OPPOSITION No B 3 094 150

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

Think J Wines Limited, 9 Garston Old Road, Liverpool L19 9AF, United Kingdom (applicant), represented by Paul Price, Suite 114, North Mersey Business Centre, Woodward Road, Kirkby/Knowsley L33 7UY, United Kingdom (professional representative).

On 30/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 150 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 081 706 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 and services of European Union trade mark application No 18 081 706 for the word mark ‘Think’. The opposition is based on European Union trade mark registration No 9 663 394 for the word mark ‘Think Fair’. The opponent invoked Article 8(1)(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.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 33: Alcoholic beverages (except beers).

Class 35: Marketing, sales promotion, marketing, sales and purchasing consultancy; Public relation services; Retail services including on-line retail services, In particular discount retail services, In the fields of: Foodstuffs, beverages, Delicatessen articles, organic and natural products, not in the fields of: Footwear, Clothing, Headgear, Bags and Leather goods; assembling data in computer-databases; Providing information on the Internet, namely providing information for consumer advice in relation to foodstuffs (product information).

The contested goods and services are the following:

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising services for the promotion of beverages; Retail services in relation to preparations for making beverages; Retail services relating to alcoholic beverages; Wholesale services in relation to alcoholic beverages (except beer); Retail services via global computer networks related to alcoholic beverages (except beer).

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the opponent’s lists of services in Class 35, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Moreover, the earlier European Union trade mark registration No 9 663 394 is registered, amongst others, for the following term in Class 35: ‘Marketing, sales promotion, marketing, sales and purchasing consultancy’.

As regards this term, the Opposition Division notes that the punctuation used in the English text (second language of the mark) allows various interpretations regarding the extent of consultancy services. This is not the case, however, in the first language of the mark (German), which reads ‘Marketing, Verkaufsförderung, Marketing-, Vertriebs- und Einkaufsberatung’ and therefore clearly indicates that consultancy refers to the three last nouns ‘marketing, sales and purchasing consultancy’ and the whole term should be read as ‘marketing, sales promotion; marketing, sales and purchasing consultancy’.

Pursuant to Article 147(3) EUTMR, in cases of such discrepancies, in case the first language of the application is a language of the Office, the authentic version of the list of goods and/or services is that of the first language (in the present case German). Therefore, for the purpose of these proceedings, the Opposition Division will consider that the list of services in Class 35 of the earlier European Union registration No 9 663 394 contains: ‘marketing, sales promotion; marketing, sales and purchasing consultancy’.

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.

Contested goods in Class 33

Alcoholic beverages (except beers) are identically contained in both lists of goods and services.

Contested services in Class 35

The contested advertising services for the promotion of beverages are included in the broad category of the opponent’s marketing. Therefore they are identical.

The contested retail services relating to alcoholic beverages; retail services via global computer networks related to alcoholic beverages (except beer) are included in the broad category of the opponent’s retail services including on-line retail services, in particular discount retail services, in the fields of: foodstuffs, beverages, delicatessen articles, organic and natural products, not in the fields of: footwear, clothing, headgear, bags and leather goods. Therefore, they are identical.

The contested retail services in relation to preparations for making beverages are similar to the opponent’s broad category of the opponent’s retail services including on-line retail services, in particular discount retail services, in the fields of: foodstuffs, beverages, delicatessen articles, organic and natural products, not in the fields of: footwear, clothing, headgear, bags and leather goods.

Retail services of specific goods and retail services of other specific goods have the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

Similarity is found between the retail services of specific goods where the goods are commonly retailed together in the same outlets and they are directed at the same public. Since preparation for making beverages such as syrups for making beverages or flavouring syrups are usually sold to the same customers in the same shops as the opponent’s foodstuff and beverages, the retail of these products is consider similar to the opponent’s retail services.

The contested wholesale services in relation to alcoholic beverages (except beer) are similar to the opponent’s retail services including on-line retail services, in particular discount retail services, in the fields of: foodstuffs, beverages, delicatessen articles, organic and natural products, not in the fields of: footwear, clothing, headgear, bags and leather goods.

Wholesale services in relation to certain specific goods have some points of contact with retail services of the same specific goods. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subject of these services (the goods themselves) is the same and the public could take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

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 and service found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Think Fair	Think
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘Think’ means in English ‘to consider, judge, or believe; to exercise the mind as in order to make a decision; ponder’. This meaning approximates the signs conceptually in the perception of the English-speaking public. Consequently, for procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark and the contested sign are both word marks, ‘Think Fair’ and ‘Think’ respectively. As word marks they have no dominant elements.

The coinciding element ‘Think’, with the meaning indicated above, is not related with the relevant goods and services, and therefore it is distinctive to a normal degree.

The second element of the earlier mark, ‘Fair’ is, inter alia, and adjective meaning ‘reasonable, right, and just’, a derived noun meaning ‘fairness’ or an adverb meaning ‘in a fair way; correctly’. These meanings have no direct relation with the relevant goods and services and the element ‘Fair’ is, therefore, normally distinctive.

The whole expression ‘Think Fair’ could be interpreted in various ways, as for example ‘think in a fair manner’ or ‘think about fairness’. In any event, it has no relation with the relevant goods and services and its distinctiveness remains average.

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 that (the sound of) the entire contested sign is included in the earlier mark, moreover as its initial, distinctive and independent element.

The signs differ in (the sound of) the second element of the earlier mark, ‘Fair’, which has no counterpart in the contested sign.

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

Conceptually, the signs will be associated with the same meaning conveyed by the verb ‘Think’, however, modified in the earlier mark by the word ‘Fair’. In any case, regardless of how the whole expression ‘Think Fair’ is perceived and interpreted, the public will be aware of the semantic content of the word ‘Think’ at the beginning of the earlier mark. This word is inherently distinctive in relation to all the goods and services at issue and, therefore, this coincidence generates an average degree of conceptual similarity between the marks.

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 and services in question from the perspective of the analysed 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 goods and services are partly identical and partly similar. The degree of attention of the relevant public varies from average to high. The inherent distinctiveness of the earlier mark is normal. For the public under analysis, the signs have been found visually, aurally and conceptually similar to an average degree.

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.

The earlier mark includes the contested sign entirely, moreover, as an initial, distinctive element. The signs differ in the second element of the earlier mark, ‘Fair’. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 663 394 for the word mark ‘Think Fair’. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Anna BAKALARZ

Anna ZIOŁKOWSKA

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.