OPPOSITION No B 3 103 155

Black Cola International SARL, Jabha Elouatania Res. Hannae 37, Tanger, Morocco (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Foodcare Spółka z ograniczoną odpowiedzialnością, ul. Spokojna 4, 32-080 Zabierzów, Poland (applicant), represented by Kancelaria Patentowa Dr W. Tabor Sp. J., ul. Mazowiecka 28a/8-9, 30-019 Kraków, Poland (professional representative).

On 21/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 103 155 is upheld for all the contested goods.

2. European Union trade mark application No 18 097 519 is rejected in its entirety.

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

REASONS

On 14/11/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 097 519 for the figurative mark , namely against all the goods in Class 32. The opposition is based on, inter alia, European Union trade mark registration No 8 815 086 for the figurative mark . 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 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, 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 EUTM registration No 8 815 086.

a) The goods

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

Class 32: Mineral and aerated waters and other non-alcoholic drinks.

The contested goods are the following:

Class 32: Non-alcoholic beverages; cola.

Non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested cola is included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

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 in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is average.

c) The signs

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 verbal elements of the signs are meaningful in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as this will have an impact on the conceptual similarity between the signs.

The earlier mark consists of a red-and-black tin container with a red-and-white figurative label-like frame at the top, and the verbal elements ‘Black’ and ‘Cola’ contained therein. Underneath this element, there is the verbal expression ‘ENERGY DRINK’. The commonplace shape of the tin container, contrary to the applicant’s assertions, is non-distinctive, since it is commonly used in packaging non-alcoholic beverages, and there is nothing in its depiction that would make it significantly different or be more striking than other tin containers in the beverage sector. The same applies to the red-and-white rectangular label-like frame, which is a simple geometrical shape that is commonly used in trade to highlight the information contained within. Consumers do not usually attribute any trade mark significance to such shapes (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). Therefore, the rectangular frame is considered non-distinctive.

The coinciding verbal element ‘BLACK’ may be associated by English-speaking consumers with the dark colour of a drink, which makes it allusive to a characteristic of the goods, being essentially non-alcoholic beverages. Therefore, this verbal element is weak at best (see, to this effect, 22/06/2020, R 2389/2019‑5, BLACKS (fig.) / Miss Black § 44 and 50).

The coinciding verbal element ‘Cola’ / ‘COLA’ will be understood as meaning ‘a brown carbonated drink that is flavoured with an extract of cola nuts, or with a similar flavouring’ (information extracted from Oxford Dictionary on 09/04/2021 at https://www.lexico.com/definition/cola). In the context of the goods in question in Class 32, this verbal element is non-distinctive as it informs consumers that the goods are colas or contain cola as an essential ingredient (see, to this effect, 18/03/2015, T‑384/13, RIENERGY Cola, EU:T:2015:158, § 35).

The verbal expression ‘ENERGY DRINK’, which is depicted in white standard upper-case letters, will be understood at least by the English-speaking public as ‘a soft drink containing ingredients designed to boost the drinker’s energy, esp after exercise’ (information extracted from Collins Dictionary on 12/04/2021 at https://www.collinsdictionary.com/dictionary/english/energy-drink). Bearing in mind that the relevant goods are essentially non‑alcoholic beverages, the expression ‘ENERGY DRINK’ gives a clear indication of the kind of drink in question and it is, therefore, non‑distinctive (02/02/2021, R 1020/2020‑5, MANIMAL ENERGY DRINK (fig.) / Power is back TIGER ENERGY DRINK (fig.), § 51; 16/08/2017, R 299/2017‑5, ARMI ENERGY DRINK (fig.) / ARMA ENERGY et al., § 33; 18/06/2015, R 1061/2014‑4, BLU ENERGY DRINK (fig.) / BRU § 30).

The contested sign is a figurative mark, which consists of the verbal element ‘BLACK’ (with the meaning and degree of distinctiveness as described above), depicted in white upper-case letters against a black quadrangle background. Underneath this element, there are the verbal elements ‘MAGIC’, ‘COLA’ (which is non-distinctive, as explained above) and ‘ENERGY’, spread across three separate lines and depicted against a large figurative red-and-silver star. The representation of the star will be seen as essentially decorative, or as an indication of the quality of the goods and it is, therefore, non-distinctive. In addition, it will be perceived as a common figurative element widely used in the market to promote the quality or endorse ‘premium class’ products (08/10/2014, T‑342/12, Star, EU:T:2014:858).

