non-alcoholic beverages made with fruits; non-alcoholic fruit extracts; fruit juice concentrate; cocktails, non-alcoholic; isotonic drinks; must; non-alcoholic aperitifs; non-alcoholic beverages consisting of coconut juice or with coconut juice flavouring or with coconut flavouring; whey beverages; non-alcoholic beverages with fruit flavouring; non-alcoholic beverages containing fruits or fruit extracts.

Austrian trade mark registrations No 258 429 ‘YIPPY’ and No 258 432

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

Maltese trade mark registration No 36 594 ‘YIPPY’

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

Hungarian trade mark registration No 176 070 ‘YIPPY’

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

International registration No 1 068 341 ‘YIPPY’ designating Germany

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

International registration No 787 506 designating Bulgaria, Benelux, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Lithuania, Spain, Latvia, Poland, Portugal, Slovakia, Slovenia, and also designating Romania

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

The contested goods are the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yoghurt, milk products; edible oils and fats; potato chips; vegetable based chips; potato chips; potato snacks.

Class 30: Coffee, tea, cocoa and artificial coffee; rice, pasta, noodles; flour and preparations made from cereals; bread, pastry and confectionery; chocolate, chocolate bars; ice cream, sorbets and other kinds of edible ices; sugar, honey; seasonings; spices; preserved herbs; vinegar; condiments; spice sauces; spice extracts; marinades; marinades containing seasonings; sauces; picante sauce; tomato ketchup; chutneys [condiments] and pastes; sauces for barbecued meat.

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

Class 33: Alcoholic beverages (except beers); preparations for making alcoholic beverages; alcopops; pre-mixed alcoholic beverages; wine; white wine; red wine; rose wines; spritzers; ciders; sparkling wines; liqueurs; gin; whisky; vodka; schnapps; brandy.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

c) The signs

 

Marks 1-3 Marks 4-7, 9-11 YIPPY Marks 8, 12, 13	MissisHippi
Earlier trade marks	Contested sign

 

The relevant territories are the European Union, and Bulgaria, Benelux, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Lithuania, Spain, Latvia, Poland, Portugal, Slovakia and Slovenia, as well as Romania.

 

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 marks 4-7, 9-11 are word marks consisting of the word ‘YIPPY’, the remaining are figurative marks containing the same word in a highly stylised typeface, marks 1-3 being in different colours and no dominant elements.

The word ‘YIPPY’ in the earlier marks has no meaning as such for the relevant public and is, therefore, distinctive. Yet, given its pronunciation, it cannot be excluded that at least part of the public, for instance the English-speaking part of the public, would perceive it as a misspelling of the word ‘YIPPEE’ which is an exclamation that is used by people when they are very pleased or excited (see Collins Dictionary online at https://www.collinsdictionary.com/dictionary/english/yippee)

The contested word mark is MissisHippi. Where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Irregular capitalisation may have an impact on how the public perceives the sign. For example, it may change the meaning of the word element in the relevant language and therefore influence how the sign is perceived. In view of the foregoing, given the spelling and pronunciation of the contested sign, the English-speaking part of the public may perceive this sign as a wordplay based on the name ‘Mississippi’ (i.e. a state of the southeastern US, on the Gulf of Mexico or a river in the central US), and also perceive the elements ‘Missis’ and ‘Hippi’. The element ‘Missis’ is a variant spelling of the English word ‘Missus’ and is a very informal way for people of addressing a woman who they do not know (07/05/2021 https://www.collinsdictionary.com/dictionary/english/missus) while ‘Hippi’ is perceived as a misspelling of ‘hippie’ referring to any person having a similar lifestyle as the young people of the 1960s and 1970s who, in their alienation from conventional society, turned variously to mysticism, psychedelic drugs, communal living, etc. (07/05/2021 https://www.collinsdictionary.com/dictionary/english/hippie. Given the presence of ‘Missis’, the element ‘Hippi’ can also be perceived by the English-speaking part of the public as the surname of the woman in question. In any event, the words are distinctive, contrary to the opponent’s arguments.

