OPPOSITION Nо B 3 107 852

 

Frutika S.R.L., Km 150 Ruta VI Juan León Mallorquín, Colonia Kressburgo, Distrito Carlos A. López, 00000 Itapúa, Paraguay (opponent), represented by Ángel Díez Bajo, Calle Velayos 4, 2ª D., 28035 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Dnature Bio Labs Co., Ltd, B-801, Tera Tower 2, 201, Songpa-daero, Songpa-gu, Seoul, Republic of Korea (applicant), represented by Hanyang Iplc Pfaff-Hofmann & Lee Rechtsanwälte Partnergesellschaft Mbb, Potsdamer Straße 144, Berlin 10783, Germany (professional representative).

On 28/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 107 852 is upheld for all the contested goods, namely Class 32: Juices; fruit juice beverages; aerated fruit juices; fruit-flavoured beverages; protein beverages; protein-enriched sports beverages; beverages based on sparkling juices; non-alcoholic fruit cocktails; non-alcoholic vegetable juice drinks; non-alcoholic grape juice beverages; non-alcoholic sparkling fruit juice drinks; non-alcoholic beverages enriched with minerals not for medical purposes; vitamin-mixed beverages; smoothies; vegetable smoothies; smoothies; sports drinks; fibre-enriched non-alcoholic beverages; beverages consisting of a blend of fruit and vegetable juices; whey beverages; non-alcoholic fruit juices; vegetable juices [beverages]; vegetable juices [beverages]; fruit juice concentrates; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; syrup and powder for making effervescing beverages; flavoured waters; flavoured mineral water.

2.	European Union trade mark application No 18 094 821 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 18 094 821 (figurative mark), namely against all the goods in Class 32 other than beers. The opposition is based on Spanish trade mark registration No  3 507 369 (figurative mark) and on Italian trade mark registration No 2019000015143 (figurative mark). The opponent invoked  Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

With respect to Spanish trade mark registration No  3 507 369 (figurative mark):

According to Article 95(1) EUTMR, in proceedings before it, the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source – Article 7(3) EUTMDR.

Pursuant to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents, as well as any provisions of the applicable national law governing the acquisition of rights and their scope of protection, submitted by the opponent to substantiate the opposition must be either in the language of the proceedings, or be accompanied by a translation into that language. Such translations must be submitted by the opponent on its own motion and within the time limit for substantiation of the opposition. Only what is submitted and translated within this time limit is taken into account.

The requirement for the evidence of substantiation to be translated also relates to online evidence referred to by the opponent, where the language of the online evidence is not the same as the language of the proceedings. This follows from Article 7(4) EUTMDR, which states that ‘“evidence accessible online” … shall [also either] be in the language of the proceedings or shall be accompanied by a translation into that language’.

In the notice of opposition, the opponent did not provide a translation of the goods of Spanish trade mark registration No  3 507 369 (figurative mark) on which the opposition was based, into the language of the proceedings (English).

Although the opponent selected online substantiation in the Notice of Opposition for this earlier Spanish mark, the information provided by means of online substantiation via TMview and/or the office of origin (OEPM) does not include a translation into English of the goods of the said Spanish mark.

On 30/01/2020, the opponent was given two months, commencing after the end of the cooling-off period, to substantiate its opposition (i.e. until 09/06/2020). This period was automatically extended by virtue of Decision No EX 20-4 of the Executive Director of the Office dated 29 April 2020, with regard to the extension of time limits, and it expired on 18/07/2020.

On 26/04/2020 the opponent filed documents in support of its opposition but none thereof included a translation into English of the goods of the said earlier Spanish trade mark.

As the goods of the opponent’s said Spanish trade mark has not been provided in the language of the proceedings before the end of the period for substantiation, the opposition must be dismissed with respect to this earlier right.

With respect to Italian trade mark registration No 2019000015143 (figurative mark):

On the same day as filing the Notice of Opposition, the opponent filed a copy of the certificate of registration of the above-numbered Italian trade mark registration.

The Office points out that use of the official form of Notice of Opposition is not obligatory. The Notice of Opposition in this case refers to the ground of Article 8(1)(b) EUTMR. Although the Italian trade mark was not specifically mentioned in the Notice of Opposition, it was submitted at the same time. Further, the opponent proceeded to file a translation within the period set down by the Office, as stated above.

Since the certificate of registration of the Italian trade mark was filed on the same day as the Notice of Opposition it was clearly the intention of the opponent to base the opposition also on this Italian mark and to invoke in relation to this the same ground invoked in the Notice of Opposition (i.e. article 8(1)(b) EUTMR.

Consequently, the Office considers that the said Italian registered trade mark as well as Article 8(1)(b) EUTMR have been correctly identified as a basis and ground of the opposition. Therefore, the opposition is to be considered duly substantiated in relation to the Italian trade mark and the proceedings shall proceed on the basis thereof.