The verbal element ‘MAGIC’ in the contested sign will be understood by the English-speaking public, inter alia, as meaning: ‘very good or enjoyable’ information extracted from Collins Dictionary on 12/04/2021 at https://www.collinsdictionary.com/dictionary/english/magic) and it falls within the category of superlatives, which are frequently used in order to stress that the goods are of extraordinary quality (15/03/2007, R 933/2006‑1, PURE MAGIC, § 20). The relevant public under examination will immediately see ‘MAGIC’ as a positive indication in connection with the goods for which protection is sought, namely that they contain a flavour (e.g. cola flavour) and that this is magic, (i.e. particularly good, intensive, extraordinary). Therefore, the verbal element ‘MAGIC’ has a clear laudatory and promotional character (19/09/2016, R 287/2016‑1, MAGIC APPLE, § 12-13) and is considered non-distinctive. The word ‘ENERGY’ is non-distinctive for the goods in question since it suggests that the non-alcoholic beverages are energy drinks or that the goods when consumed provide ‘energy’, (i.e. strength and vitality) (16/08/2017, R 299/2017‑5, ARMI ENERGY DRINK (fig.) / ARMA ENERGY et al., § 27) caused by their high sugar content.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the event of negligible elements, the Office may decide not to take such elements into consideration for the purposes of the actual comparison, after having duly reasoned why they are considered negligible (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 42). Above the verbal element ‘BLACK’ of the contested sign, there is an additional verbal expression ‘THE ORIGINAL PREMIUM’ and a small silver star. However, these elements are barely perceptible in the overall impression created by this sign due to their very small size and secondary position therein. As these elements are not noticeable at first sight and are part of a complex sign with numerous other elements, it is very likely they will be disregarded by the relevant public. Consequently, the verbal expression ‘THE ORIGINAL PREMIUM’ and the small silver star will not be taken into consideration.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier mark has no element(s) that could be considered clearly more dominant than other elements, whereas the contested sign’s verbal element ‘MAGIC’ is considered secondary due to its small size and insignificant position within the composition of the sign, and it will not be paid as much attention as an important trade indicator.

Visually and aurally, the signs coincide in their verbal elements ‘BLACK’, ‘COLA’ and ‘ENERGY’ (and their sounds). They differ in their additional elements and the sounds thereof, namely ‘DRINK’ in the earlier mark and ‘MAGIC’ in the contested sign. However, these verbal elements have a minimal impact on the signs’ overall impressions, due to their non-distinctive character for the goods at issue and/or less prominent positions within the signs. In addition, the verbal element ‘MAGIC’ may even be overlooked by the public due to its secondary position therein. Furthermore, 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. The coinciding word ‘BLACK’ is the initial and most distinctive element in both marks and, therefore, will catch the consumers’ attention first when they encounter the signs.

The signs also differ in their figurative elements and aspects, in particular the figurative device consisting of a star in the contested sign, the earlier mark’s depiction of the tin container and in the stylised depiction of the signs’ verbal elements. In addition, although there are some significant differences between them, the signs are somehow similar visually insofar as they have similar colour patterns (black-and-red as well as white letters), which brings some visual similarity between them. In any case, as explained above, the verbal elements of the signs will attract the public’s attention to a greater extent as an indicator of the commercial origin of the relevant goods. Moreover, these figurative elements are not subject to a phonetic assessment.

Furthermore, insofar as the aural comparison is concerned, it should be noted that although all verbal elements are generally subject to the phonetic comparison, it may be the case that the relevant public refers aurally to a sign by some elements and omits others. In the present case, it is considered that the contested sign’s verbal element ‘MAGIC’ is not likely to be pronounced by the relevant public since it has a reduced impact due to its secondary position within that sign. Consumers generally refer to the dominant elements while less prominent elements are not pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44). In addition, economy of language might be another reason for assuming that some elements will be pronounced while others will be omitted, particularly in the case of very long marks (11/01/2013, T‑568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Finally, consumers naturally tend to shorten long marks in order to reduce them to elements that are easier to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48).

Taking into account the abovementioned similarities and differences, given that the signs coincide in three out of four verbal elements, despite their rather limited distinctive character in relation to the goods at issue, these coincidences are sufficient for a finding that the signs are visually similar to a lower-than-average degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their particular elements. For the part of the relevant public on which the examination focuses, the signs will be associated with an identical meaning conveyed by the verbal elements ‘BLACK’, ‘COLA’ and ‘ENERGY’, the distinctive character of which has been defined above. They differ in the concept introduced by their additional verbal elements, ‘DRINK’ in the earlier mark and ‘MAGIC’ in the contested sign, which are, however, non-distinctive and cannot indicate the commercial origin. In addition, the depiction of a star in the contested sign will evoke a laudatory and non-distinctive concept of ‘star’, whereas the other figurative elements of the signs are basic figurative shapes, which will not evoke any particular concept. Therefore, the signs are conceptually similar to a lower-than-average degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the trade mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and between the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical. In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion between them. The goods are directed at the public at large who’s degree of attentiveness is average. The earlier mark has a low degree of inherent distinctiveness.