Given the pronunciation of the contested sign, the remaining part of the public will also perceive the contested sign as a ‘misspelling ‘of the word ‘Mississippi’ and possibly also associate the element ‘Hippi’ with the above meaning. However, this part of the public, is less likely to associate the element ‘Missis’ with any meaning. Be it as it may, the sign and its elements is also distinctive for this part of the public.

 

Visually, the signs coincide in that they contain a letter sequence ‘IPP’. However, this sequence occupies a different position in the marks in conflict. In the earlier marks, these are the second to fourth letters, while in the contested sign they occupy the eighth to tenth positions. The marks have different beginnings, the earlier marks beginning with the letter ‘Y’ before the aforementioned sequence, while the contested mark begins with ‘MissisH_’. The marks have different endings as well, the earlier marks ending with the letter ‘Y’, while the contested mark ends with letter ‘I’. The earlier marks contain 5 letters while the contested mark contains eleven letters. Furthermore, the earlier figurative marks contain stylizations, some also including colours, whereas these are not present in the contested sign.

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.

Taking further into account that due to the irregular capitalization in the contested sign, the elements ‘Missis’ and ‘Hippi’ will be singled out for which the coincidence in ‘IPP’ cannot be considered to go completely lost in the whole of the sign, the signs are visually similar to a very low degree.

 

Aurally,  the earlier marks contain 5 letters while the contested mark contains eleven letters. Due to the different length, the marks have a different rhythm and stress. However, the pronunciation of the signs coincides in the sound of the letters ‘IPP’, present identically in both signs although it is to be noted that this sequence is found in different places in the marks. Indeed, in the earlier marks, these are the second to fourth letters, while in the contested sign they are on the eight to tenth position. The sound of the final letters Y/I is identical in some languages such as French and English. However, the marks have different beginnings, the earlier marks begin with the letter ‘Y’ before the mentioned sequence, while the contested mark begins with MissisH_.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive at least a reference to ‘Mississippi’ (the state or the river) in the contested sign, the other sign has no meaning for part of the public. In that case, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Yet, as seen above, it is not excluded that part of the public perceives an exclamation in the earlier marks and therefore, for that part of the public, the signs are conceptually dissimilar.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, some of the earlier marks 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’). The examination will proceed on the assumption that all the earlier marks have enhanced distinctiveness, even where not invoked.

e) Global assessment, other arguments and conclusion

The goods have been assumed identical. The level of attention of the relevant public is average.The marks are visually and aurally similar to a very low degree and conceptually either not similar or properly dissimilar. The Opposition Division has assumed in section d) of this decision that all the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The marks at issue are only remotely similar as a result of the coincidence in the letters ‘IPP’, present in the middle of the earlier mark and at the end of the contested sign, although aurally they may coincide further in the sound of the final letters ‘Y’ in the earlier mark and ‘I’ of the contested sign. The marks clearly differ in their beginnings ‘Y’/ ‘MissisH’, length, colour and stylisation. Furthermore, most consumers would not grasp any meaning in the earlier marks whereas they will in the contested sign. If part of the public does associate the earlier marks with a meaning it is in any event a different one from the one conveyed by the contested sign. Therefore, the similarities between the signs are very limited and not enough to offset their significant differences and they cannot lead to a finding of a likelihood of confusion even assuming that the goods are identical and that all the earlier marks have been extensively used and enjoy an enhanced scope of protection, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

REPUTATION — ARTICLE 8(5) EUTMR

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) The signs

 

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

b) Reputation of the earlier trade marks

In its notice of opposition, the opponent claims that the following earlier trade marks have a reputation:

1. Austrian trade mark registration No 258 429 ‘YIPPY’ for the following goods in Class 32: non-alcoholic drinks; fruit drinks and fruit juices; lemonades;

2. Austrian trade mark registration No 258 432 for the following goods in Class 32: non-alcoholic drinks; fruit drinks and fruit juices; lemonades;

3. Hungarian trade mark registration No 176 070 ‘YIPPY’ for the following goods in Class 32: non-alcoholic drinks; fruit drinks and fruit juices;

4. International registration No 787 506 designating Hungary for the following goods in Class 32: non-alcoholic drinks; fruit drinks and fruit juices.