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, inter alia, the following:

 
Class 32: Non-alcoholic beverages; concentrates for making fruit juices; non-alcoholic fruit juices; fruit juices and beverages;

The contested goods are the following:

 

Class 32: Juices; fruit juice beverages; aerated fruit juices; fruit-flavoured beverages; protein beverages; protein-enriched sports beverages; beverages based on sparkling juices; non-alcoholic fruit cocktails; non-alcoholic vegetable juice drinks; non-alcoholic grape juice beverages; non-alcoholic sparkling fruit juice drinks; non-alcoholic beverages enriched with minerals not for medical purposes; vitamin-mixed beverages; smoothies; vegetable smoothies; smoothies; sports drinks; fibre-enriched non-alcoholic beverages; beverages consisting of a blend of fruit and vegetable juices; whey beverages; non-alcoholic fruit juices; vegetable juices [beverages]; vegetable juices [beverages]; fruit juice concentrates; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; syrup and powder for making effervescing beverages; flavoured waters; flavoured mineral water.

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.

Fruit juice beverages; non-alcoholic fruit juices; fruit juice concentrates are identically contained in both lists of goods (with slight changes of wording).

The contested juices; aerated fruit juices; fruit-flavoured beverages; protein beverages; protein-enriched sports beverages; beverages based on sparkling juices; non-alcoholic fruit cocktails; non-alcoholic vegetable juice drinks; non-alcoholic grape juice beverages; non-alcoholic sparkling fruit juice drinks; non-alcoholic beverages enriched with minerals not for medical purposes; vitamin-mixed beverages; smoothies; vegetable smoothies; smoothies; sports drinks; fibre-enriched non-alcoholic beverages; beverages consisting of a blend of fruit and vegetable juices; whey beverages; vegetable juices [beverages]; vegetable juices [beverages]; flavoured waters; flavoured mineral water are included within the broader category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; syrup and powder for making effervescing beverages are similar to the opponent’s non alcoholic beverages as they usually coincide in producer, relevant public and distribution channels.

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 are directed at the public at large and at business professionals, for which the degree of attention is average.

 

c) The signs

 

Earlier trade mark	Contested sign

The relevant territory is Italy.

 

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

The earlier mark consists of the word ‘Frutika’ presented in a stylised font in the colour green, with some lighter border shading on the letters creating a reflection effect. However, the stylization will be regarded as being primarily decorative in nature and so not having trade mark significance.

The relevant public will perceive the verbal element ‘Frutika’ as alluding to the concept of ‘fruit’ given the similarity to the Italian word ‘frutta’ (i.e. ‘fruit’) and given that such concept refers to the fruity characteristics of the goods in question (i.e. their taste, smell or composition), it follows that the word ‘Frutika’ is weakly distinctive of the goods in question.

The contested sign consists of the stylized word ‘Fruticana’ presented in a stylized blue font, with some lighter colouring in the dot over the letter ‘i’, in a slightly curved manner. For the reasons already set out above, the stylization will be regarded as being primarily decorative and, in addition, the word ‘Fruticana’ thereof will be perceived as alluding to fruit and so weakly distinctive of the relevant goods.

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, the signs coincide in the letters ‘Fruti*a**’, differing in the letter ‘k’ of the earlier mark and the letters ‘c’, ‘n’ and ‘a’ at sixth, eighth, and ninth position of the contested sign. While the signs differ also in overall colouring – the earlier mark being in green and the contested sign being in blue - both have, broadly speaking, a similar font type, thereby adding somewhat to the overall visual similarity between the signs.

Taking the above into account, the Opposition Division considers that the signs at issue are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘Frutika’/’Frutica’ as the letter ‘k’ of the earlier mark has the same sound of the letter ‘c’ of the contested sign, differing in the sound of the letters ‘na’ of the contested sign. On this basis, and taking into account that consumers tend to place more emphasis on the start of signs, as explained above, the Opposition Division considers that the signs are aurally similar to an above average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, both allude to the concept of ‘fruit’, as explained above, To that extent, they are conceptually similar to a low degree, given that this concept is lowly distinctive of the goods in question.

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 alludes to the concept of fruit, as referred to above, and so is weakly distinctive of the goods in question.

e) Global assessment, other arguments and conclusion

 

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).

 

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 signs at issue have been found to be visually similar to an average degree, aurally similar to an above average degree, and conceptually similar to a low degree. The goods are partly identical and partly similar, the earlier mark as a whole is weakly distinctive (because it alludes to fruit), and the degree of attention is average.

Account is 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).

 

According to the Guidelines of the Office (Guidelines for Examination in the Office, Part C Opposition, Part 2, Chapter 5, section 2.2.2) a finding that a trade mark has a low or even very low (minimal) degree of distinctiveness may have a different impact on the likelihood of confusion. In general, this finding is an argument against likelihood of confusion. It must however be balanced with the other factors, like the degree of similarity of the signs and the goods or services, as well as the level of attention and sophistication of the relevant public.

The said Guidelines go on to state that the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, for the reasons set out at section c) above, the relevant consumer will tend to place more emphasis on the start of the signs at issue, pertaining to the coinciding letter string ‘Frut’, as a result of which the endings have less impact. However, the respective endings – ‘ika’ of the earlier mark and ‘icana’ of the contested sign also share some degree of visual and aural similarity. The figurative/stylized elements of the signs are primarily decorative and, moreover, are not particularly elaborated so they have a limited impact contrary to the submissions of the applicant. As a result, taking into account the identity or similarity of the relevant goods, the Opposition Division considers, contrary to the applicant’s submissions, that the overall similarities between the signs give rise to a likely risk of confusion and this risk cannot be discounted even given the weak distinctive character of the earlier mark.

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

 

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 2019000015143. It follows that the contested trade mark must be rejected for all the contested goods.

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

 

 

Angela DI BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

 

 

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.