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).

When evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). The category of goods involved may increase the importance of one of the different aspects of similarity between the signs because of how goods are ordered and/or purchased.

In the present case, the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48). This is because where goods are ordered orally, the phonetic perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time.

The signs are visually and conceptually similar to a lower-than-average degree and aurally similar to an average degree on account of their coinciding verbal elements ‘BLACK, ‘COLA’, and ‘ENERGY’, which are three out of four verbal elements in the signs and constitute the dominant verbal elements in the contested sign. These elements are equally distinctive in both signs. Marks are similar when they are at least partly identical in one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55). The signs differ in the additional verbal elements, ‘DRINK’ in the earlier mark (albeit non-distinctive) and ‘MAGIC’ in the contested sign, which is non-distinctive and secondary within the overall impression created by that sign. It is also conceivable that they will not be pronounced. Therefore, the differentiating verbal elements will not catch the attention of the relevant public. Moreover, the signs differ in their additional figurative elements and aspects, which are of limited importance in the overall impression created by them. The attention of the relevant public will be concentrated on the verbal elements ‘BLACK’, ‘COLA’, and ‘ENERGY’.

Furthermore, it is common practice for manufacturers to make variations in their trade marks, for example by altering the typeface, colours, adding verbal and/or figurative elements to them to endow the trade mark with a new, modern image. The contested sign may be considered by part of the public as a new version of the earlier mark, which has been slightly rejuvenated by an up-to-date appearance to make it more attractive to consumers. Therefore, the relevant consumers may perceive the contested sign as a sub-brand of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In addition, 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 covered are from the same or economically linked undertakings.

The applicant argued that the overall impressions of the signs are different. More specifically, the coincidences in the verbal elements ‘BLACK’ and ‘COLA’, which do not possess a high distinctiveness in the earlier mark, cannot prevail the principle that the assessment of the similarity of marks must take account of the overall impression created by them, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The Opposition Division notes that the coincidence in some words has to be put into perspective and reference is made to the previous arguments in the comparison of the signs. If trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (fig.), § 50; 14/05/2001, R 257/2000‑4, FIG./COLOUR MARK (e plus) / PLUS, § 22). In the present case, the differences between the signs are contained in the verbal elements which are non-distinctive, not readily perceptible or figurative. In addition, contrary to the applicant’s assertions, the stylisations of the signs bear some relevant similarities, namely that they both consist of white upper-case letters against black-and-red backgrounds. Therefore, the differences between the signs are insufficient to enable the relevant public at large, displaying an average level of attention, to safely distinguish between them. Furthermore, the applicant seems to overlook the fact that the marks differ in only one word out of four and that the only differencing verbal element in the contested sign is less striking and is likely to be overlooked or not pronounced by the relevant public under examination. There are a number of cases in which word elements that may have limited distinctive character are recognised as relevant in the comparison of the signs, ultimately concluding that there is a likelihood of confusion (see, inter alia, 20/07/2016, T‑745/14, easy Credit (fig.), EU:T:2016:423, § 40-43; 21/07/2016, T‑804/14, Tropical, EU:T:2016:431, § 87-89 and 136; 19/04/2016, T‑326/14, HOT JOKER / JOKER et al., EU:T:2016:221, § 76-78 and 80; 26/01/2016, T‑202/14, LR nova Pure. / NOVA, EU:T:2016:28, § 42-49, 59, 71-73, 81-82, 89, and 97-98).

The abovementioned findings are not called into question by the low distinctiveness of the earlier mark. Indeed, according to established case-law, a finding of a low degree of distinctiveness for the earlier mark does not prevent a conclusion that there is a likelihood of confusion. Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of low distinctiveness and a trade mark applied for that is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61). Furthermore, in cases where the earlier mark has a low degree of distinctiveness, finding a likelihood of confusion only where there was a complete reproduction of that mark by the contested sign, whatever the degree of similarity between the marks in question, would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) EUTMR (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 71). In the present case, although the earlier mark has a low degree of distinctiveness, this is counterbalanced and outweighed by the fact that the goods are identical, the signs coincide in the majority of their verbal elements and the signs are depicted in very similar colour combinations.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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). In the present case, the identity of the goods compensates for the visual and conceptual similarity to a lower-than-average degree.

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, there is no need to analyse the remaining parts of the public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 8 815 086. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier EUTM registration No 8 815 086 leads to the success of the opposition and to the rejection of the contested trade mark 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).

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

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

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.