However, in addition to the above, in its submissions of 25/03/2020, the opponent claims reputation under Article 8(5) for the following marks.

1. European Union trade mark registrations Nos 12 566 089, 18 052 481, 11 941 655, 12 870 416, 18 033 874,

2. Austrian trade mark registrations No s 258 429 and 258 432;

3. Hungarian trade mark registration 176 070

4. International registration No 787 506 designating Bulgaria, Hungary and Slovenia.

The Opposition Division notes, that according to Article 46 EUTMR within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8. Article 46(3) states that opposition shall be expressed in writing, and shall specify the grounds on which it is made.

Article 2(2)(c) EUTMDR stipulates that the notice of opposition must contain the grounds on which the opposition is based

It is noted, that the contested trade mark application was published on 05/06/2019 and the three month opposition period ended therefore on 05/09/2019.

The opponent cannot extend the basis of the opposition after the expiry of the opposition period. Consequently, insofar as the grounds on Article 8(5) EUTMR are concerned, the Office finds that the opposition was only duly entered on the basis of the earlier rights listed in the Opposition Notice and will examine the opposition accordingly.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 17/04/2019. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Austria and Hungary prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely those listed above

The opposition is directed against the following goods:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yoghurt, milk products; edible oils and fats; potato chips; vegetable based chips; potato chips; potato snacks.

Class 30: Coffee, tea, cocoa and artificial coffee; rice, pasta, noodles; flour and preparations made from cereals; bread, pastry and confectionery; chocolate, chocolate bars; ice cream, sorbets and other kinds of edible ices; sugar, honey; seasonings; spices; preserved herbs; vinegar; condiments; spice sauces; spice extracts; marinades; marinades containing seasonings; sauces; picante sauce; tomato ketchup; chutneys [condiments] and pastes; sauces for barbecued meat.

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

Class 33: Alcoholic beverages (except beers); preparations for making alcoholic beverages; alcopops; pre-mixed alcoholic beverages; wine; white wine; red wine; rose wines; spritzers; ciders; sparkling wines; liqueurs; gin; whisky; vodka; schnapps; brandy.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 25/03/2020 the opponent submitted the following evidence:

 Affidavit of Mr. Joachim Sutter, legal counsel for the opponent dated 13/03/2020. According to the document, the turnover of the trade mark in Austria was between 2014-19 at least 2 Million Euros per year in connection with fruit drinks. In Hungary the turnover for the same period is ca 1 million Euros per year. Fruit drinks with the YIPPY mark were first sold in Hungary in 2002.

 Annex 2: Tv Commercials relating to the product/trademark YIPPY which were aired in different European countries, namely Austria, Hungary, Croatia, Slovenia and Bulgaria. Some of the video files do not comply with the required format, namely MP4 and therefore, only the files in the appropriate format should be taken into account as indicated to the opponent on 25/09/2020. In any event, even

 Annex 3: Sales folder YIPPY given out in Hungary. According to the opponent, this is as product/sales folder for YIPPY, used or given out by the opponent in Hungary and showing the fruit drinks under the YIPPY trade mark.

 Annex4 : Document entitled ‘Input to international newsletter’ for Hungary of July 2012. According to the opponent, the document shows/indicates the fruit drink/trademark YIPPY, the online campaign under www.nlc.hu (one of the most visited sites in Hungary, according to the opponent), the promotion activities of the opponent in Hungary during the event ‘Children’s island’, the biggest family festival in Hungary with 44.000 visitors/weekend, and finally, the opponent’s tailor-made promotion.

 Annex 5: Invoices in the period 2009 until 2019 which, according to the opponent, confirm the use of the trademark ‘YIPPY’ in Austria, Bulgaria, Croatia, Czech Republic, Germany, France, Hungary, Ireland, Lithuania, Malta, Romania, Slovenia, Slovakia, Spain, Belgium (Benelux).

