OPPOSITION No B 3 100 509

La Fée LLP, The Coach House, Bayford Hall, SG13 8PR Bayford, Hertford, United Kingdom (opponent), represented by Murgitroyd & Company, Murgitroyd House, 165-169 Scotland Street, G5 8PL Glasgow, United Kingdom (professional representative)

a g a i n s t

Shanghai Dowell Trading Co. Ltd., 2nd Floor, Shunpu Building, 99 Gongyuan Road, Qingpu District, Shanghai, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 24/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 509 is upheld for all the contested goods, namely:

Class 32: Beer; fruit juice; waters [beverages]; seltzer water; must; non-alcoholic beverages; soft drinks; aerated water; protein-enriched sports beverages; preparations for making beverages.

2. European Union trade mark application No 18 077 912 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 077 912 (figurative mark), namely against all the goods in Class 32. The opposition is based on, inter alia, international trade mark registration No 1 501 161 designating the European Union ‘LA FÉE’ (word mark) in relation to which the opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

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 international trade mark registration No 1 501 161 designating the European Union ‘LA FÉE’ (word mark).

a) The goods

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

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

The contested goods are the following:

Class 32: Beer; fruit juice; waters [beverages]; seltzer water; must; non-alcoholic beverages; soft drinks; aerated water; protein-enriched sports beverages; preparations for making 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 fruit juice; seltzer water (i.e. mineral water with bubbles); non-alcoholic beverages; aerated water; preparations for making beverages are identically contained in the opponent’s list of goods (including synonyms and slightly different wordings).

The contested must; soft drinks; protein-enriched sports beverages are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested waters [beverages] include, as a broader category, the opponent’s mineral and aerated waters. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested beer is similar to a high degree to the opponent’s non-alcoholic beverages. Non-alcoholic beverages cover ‘non-alcoholic beer’ and they coincide in producer, unlike ‘soft drinks’. Furthermore, they have the same purpose, relevant public and distribution channels and are in competition.

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 a high degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

LA FÉE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The verbal elements ‘LA FÉE’ and ‘LA FEÉ’ (or their parts) are meaningful in certain parts of the relevant territory. For example, in those countries where French is understood ‘LA FÉE’ means ‘the fairy’. The same meaning will be attributed to the verbal element ‘LA FEÉ’ of the contested sign despite the displaced accent whose different position may go unnoticed by this part of the public. Furthermore, it cannot be excluded that some German-speaking consumers will associate the verbal elements ‘FÉE’ and ‘FEÉ’ with the German word ‘Fee’ which also means ‘fairy’. Likewise, part of the English-speaking public in the relevant territory may overlook the accent in both signs and, despite the preceding definite article ‘LA’ in both signs, it may perceive the elements ‘FÉE’ and ‘FEÉ’ as referring to the English word ‘fee’ meaning ‘an amount of money paid for a particular piece of work or for a particular right or service’ (information extracted from Cambridge Dictionary on 22/09/2020 at https://dictionary.cambridge.org/dictionary/english/fee). However, in the remaining territories these verbal elements (or their parts) are unlikely to have any meaning. Whether or not they are understood, the verbal elements ‘LA FÉE’ and ‘LA FEÉ’ (or their parts) are both distinctive to a normal degree in relation to the goods at issue.

In any case, the question of the distinctiveness of the signs’ verbal elements is immaterial in the present case since they are essentially the same in both marks with the only differences being the position of the accent, which, however, may easily go unnoticed by the consumers, and the typeface of the letters in the contested sign, which plays mostly a decorative role within the sign and contributes only very little (if any) to its distinctive character.

Moreover, contrary to the opponent’s assertion, neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements. This is because they essentially consist of verbal elements which do not have any dominant elements due to their nature.

It follows from the above that the signs are visually similar to a high degree, aurally similar to a high degree, if not identical, and conceptually either identical, if a meaning is assigned to the elements ‘LA FÉE’ and ‘LA FEÉ’ (or their parts), or if not, the conceptual aspect would not influence this assessment.

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 claimed that the earlier mark enjoys a higher-than-average degree of inherent distinctiveness since it is arbitrary in relation to the opponent’s goods. As regards this argument, first it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link with the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any evidence to prove enhanced distinctiveness.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Account must be also 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).

As concluded above, the contested goods are partly identical and partly similar to a high degree to the opponent’s goods and target the public at large with an average degree of attention. The earlier mark has a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are visually similar to a high degree, aurally similar to a high degree, or even identical, and conceptually identical at least for a part of the public in the relevant territory, as explained above in section c) of this decision. They consist of the same verbal elements, ‘LA FÉE’ and ‘LA FEÉ’, with the very slight, or even unnoticeable, difference in the accent and in the typeface of a decorative nature in the contested sign. This justifies the conclusion that there is a likelihood of confusion. It is indeed possible that the average consumer may be led to believe that the same undertaking is responsible for the production of the goods found to be identical or similar to a high degree.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes 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 international trade mark registration No 1 501 161 designating the European Union.

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

As the earlier international trade mark registration No 1 501 161 designating the European Union leads to the success of the opposition and to the rejection of the contested sign 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(1)(a) 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

Boyana NAYDENOVA

Martin MITURA

Kieran HENEGHAN

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.