OPPOSITION Nо B 3 106 608

Fontaga, S.A., Ctra. de Barcelona - Puigcerdá, Km. 11, 17534 Ribes de Freser (Girona), Spain (opponent), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Ag Foods Group A.S., Škrobárenská 506/2, 61700 Brno, Trnitá, Czech Republic (applicant), represented by Igor Veleba, Koliště 259/55, 60200 Brno, Czech Republic (professional representative).

On 19/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 608 is upheld for all the contested goods.

2. European Union trade mark application No 18 109 702 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 of European Union trade mark application No 18 109 702 ‘Imperial’ (word mark). The opposition is based on Spanish trade mark registration No 19 986 ‘IMPERIAL’ (word 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 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 the following:

Class 5: Mud and mineral water salts, mineral salt pellets.

Class 32: Mineral water, mineral water gases.

The contested goods are the following:

Class 32: Powdered mixes and other preparations for making chocolate-flavoured non-alcoholic beverages in drinks dispensers.

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 powdered mixes and other preparations for making chocolate-flavoured non-alcoholic beverages in drinks dispensers and the opponent’s mineral water usually coincide in their relevant public. Contrary to the applicant’s opinion, the goods might coincide in their distribution channels as they could be found, for example, in the same vending machine. Moreover, they are complementary since these contested goods are usually mixed with water in order to produce the final beverage. Even though this potential complementarity between the goods at issue cannot be the only reason for finding them similar, in addition to having the same relevant public, the goods can also have the same producers. Therefore, the goods are at least similar to a low degree.

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 at least similar to a low degree are directed at the public at large. The degree of attention is average.

c) The signs

IMPERIAL	Imperial
Earlier trade mark	Contested sign

The signs are word marks. This means that they do not offer protection for any particular figurative element or stylisation and that differences in the use of lower- or upper-case letters are immaterial, even if a combination of lower-case and upper-case letters is used (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57). Therefore, they are identical.

d) 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/or 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).

The identity between the signs in conflict implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the earlier mark as a whole were very low and irrespective of the degree of attention and the relevant prior knowledge of the relevant public. In addition, the goods are at least similar to a low degree. Therefore, the identity between the signs offsets the at least low degree of similarity between the goods.

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 Spanish trade mark registration No 19 986. 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

Cristina SCENARIO LLOVET

Francesca DRAGOSTIN

Sylvie ALBRECHT

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.