 Annex 6: Printouts from the opponent’s homepage www.rauch.cc regarding trademark/products YIPPY dated 06/09/2016 and 30/12/2019 showing products branded ‘YIPPY’ for fruit drinks.

 Annex 7: Picture showing freight vehicles with the branding of the trademark YIPPY in the Czech republic for the years 2003 and 2004.

 Annex 8: Decisions from the Hungarian Intellectual Property Office in which the repute of the Hungarian trade mark registration is established on the basis of the evidence filed by the opponent.

 International Brand Tracking report regarding the Austrian, Bulgarian, Hungarian and Slovenian markets, issued by ‘KANTAR Info research Austria’.

First of all, it should be noted that the evidence mainly relates to non-alcoholic drinks; fruit drinks and fruit juices, whereas there is little or no reference to the remaining goods, namely lemonades. This is clear, for example, from the market share report, affidavit, sales figures and advertisements, where only the former are mentioned.

Secondly, in relation to the decisions of the Hungarian it should be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present in case, the Opposition Division notes that in the absence of any information as to the evidence filed with the Hungarian Office on the basis of which repute of the earlier mark was established, the previous decisions referred to by the opponent are not relevant to the present proceedings.

Thirdly, in relation to the figures relating to turnover and advertising expenditure as well as the commercials, the invoices and the surveys, the Opposition Division observes that only the data related to Austria and Hungary may be taken into account and that the information relating to other territories is not relevant given that repute was claimed for Austria and Hungary.

Having examined the evidence listed above, the Opposition Division considers that in relation to Hungary and Austria, the sales figures, advertising expenditure and more particularly the surveys, do not show that the earlier trade mark acquired a reputation. Indeed, the figures relating to the turnover and the advertising expenditure are not put into the context of the market and competitors in question. In addition, the results of the relevant surveys, namely those in relation to Austria and Hungary merely show that the 31% of the interviewees in Hungary who were ‘aware’ of the YIPPY brands needed to be prompted when asked ‘What brands of <Category> can you think of?’ / ‘Have you ever seen or heard of any of these brands of <Category> shown below?’. Moreover, none of the interviewees referred to the earlier marks when asked ‘What fruit juice or smoothie brands available in the chilled shelf can you think of?’. Regarding Austria, the figures are hardly any different and the survey also mentions that the market share of ‘YIPPY’ is equal to 1.1%. Such figures hardly speak for repute of the earlier marks. In view of the foregoing and taking further into account that the surveys date from Autumn 2019 whereas the contested trade mark was filed on 17/04/2019 and the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Austria and Hungary prior to that date, the Opposition Division finds that the evidence submitted by the opponent, taken as a whole, does not show that the earlier trade mark acquired a reputation in the relevant territories and in relation to the relevant goods.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, for the sake of completeness and for the sake of the parties, the Opposition Division notes the following:

As established above, the signs are similar to a certain extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, it has been established above that the signs are similar to a certain extent. However, this does not mean that the relevant public is likely to establish a link between them.

When consideration is given to the goods in question, these are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). It is true that some of the goods at issue are beverages and that in relation to these it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue, since these are frequently ordered orally (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, 23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38).

Yet, in the present case, the signs are only remotely similar. As seen above, the signs at issue clearly differ in their beginnings (‘Y’/ ‘MissisH’), lengths and stylisations. Visually and aurally, the significant differences at the beginning of the signs are obvious and immediately perceptible. Coupled with the lack of any conceptual similarity, the signs at issue are so distant from each other that there is nothing that allows any assumption of a possible link between them (21/01/2010, T-309/08, EU:T:2010:22 § 25-36).

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that even if a certain recognition were to be attributed to the earlier marks that would amount to establishing a certain degree of repute, it is in any event unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

As already stated above, the opposition must be rejected.

 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Martina GALLE

Erkki MÜNTER

Gonzalo BILBAO TEJADA

 

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.